Confidentiality and Novelty

1Where information relating to an invention is wrongfully obtained, ie, in breach of confidentiality, the same may entitle an aggrieved person to prefer a suit for misuse of confidential information. Even if the invention is not covered by a patent, the information disclosing the invention can still confer a right to the inventor if the same is disclosed in confidence. In one such case, the plaintiff who had invented two different types of devices for fixing or holding down carpets, patented one of them and disclosed the other invention to the defendants. The defendants procured confidential information with regard to the carpet grip from the plaintiff. But after procuring the confidential information from the plaintiff, the defendant applied for a patent claiming itself as the true and first inventor. Awarding damages to the plaintiff, it was held that the defendants could not use any confidential information of the plaintiff without paying for it. (See Seager v Copydex Ltd [1967] FSR 211, p 221, (1967) RPC 349.)

2In a case involving a defendant who, under the employment of the plaintiff, acquired confidential knowledge from the plaintiff and then left the plaintiff to his own advantage, and used the information so acquired, it was held that the defendant was in breach of his duty of confidence. (See Cranleigh Precision Engineering Ltd v Bryant [1965] 1 WLR 1293, [1964] 3 All ER 289, (1966) RPC 81. The case involved a swimming pool well formed by sectionally constructed interlocking steel sheets which were corrosion resistant and gave the pool lasting strength and rigidity. The plaintiff had applied for a patent. The secrecy lay in the method and purpose of the interlock. The fact that the underlying idea was simple did not affect the confidential nature of the information. It was held that the knowledge concerning the two special features of the plaintiffs’ pools was a trade secret and confidential.) In the case of a patent, the important point is not whether it was valid or invalid, but what it was that it disclosed, because after the disclosure had been made to the world, it would be impossible to get an injunction restraining others from disclosing what was common knowledge; the reasoning being that the secret would have ceased to exist as a secret, after the disclosure. (See Mustad & Son v Allcock & Co Ltd and Dosen [1964] 1 WLR 109, 111, [1963] 3 All ER 416, (1963) RPC 41 (HL), per Lord Buckmaster.)

3Though the Patents Act does not expressly mention disclosure made in breach of confidence as exceptions to anticipation, ss 29, 31 and 32 deal with disclosure made without the consent of the right holder. Such disclosure made without the consent of the right holder may be regarded as disclosures made in breach of confidence. A communication made by a person under the obligation of confidentiality will not amount to a publication. An inventor may disclose his invention confidentially for seeking help from others, provided it is not done to a large number of people so as to amount to a public disclosure. (Lallubhai Chakubhai Jariwala v Chimanlal Chunilal & Co AIR 1936 Bom 99, p 107.)

4Confidential disclosure and disclosures without consent will not affect novelty. There may be an express or an implied obligation of confidence. (See Catnic Components Ltd v Evans & Co (Builders Merchants) Ltd [1983] FSR 401, pp 408-9 (Pat Ct).) Whether a communication to another takes the colour of confidentiality will be a question of fact that has to be decided upon the circumstances surrounding each case. (See Laguerre’s Patent [1971] FSR 320, p 335, (1971) RPC 384, p 399 (CA).) When the information is obtained unlawfully or is disclosed in breach of confidential relationship, such information, though in public domain, will not be taken into account to access novelty. (Patents Act 1970, ss 29, 31 and 32.) Material is said to be available to public only when it is permissible in law and equity to access the same and to divulge its contents to other freely. (See Humpherson v Syer (1887) 4 RPC 407, p 413; James Industries Ltd’s Patent (1987) RPC 235.)