All you need to know about ConfidentialityLeeds Inventors Club, 14 June 2006

Jane LambertBarrister

The Principle If a person (“a confidante”) obtains

commercially or personally sensitive information that is secret or at least not generally known in confidence, the confidante may not disclose or make use of that information without the consent of the person confiding that information (“the confider”) or other lawful excuse.

Topics to be considered • Practical applications of that

principle

• Enforcement

• What is meant by “confidential information”

• How an obligation of confidence arises

• Drafting confidentiality agreements

Practical applications of that principle• Some inventions are protected by

confidentiality and not patents all the time they are on the market

• Other inventions may be protected by confidentiality until an application is made for a patent for the invention

• Other commercial secrets such as customer lists and prices may be protected by confidentiality

• So, too, are many non-commercial secrets such as medical history or celebrities’ private lives.

Related Concepts• Database Rights: The Copyright and

Rights in Databases Regulations 1997 protect investment in obtaining, verifying and presenting data

• Data Protection: holding and processing of personal data are regulating by Data Protection Act 1998

• Human Rights: Art 8 ECHR confers a right to respect for private and family life, home and correspondence.

Circumstances where the Obligation arises• Employment

• Negotiating licence, joint venture or other business agreements

• Licence, franchise and other commercial agreements

• Taking advice from a lawyer, patent agent, clinician or other professional

Enforcement• Complaint to the confidante’s

professional body if he or she is subject to a professional duty of confidence

• Otherwise, claim for injunction or damages in the civil courts

What must be proved• Information was and is confidential (i.e.

commercially or personally sensitive, secret such that disclosure or use would injure confider or benefit user)

• It was disclosed expressly in confidence or in circumstances giving rise to an obligation of confidence

• Loss or damage has been suffered or is imminent

• There is no lawful excuse for use or disclosure

Civil Proceedings

• Claims should be issued out of London, Leeds, Manchester, Liverpool, Newcastle, Birmingham, Bristol or Cardiff only.

• Proceedings should be brought as soon as possible, particularly if interim injunctions are needed.

• Costs can run into tens of thousands so IP insurance should be considered

What is Confidential Information?

• Secret: not in the public domain or at least not generally known

• Sensitive: information the use or disclosure of which would benefit a competitor and/or injure the confider

• Can include compilations or arrangements of published materials

• Lasts only for so long as information remains secret or not generally known

How does an Obligation of Confidence arise?

• Express acknowledgement of confidentiality by confidante

• Circumstances are such that it is or should be obvious that the information is confidential

• Confidante is under a professional obligation of confidence (patent agent, lawyer, doctor, minister of religion)

Designing Confidentiality Agreements

• No such thing as a “one size fits all agreement”

• Agreement should specify the information, media in which it is contained, occasion, purpose, permitted use and return of media

• Acknowledgement of confidentiality and promise to abide by agreement

Limits to Confidentiality

• Information enters the public domain through reverse engineering, technical advances etc.

• A higher public interest (such as prevention, detection or suppression of crime) requires disclosure or use of confidential information

Confidentiality Agreements not enough

• Index all documents or other media containing confidential information

• Keep all media under lock and key

• Educate staff on confidentiality

• Record and track all disclosures

• Monitor all use and enforce undertakings

Any Questions Jane LambertNIPCThe Media Centre7 Northumberland StreetHuddersfieldHD1 1RL

Tel 0870 990 5081

www.nipclaw.com