|Barnsley Town Centre|
Author Peter Beard
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On the second Tuesday of every month I hold an IP clinic at The Business Village in Barnsley. Last Tuesday, I was consulted by two entrepreneurs who were setting up new businesses. Their identity, businesses and ideas are, of course, confidential but I can mention some of the topics that we discussed without breaching anybody's confidence.
The law on trade secrets changed on 9 June when Directive (EU) 2016/943 ("the Trade Secrets Directive") came into force. The government believes that our existing law already largely complies with the Trade Secrets Directive but it has had to issue The Trade Secrets (Enforcement, etc.) Regulations 2018 to implement the legislation. I think The Trade Secrets Directive needs to be considered when drafting non-disclosure and other agreements (see Jane Lambert Checking your Confidentiality Clauses and Agreements for Compliance with the Trade Secrets Directive 27 June 2018 NIPC News). Other articles readers may find useful include The Trade Secrets Directive 7 July 2016 NIPC Law, Transposing the Trade Secrets Directive into English Law: The Trade Secrets (Enforcement etc) Regulations 6 June 2018 NIPC Law and Transposing the Trade Secrets Directive into English Law: Confidentiality Agreements 5 Feb 2018 NIPC Law.
Another issue that arose directly out of the previous one is enforcement. It is one thing to get a signature on a non-disclosure agreement but it is quite another to hold the signatory to the agreement. There are three things to be said.
First, the Trade Secrets Directive makes it easier to sue. At common law
"three elements are normally required if, apart from contract, a case of breach of confidence is to succeed. First, the information itself, in the words of Lord Greene, M.R. in the Saltman case on page 215, must 'have the necessary quality of confidence about it' . Secondly, that information must have been imparted in circumstances importing an obligation of confidence. Thirdly, there must be an unauthorised use of that information to the detriment of the party communicating it." (per Mr Justice Megarry in Coco v A.N. Clark (Engineers) Limited  F.S.R. 415;  R.P.C. 41.Under the Trade Secrets Directive a claimant need prove only that the information meets all of the requirements of art 2 (1):
"(a) it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;and that it was acquired unlawfully within the meaning of art 4 (2). that it was used or disclosed in breach of art 4 (3) or that it was acquired, used or disclosed in breach of art 4 (4) or (5). A breach of confidence at common law could also be an infringement of the Trade Secrets Directive but it is not necessary under the directive to prove that the information had the necessary quality of confidence about it or that it was imparted in circumstances importing an obligation of confidence and the mere acquisition of the information is actionable.
(b) it has commercial value because it is secret;
(c) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret"
Secondly, businesses should always consider taking out intellectual property insurance whenever they create an intellectual property right I have written a lot about IP insurance over the years and my latest article is IP Insurance: CIPA's paper 1 May 2016 NIPC Inventors Club.
The third point is that there is now an inexpensive forum for resolving intellectual property claims worth £10,000 or less. The procedure is much simpler and cheaper than in other courts and the costs that may be recovered from the losing party are limited to just a few hundred pounds. Claimants cannot get interim injunctions in the small claims track but their actions usually come on for trial more quickly. A claim for breach of confidence can be brought in this jurisdiction (see Jane Lambert Enforcing a Confidentiality Agreement in the Small Claims Track 9 March 2013).
Another connected topic concerns joint ventures. Who is entitled to apply for a patent, register a design or assert a copyright when two or more businesses work together. There has been a lot of discussion on this topic lately and the Intellectual Property Office has held consultations on the topic in London, Birmingham and Manchester. I attended the one in Manchester and blogged about it in IPO Consultation - Business to Business Collaboration Agreements 23 July 2018 IP Northwest. The IPO plans to set up a working party to consider model agreements on the lines of the Lambert Toolkit but it will be some time before those agreements are published if, indeed, they ever are. For that reason, I gave a number of tips in Business to Business Collaboration Agreements 4 Aug 2018 NIPC Law.
In almost every clinic there is a client who wants to know about design protection in this country and overseas. I usually mention unregistered design right, registered designs unregistered Community designs, registered Community designs and copyrights. One big change in design law has been the UK's accession to the Hague Agreement Concerning the International Registration of Industrial Designs on 13 March 2018 (see The Hague Notification No. 133 Hague Agreement Concerning the International Registration of Industrial Designs Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs Ratification by the United Kingdom of Great Britain and Northern Ireland on the WIPO website). British accession enables designers to apply for protection in all the countries of the Hague Agreement with a single application. Contracting parties include Canada, France, Germany, Russia, South Korea, the USA and the EU.
Accessing the Clinic
If you need advice or assistance on intellectual property or technology law the first step is to complete the following form below. You do not have to be in Yorkshire to use the clinic. I will try to advise you by email or telephone. If you need to consult another professional I will tell you how to find an instruct one. If I have worked successfully with a patent or trade mark attorney, solicitor or other professional in the past I may mention his or her name. If you need an appointment with me I can see you in Yorkshire or London.
If you want to discuss this article call me on 020 7404 5252 or send me a message through my contact form.
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