1a) Restricted inventions, utility models and trade secrets Flashcards
Discuss Restrictions on UK Residents Filing Abroad (Section 23).
If you are a UK resident and the application contains (or might contain) information about military technology,
or could harm national security or public safety, Section 23 of the Patents Act requires that you must either:
o apply first for the patent in the UK. You can apply abroad 6 weeks after your UK application date, as
long as UKIPO has not told you that you cannot publish or communicate your application; or
o get permission from UKIPO before you apply
Applies to joint applicants with at least one UK resident
Also applies to inventors and attorneys
Failure to comply is a criminal offence
If you think you need permission to file abroad contact Security Section, Room GR70 at UKIPO (tel: 01633
813558, fax: 01633 814415)
Provide some examples of restricted technologies under section 23 UKPA.
Atomic energy, nuclear power or nuclear weapons
o Including methods of detecting nuclear explosions or atomic energy plant, nuclear reactors for
propulsion, and any technology relating to the enrichment of uranium or the separation of nuclear
isotopes.
Airborne anti-submarine warfare
Military aircraft and helicopter construction and design
Aircraft engineering with military applications
Aircraft launching, take-off and landing devices
Airfields, runways, landing decks and tracks
Armour and protective devices
Alloys, ceramic materials and coatings with military applications
Camouflage
Catalysts for hydrogen peroxide breakdown
Chemical and biological warfare including detection and treatment
Military protective clothing
Power operated controls with military applications
Cypher, code, encryption and secrecy systems and devices
Electrical apparatus with specific military application
Aerials and associated circuits for military systems
Radar systems
What is the purpose of utility models and what does a utility model system provide?
In some countries, a utility model system provides protection of so-called “minor inventions” through a system similar
to the patent system. Recognizing that minor improvements of existing products, which does not fulfill the patentability
requirements, may have an important role in a local innovation system, utility models protect such inventions through
granting an exclusive right, which allows the right holder to prevent others from commercially using the protected
invention, without his authorization, for a limited period of time.
In general, compared with patents, utility model systems require compliance with less stringent requirements (for
example, lower level of inventive step), have simpler procedures and offer shorter term of protection. Designed
primarily to respond to the needs of local innovators, requirements and procedures for obtaining protection and the
duration of protection vary from one country to another.
What are the main differences between utility models and patents?
The requirements for acquiring utility models are less stringent than for patents. While the requirement of
“novelty” is always to be met, albeit some countries only on a local level, that of “inventive step” or “nonobviousness”
may be lower or absent altogether. In practice, protection for utility models is often sought for
innovations of a rather incremental character which may not meet the patentability criteria.
The term of protection for utility models is shorter than for patents, and varies from country to country (usually
between 6 and 15 years).
In most countries, patent offices do not examine utility model applications as to substance prior to registration.
This means that the registration process is often simpler and faster, sometimes taking six months or less.
Fees for obtaining and maintaining utility models are cheaper.
In some countries, utility model protection can only be obtained for certain fields of technology, such as
mechanical devices and apparatus, and only for products but not for processes.
What kind of inventions can be protected by utility models?
In some countries, utility models can be applied for in the same fields of technologies as patents.
In other countries, utility model protection is eligible only for the shape or structure of products in certain
fields of technology, such as mechanical devices and apparatus, but not for technical, chemical and
biological processes.
Eligible subject matter for utility models varies significantly from one country to another.
What are the conditions for getting utility model protection?
In general, the requirements for acquiring a utility model are less stringent than for patents. In some
countries, the requirements for protecting utility models are basically the same as for patents, that is, (i) they
must be within the eligible subject matter; (ii) they must be novel; (iii) they must involve an inventive step (nonobvious);
(iv) they must have industrial applicability (utility); and (v) they must be described in an application in
a sufficient and complete manner.
In some countries, the standards for an “inventive step” or “non-obviousness” may be lower than patents or
absent altogether, and the requirement of “novelty” might be applied only at a local level.
Further, some countries require that the inventions are related to products, such as devices or apparatus
(three-dimensional regime), thereby excluding processes or chemical substances. However, some countries
allow utility models on processes, chemical compounds, pharmaceuticals or software.
In practice, protection for utility models is often sought for innovations of a rather incremental character, which
may not meet the patentability criteria.
What is the purpose of confidential information?
The law of confidential information is a useful tool for protecting commercially sensitive material, such as trade secrets, which cannot be fully protected by intellectual property rights. It is based around the principle that a
person who has received information in confidence should not use or disclose that information without
permission. The unauthorised use or disclosure of confidential information may give rise to an action for
breach of confidence.
What information is protected?
The duty of confidence arises in circumstances where an individual is privy to information which is:
o Confidential in nature, having the ‘necessary quality of confidence’; and
o Disclosed in circumstances importing an obligation of confidence.
In order for the information to have the ‘necessary quality of confidence’ it must not be something which is
public property or public knowledge. Where the information in question is similar to something already in the
public domain, consideration is given to whether someone applied some skill and ingenuity in their treatment
of the information to render it worthy of protection.
There are three circumstances in which the disclosure of information gives rise to an obligation of confidence:
o An obligation imposed by contract – for example, non-disclosure agreements.
o An obligation implied because of the circumstances of disclosure – this is determined on the basis of
whether a reasonable man standing in the shoes of the recipient of the information would have
realised that the information was being given to him in confidence.
o An obligation implied because of the special relationship between the parties concerned – for
example, employer/employee relationships.
