Maintaining Confidentiality in a University Environment - the why and how!
Why Maintain Confidentiality?
The "why" in terms of maintaining confidentiality is largely driven by either contractual terms/requirements of funders and research collaborators. Importantly too there is a need for absolute novelty as one of the fundamental requirements for successful patent application in South Africa and essentially all countries, except where limited grace periods exist, e.g. United States and to a limited extent in Europe. Novelty means that the informa tion regarding an invention has not been made available to the public in either a written or spoken form.
More recently,2 August 2010 to be specific, this requirement has impacted the university research communities more forcefully, with the promulgation of the Intellectual Property Right s from Publicly Funded Research and Development Act (IPR Act). A researcher needs to evaluate their research output prior to public disclosure for intellectual property (IP) that may be protectable and if identified, to alert their technology transfer office (TTO - which in UCT's case is RC&I) so that they can assess whether protection should indeed be sought. The actual requirement is for an invention to be disclosed to RC&I within 90 days of its identification (read more on invention disclosure here).
What is Public Disclosure?
So what constitutes public disclosure? Public disclosure occurs through oral presentation at forums at which the audience is not solely comprised of the institution's own staff and students, all forms of publication no matter how informal (abstracts, posters, non-accredited journals, on-line blogs, emails) as well as by submitting a thesis for examination in many cases. Thesis examination is often not a closed process' and the thesis ultimately lands up in the library or on-line. UCT has a process where an MSc dissertation or PhD thesis can be maintained confidential for a limited period.
Beware of poster presentations at conferences. UCT has had a couple of unfortunate and inadvertent incidents where the information disclosed destroyed the "inventiveness" of the invention as it made it obvious to a person "skilled in the art". For example, whilst one does not say where to insert some genetic material exactly in the poster, it would be pretty obvious to somebody with the appropriate background as to where the new genetic material should be inserted and you have told them what to insert!
Disclosure can also occur through abstracts submitted ahead of the conference to get that speaker slot. If our office knows that there is protectable IP associated with the presentation, we will plan to ensure that the provisional patent application is filed immediately prior to the conference. If we still need to file a provisional patent application, we often run the abstract past a patent attorney to ensure that it is suitably bland' or cryptic around the protectable IP so as not to disclose it, but carefully balanced to ensure that the abstract will still get you into the conference.
When can one Publish if IP Needs to be Protected?
It's acknowledged that there is an inherent tension here - academe has the mantra of "publish or perish" and one now works in an environment of collaborative research on a global playing field, versus this need for initial confidentiality. UCT strongly maintains its policy regarding openness' and communication of research outcomes and secret research is not undertaken; periods of confidentiality are limited and all research should ultimately be able to be published. If a collaborator's confidential information was disclosed to UCT, that would, however, be respected and confidentiality maintained for as long as we are contractually obliged to do so.
It is important to note that once a provisional patent application has been filed, the need for confidentiality is lifted. Often it is good practice to maintain confidentiality until the full patent application is filed a year later - if this is possible, but sometimes there is a pressing need for publication or presentation.
With a little planning, the twin objectives of IP protection and publishing can certainly be achieved very easily!
What needs to be Maintained Confidential?
One of the important fundamentalsis to know how to screen your work for protectable IP. If you don't know how to do it, check with RC&I after looking at information available on our website or completing the on-line IP Savvy "Screening your Research" training module hosted on Vula.
Knowing whether there is something to protect or not makes it easier to decide whether any confidentiality undertaking is actually required.
For Patenting what level of Confidentiality is Required?
Basically what one needs to prove to a patent examiner, is that the person that you have disclosed information to was restricted in some way from disseminating it further - until you had filed the IP protection!
How do I Manage Confidentiality?
Confidentiality is often already part of a Collaboration Agreement
Research collaborations are generally governed by some Collaboration / Funding / Consortium Agreement and typically these already provide for confidential interaction between the research teams from the different institutions who are signatories to the agreement. These are put in place at the outset of the collaboration and allow for open disclosure amongst the teams - so it's a pretty painless process to get the interactions of large collaborations covered by confidentiality, created an open space for collaboration'.
As far as possible, we try and avoid the requirement (often as part of a collaboration with an industry partner) for separate written undertakings by all team members due to the administrative burden, but this does ensure that all participants and particularly students are aware of the confidentiality undertakings. It is the Principal Investigator's responsibility to ensure that the UCT team is aware of confidentiality undertakings.
Often when scouting for collaborators, service providers or suppliers, this can either be done without the need to disclose confidential information, or one can enter into a Non-Disclosure Agreement (NDA); these are pretty standard template-type' agreements that can be put in place readily.
RC&I will assist with putting an NDA in place (send a request to email@example.com) and is the authorized signatory for these agreements.
We also recommend an NDA with regular external collaborators that you may bounce ideas off, even when there is no specific defined project associated with them.
What about Discussion within UCT?
Within the university, there is freedom to discuss your work openly as you are all under the same roof' (or legal entity of the university). With sensitive work that could well land up being patented, it is good practice to start your in-house presentation, e.g. to a lab group, with a reminder that what you are about to discuss may form the basis for a future patent application - requesting that the audience maintains confidentiality within the university.
How do I Manage External Visitors at UCT Meetings?
Often too, there may be external visitors at internal' seminars at UCT and it is good in that case to have an attendance register, which can be circulated and signed by attendees, that has a simple statement at the top regarding the confidential nature of the work discussed at the seminar. You can download a suitable template from the right-hand panel of this page [insert Word doc as a download]
Presentations can also frequently be tailored to focus on aspects that are of pure academic interest and unlikely to impact on future patenting opportunities.
What about a Quick Email Discussion?
Although it cannot be regarded as ideal, heading an email "confidential" is a good quick measure if a Non Disclosure Agreement (NDA) cannot be put in place, or whilst one is being put in place.