Should you disclose everything in a patent? What is the limit between patent and know-how?

Doit-on tout divulguer dans un brevet ? Quelle limite entre le brevet et le secret ?

A patent of invention is an industrial property right which gives its owner an exclusive right to exploit the invention claimed therein. It is, therefore, a right to prohibit third parties from exploiting the invention in a territory for a limited period of time, subject to the payment of annual fees, in exchange for legal communication that includes a complete description of the invention. This legal communication is published by the appropriate Industrial Property Office after a period of 18 months following the filing date of the application or its oldest claimed precedence.

Thus, it is easily understood that the invention as claimed in a patent must be available to assess the technical problem(s) addressed and to understand the solution to these problems.

However, in some cases certain characteristics related to the invention may be inappropriate for disclosure. It may even be strategically interesting to keep certain features secret. One example is security issues: Is it desirable to disclose a security mechanism in detail since a comprehensive description of the mechanism may tend to facilitate its understanding and weaknesses for ill-intentioned individuals? Competitively, too, it is often preferable to keep information confidential to obtain the best results from the invention.

There is, therefore, a certain form of ambivalence between wanting to protect an invention by a patent and retaining the confidential components of an invention.

But what rules should be followed when drafting a patent application and in what cases is it possible to refrain from disclosing certain information?

The Sufficiency of Description

Whether it is French law, European patent law, and even other patent laws, one of their common points is to present a criterion of sufficiency of a description as a condition of invalidity. In other words, under penalty of invalidity, an invention must

be described in the patent application in a sufficiently clear and complete manner to permit an industry professional to perform it.

It is generally recognized that only one example of execution of the invention described in the patent application may be sufficient. In some cases, particularly if the claims cover a wide area, the application is generally considered to comply with the sufficiency of description criterion only if the description indicates a number of examples or describes other applications or variants which extend to the area covered by the claims. It is for this reason that we generally recommend describing in a patent application the envisioned alternatives.

In French or European law, it is also recognized that the existence of a number of non-insurmountable difficulties of realization is not sufficient to make an invention unfeasible. Thus, a mode of execution that is difficult to achieve or imperfect can be considered as sufficiently described.

As such, it is relatively easy to protect an invention without necessarily describing the characteristics of the invention that lead to the best results from an industrial standpoint, provided that the invention is sufficiently described for a skilled person to perform it and that the essential elements for solving the problem are described therein.

The “Best” Manner of Execution

The question of whether the best way to execute the invention is to be described is entirely legitimate. Indeed, until recently, US regulation required that the inventor’s best approach to carry out the invention be described in the patent application (see Article 35 USC 112-1), under penalty of invalidity of the patent.

It was not until the United States of the American Invents Act (AIA) came into effect on March 16, 2013 that the absence of a description of the best manner envisioned by the inventor to perform the invention was no longer a cause of invalidity of a patent. This notably marked the introduction of a new system for granting patent rights to the “first applicant” instead of the former one which granted patent rights to the “first inventor”.

It should be noted, however, that this criterion is still in effect as a condition for the US Agency to examine a patent application.

The Secret

Once the criteria for validity of the patent are met, it is the choice of the applicant to keep certain characteristics of the invention secret. The secrecy consists of not disseminating its own knowledge to the public.

Secrecy provides a form of protection which is not an exclusive right that can be applied to all, as is the case for a patent. This can be adapted particularly in certain situations as a complement and extension of a patent. This protection is unlimited as long as secrecy exists.

Of course, such secrecy is only relevant if a reverse-engineering study does not reveal its characteristics. In this case it is not possible to prevent third parties from reproducing it.

This is how a company can develop its “know-how.” Know-how covers skills, processes, manufacturing formulas, trade secrets, management methods, innovations of all kinds, patentable or otherwise, which are not public.

Even if the possession of know-how is not obtained through administrative formalities in the samemanner as patents or trademarks, certain legal practices allow their owners to protect themselves. It is easy to understand that the essential component of “know-how” is its secrecy. Several legal tools are useful to implement it:

  • Signing of a nondisclosure agreement (NDA) by any person inside or outside the company who may have access to it;
  • Implementation within the company of physical (limitation of physical access to information) and electronic (limitation of computer access to data) security measures;
  • Establishment of a confidentiality charter.

Furthermore, in the prevention of litigation, the Soleau envelope is a means of dating the technical innovations developed by the company. In the context of research, the laboratory notebook is also an interesting alternative that frees itself more easily from territorial considerations.

Know-how may also be derived with third parties, for example in partnerships. This should be done by imposing on them a strict obligation of confidentiality.

Finally, even if the law does not sanction these acts under infringement of a patent, it punishes acts of misappropriation and/or disclosure of the know-how of others, for example for unfair or parasitic business practices, and for certain criminal offenses, such as violation of trade secrets or breach of professional secrecy.

Do not hesitate to contact us if you would like more information or advice. We are available to assist you with your overall protection strategy.

François Legrand, French & European Patent Attorney, Partner at Alta Alatis Patent

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