The best way of ensuring that confidential information is recognised and treated as such is by contract. If no
express requirement for confidentiality is imposed, the manner in which the discloser treats the information
can be held as indicative of its level of confidentially. Talking about information in public places, for example,
would cause the recipient to assume it was not confidential in nature.
What is a trade secret?
Broadly speaking, any confidential business information which provides an enterprise a competitive edge
may be considered a trade secret. Trade secrets encompass manufacturing or industrial secrets and
commercial secrets. The unauthorized use of such information by persons other than the holder is regarded
as an unfair practice and a violation of the trade secret. Depending on the legal system, the protection of trade
secrets forms part of the general concept of protection against unfair competition or is based on specific
provisions or case law on the protection of confidential information.
The subject matter of trade secrets is usually defined in broad terms and includes sales methods, distribution
methods, consumer profiles, advertising strategies, lists of suppliers and clients, and manufacturing
processes. While a final determination of what information constitutes a trade secret will depend on the
circumstances of each individual case, clearly unfair practices in respect of secret information include
industrial or commercial espionage, breach of contract and breach of confidence.
How are Trade Secrets Protected?
Contrary to patents, trade secrets are protected without registration, that is, trade secrets are protected
without any procedural formalities. Consequently, a trade secret can be protected for an unlimited period of
time. For these reasons, the protection of trade secrets may appear to be particularly attractive for SMEs.
There are, however, some conditions for the information to be considered a trade secret. Compliance with
such conditions may turn out to be more difficult and costly than it would appear at first glance. While these
conditions vary from country to country, some general standards exist which are referred to in Art. 39 of the
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement):
o The information must be secret (i.e. it is not generally known among, or readily accessible to, circles
that normally deal with the kind of information in question).
o It must have commercial value because it is a secret.
o It must have been subject to reasonable steps by the rightful holder of the information to keep it secret
(e.g., through confidentiality agreements).
Provide an example of how trade secrets are protected.
An SME develops a process for the manufacturing of its products that allows it to produce its goods in a more
cost-effective manner. Such a process provides the enterprise a competitive edge over its competitors. The
enterprise in question may therefore value its know-how as a trade secret and would not want competitors to
learn about it. It makes sure that only a limited number of people know the secret, and those who know it are
made well aware that it is confidential. When dealing with third parties or licensing its know-how, the
enterprise signs confidentiality agreements to ensure that all parties know that the information is a secret. In
such circumstances, the misappropriation of the information by a competitor or by any third party would be
considered a violation of the enterprise’s trade secrets.
What are precautionary measures to be taken by your SME?
Trade secrets are widely used by SMEs. In fact, many SMEs rely almost exclusively on trade secrets for the
protection of their IP (although in many cases they may not even be aware that trade secrets are legally
protected). It is important, therefore, to make sure that enterprises take all necessary measures to protect
their trade secrets effectively. This includes:
o Firstly, considering whether the secret is patentable and, if so, whether it would not be better
protected by a patent.
o Secondly, making sure that a limited number of people know the secret and that all those who do are
well aware that it is confidential information.
o Thirdly, including confidentiality agreements within employees’ contracts. Under the law of many
countries, however, employees owe confidentiality to their employer even without such agreements.
The duty to maintain confidentiality on the employer’s secrets generally remains, at least for a certain
period of time, even after the employee has left the employment.
o Fourthly, signing confidentiality agreements with business partners whenever disclosing confidential
information.
Patents or Trade Secrets?
Trade secrets are essentially of two kinds. On the one hand, trade secrets may concern inventions or
manufacturing processes that do not meet the patentability criteria and therefore can only be protected as
trade secrets. This would be the case of customers lists or manufacturing processes that are not sufficiently
inventive to be granted a patent (though they may qualify for protection as a utility model). On the other hand,
trade secrets may concern inventions that would fulfil the patentability criteria and could therefore be
protected by patents. In the latter case, the SME will face a choice: to patent the invention or to keep it as a
trade secret.
Some advantages of trade secrets include:
Trade secret protection has the advantage of not being limited in time (patents last in general for up to 20
years). It may therefore continue indefinitely as long as the secret is not revealed to the public.
Trade secrets involve no registration costs (though there may be high costs related to keeping the information
confidential).
Trade secrets have immediate effect.
Trade secret protection does not require compliance with formalities such as disclosure of the information to a
Government authority.
Some disadvantages of trade secrets include:
There are, however, some concrete disadvantages of protecting confidential business information as a trade
secret, especially when the information meets the criteria for patentability:
If the secret is embodied in an innovative product, others may be able to inspect it, dissect it and analyze it
(i.e. “reverse engineer” it) and discover the secret and be thereafter entitled to use it. Trade secret protection
of an invention in fact does not provide the exclusive right to exclude third parties from making commercial
use of it. Only patents and utility models can provide this type of protection.
Once the secret is made public, anyone may have access to it and use it at will.
A trade secret is more difficult to enforce than a patent. The level of protection granted to trade secrets varies
significantly from country to country, but is generally considered weak, particularly when compared with the
protection granted by a patent.
A trade secret may be patented by someone else who developed the relevant information by legitimate
means.
