Things You Should Know Before Filing A Patent: Confidentiality and Inventorship
(Written by: Huang Liangshu)
As an individual or start-up who is well on the way to inventing the next big thing, you may, while interacting with various parties for instance investors come to realise the importance of securing intellectual property rights, particularly patent protection. This may lead you to diligently seek legal assistance only to learn that your actions may have inadvertently compromised your chances of securing patent protection. This leads us to the topic of this article where we discuss matters relating to confidentiality and inventorship of your invention which are often not given due consideration prior to seeking patent protection. We hope some insight into avoiding common pitfalls that may adversely impact a subsequent patent filing.
As discussed in an earlier article, an invention will not meet the novelty requirement for patentability if it has been made available to the public before a patent application is filed. This includes situations when an invention is disclosed to a third party. In other words, you must keep your invention secret until you file a patent application for it, and you should file a patent application before disclosing your invention to third parties. However, the commercial realities often prevent this. For example, potential investors or external collaborators (eg, contract manufacturer) may require disclosure of an invention.
A novelty destroying disclosure is one that enables a competitor to reproduce the invention without undue burden. Therefore, the extent of the disclosure is important and should be kept to a minimum wherever possible. For example, in an initial meeting with a potential investor, it may suffice to highlight the benefits of the invention, for example 25% increase in up-time as opposed to how the invention achieves this. Under such circumstances it may be possible to reveal sufficient details to the 3rd party for the purposes of the exchange without destroying the novelty of the invention. This is likely not possible if you are finalising details with a contract manufacturer who will be responsible for manufacturing the patented product where you may need to disclose the inner workings of your invention to. In such instances where the significant disclosure of secrets is unavoidable, a non-disclosure agreement (NDA) can be signed to preserve the novelty of a patent filed despite the disclosure.
An inventor is a person who is the actual devisor of an invention. The identification of such persons should be carefully monitored from the time research and development commences especially when third parties are involved in the developmental efforts. This is critical as inventorship determines who has the right to file a patent application for the invention. Under Singapore law, the right to file a patent application lies first with the inventor. However, if the inventor is an engineer/scientist employed in or specifically assigned to an R&D endeavour which results in an invention, the invention likely belongs to the employer.
However, things can get complicated very quickly when external parties are involved. External parties are not employees. If their work results in an invention, they might become the sole or joint inventor, which means they may also gain the right to solely or jointly own a patent for the invention. To avoid such unexpected results, it is very important that third parties involved in development efforts be required to enter into an agreement indicating clearly how patent rights should be accorded prior to commencement of work.
It should be of note that being involved in developmental efforts does not automatically make a person an inventor. A graduate student whose contribution amounts to merely carrying out instructions from a principal investigator is most likely not an inventor. On the other hand, in the case where an invention results from the collaborative contribution of a principal investigator and an external consultant, it may well be that they become joint inventors.
When a patent is filed, the patent application should state all inventors, even if and perhaps especially if some of them are external parties. An inventor who is left out and feels sufficiently aggrieved may initiate proceedings to determine his inventorship and patent entitlement. This can lead to an undesirable outcome for the incumbent owners and should be proactively avoided.
In summary, matters of confidentiality and inventorship should be dealt with before a patent application is contemplated. It is often easier to do so at an early stage before stakes are raised by the time an invention and attendant patent rights arise.