Gaurav Mohindra | Confidential Information and IP Rights

Confidential Information and IP Rights Can You Keep A Secret?

What is Confidential Information • Confidential information is information which must not be divulged without permission.

• Confidential information is a wide ranging concept which embraces commercial secrets as well as general business information having the necessary quality of confidence.

What is confidential Information?

Financial information

Technical & scientific information

CONFIDENTIAL INFORMATION

Commercial information

Negative information

Why is it important?

• By keeping valuable information secret, you can prevent competitors from learning about and using it and thereby enjoy a competitive advantage in the marketplace.

• If preserved, confidential information may qualify for intellectual property protection.

Intellectual Property Protection •Patents define an invention and prevent others from practicing the defined invention •Patents have limited duration; trade secrets remain effective so long as they remain secret •Trade secrets rely on keeping things secret; if the secret is lost or obtainable by reverse engineering, no protection remains

Statutory Patent Bars •Under US Patent Law – even if an invention meets the requirements for a patent, there are certain situations in which patent protection may be lost.

•The Statutory Bars: – Printed Publications – The “On-Sale” Bar – Public Use

Printed Publication • A printed publication must describe the invention • One Year grace period • Any publication, occurring anywhere in the world, is potentially patent defeating: – Written Article – A Brochure – A slide show – A poster presentation at a trade show

On Sale Bar • If the invention, or an obvious variant, is sold or offered for sale, and substantial activities towards that sale or occurred in the United States, then the inventor has one year in which to file a U.S. Patent Application.

• The sale may made be an inventor or by a 3rd party.

• An Offer for Sale is sufficient

Public Use •Any use of the invention, in the United States, in public and not for experimentation triggers this statutory bar.

– A single public use is sufficient – even if only a single person is aware of the use.

– The use is public even if the invention cannot be observed by the public.

– An exception for public use is experimentation

Joint Inventorship Issues •A contributor is eligible to reap the benefits of the patent as a joint inventor.

•The contribution may be limited but could still provoke joint inventor ship rights.

What is a Trade Secret

TRADE • Provides competitive advantage • Potential to commercialize

SECRET Kept confidential

What makes something a Trade Secret? • Three essential legal requirements: 1. The information must be secret 2. It must have commercial value because it’s secret 3. Owner must have taken reasonable steps to keep it secret

“Secret”

• One weakness of legal protection for trade secrets is that once they have been published in some way they cannot be "made secret" again.

• InSharing a normalConfidential business it is Information sometimes necessary to share a secret with another company.

• The solution is to get the company to which the confidential information is to be disclosed to sign a Confidentiality Agreement or a Non-Disclosure Agreement (NDA) – Issues with NDAs • Cannot control 3rd Party Actions • May be required to give up some rights • File for Patent Protection First – Recent changes in US law favor this method

Questions?