Frequently Asked Questions

Trade Secrets

What is a Trade Secret? And why is it important to protect your Confidential Information.

A trade secret is a secret technique, device or piece of information used by a company.The technique, device or information must be protected by the company as a secret. Companies cannot claim a public thing is a confidential – because it is not secret. However, it may be the connection to the company (such as a client list) that is confidential. It is possible to protect tradesecrets but you need to be pro-active and take action immediately if you discover someone has taken your material.

What defines a trade secret?

A trade secrete is any piece of confidential information which a company uses in trade to gain an advantage. However, when it comes to protecting information the Court will analyse multiple things to determine if the information is truly secret. This includes the types of information included, the value of the information to the business, what harm would the company suffer if it was made public or went to a competitor, how common the information in the marketplace and also how the company protects the information and the steps taken to keep it a secret. These are very similar to the tests which apply to determine if the information is confidential.

What is an example of a trade secret?

Company secrets come in many different forms and can include information such as R&D information, Source Code, Inventions or patents which are not yet published, recipes or formulas, or cooking techniques.

One of the most famous trade secrets in the world is the Google Search Algorithm. Other examples are the Coca-Cola formula, and KFC’s secret herbs and spices. The ability to discover KFC’s secret herbs and spices is also an example of why keeping some information secret will eventually fail. They will be discovered or released to the public as technology evolves and allows discovery of the secret. It may be possible to keep some secrets initially but eventually, they may be discovered.

Some other examples include costing or pricing information, marketing plans, source code and customer lists. Some information that is not considered a secret includes know-how, general skill and knowledge, prices paid for services that were rendered many years ago (because the information is now outdated).

How do you protect trade secrets?

To protect confidential information, you must engage a combination of staff education, a robust asset protection system and electronic and physical barriers to protect the material. You should have a confidentiality policy which is practical, notified to all staff members and enforced. The easiest method to protect confidential information is to use non-disclosure agreements.

Once you discover information is released or taken, you must take action immediately. Any delay in applying for an injunction in a Court may be seen by the Court as an indication that you do not wish to protect the material.

You should also have crisis management plans that are written before your information is stolen and you practice that plan regularly. One of the best methods to protect your confidential information is to create and maintain a culture of secrecy in your company. Only let those staff members have the information if they need the information to do their job. Also only allow staff members to have access to the information for the period they need the information.

Always block access to the information by leaving employees when they leave, not the Monday after. Always hold leaving interviews so the person is aware of their responsibilities including a responsibility to return information that they may discover they have inadvertently kept. You should also conduct privacy impact assessments (PIAs) when dealing with new entities to ensure that they will protect your information and that of your customers effectively.

You should also mark your material as being confidential to indicate to a person who innocently receives the information that it is confidential. You should also use copyright markings on the material (but only the material you own the copyright in) to indicate that it should not be copied and it will be protected.

What is the relationship between Trade Secrets and Patents

As part of the patenting process it is necessary to disclose the Patent and make it open to public inspection (OPI). Thus once a patent is made OPI it cannot be protected as confidential information. For this reason, a lot of companies may wish to protect their secrets by keeping them confidential rather than by obtaining patent protection over confidential information. This technique is not suitable if your secret will become public once the product is released. The other concern with trying to keep a secret is that we now live in an era where it is somewhat easy to steal confidential information. There are constant data breaches in the media and thus, companies may be unable to stop employees taking secrets and selling them to the highest bidder. For more information on patents, please read this page: Patent Definition.

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If you need help protecting your secrets call EAGLEGATE today.

What is trade secret law?

There is no one law in Australia that protects confidential information. However, they are protected by a bundle of laws including common law and other statutes. An example of the laws that protect company secrets are misuse of confidential information, vicarious liability, copyright infringement, breach of employment contracts, breach of the Corporations Act and breach of fiduciary duty.

What can you do if your Trade Secret has been taken?

You must act quickly to protect your company’s secrets if they have been taken. There is a risk that the person who took the material could release it to the public or could use it for their advantage or use it to seek a competitive advantage. You should immediately seek legal advice on your prospects of success in a claim against the person who took the material. You should seek to obtain an injunction, Anton Piller orders if necessary and start a claim against the person who took the information and possibly their employer if you have a claim for vicarious liability. The relief a Court will order if you establish the Respondent took your confidential information includes an injunction, delivery up of any of the information, destruction orders to destroy material that cannot be returned, orders that the persons are not to use the information and monetary damages. Depending on the claim you run you may also be able to obtain additional damages for the Copyright infringement.

As expert confidential information lawyers in Brisbane, EAGLEGATE understands the litigation process, case law and defences. We will guide you through the process of litigation, enforcing your rights or defending a claim and hold your hand, every step of the way.

Call EAGLEGATE today.

Patents

What is a patent?

A patent is a government granted right to exploit an invention.

A patent is sometimes expressed as a monopoly but it is not a true monopoly because it does not exclude all other traders, but rather excludes the vast majority of other traders.

What is the difference between an Innovation Patent, Standard Patent and Provisional Patent?

A provisional patent is a temporary filing which acts as a placeholder (or flag in the sand) to establish a priority date. A provisional patent is not a full patent application and will not result in the grant of a patent. It is valid for only one year and is not enforceable. To preserve that priority date you must file a complete application, which derives priority from the provisional patent application within one year of filing the provisional patent and the invention must be sufficiently disclosed in the provisional patent application. An Innovation patent is a patent that must, amongst other things, be novel and have an innovative step, at its priority date. The test for innovative step is not difficult to overcome. The term of an Innovation patent is 8 years from its filing date. An Innovation patent must only have 5 claims or under and it cannot be enforced unless it is certified. A standard patent must be, amongst other things, novel and have an inventive step, at its priority date. The term of a standard patent is 20 years from its filing date but this can be extended up to 25 years for certain inventions.

What is a PCT?

PCT stands for Patent Cooperation Treaty, which is an international patent law treaty, concluded in 1970. The treaty provides a unified procedure for filing patents to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application.

What is the difference between a PCT and a standard patent application?

A PCT is a patent that is filed under the PCT (Patent Cooperation Treaty). A reference to a standard patent application is normally a reference to an application that is filed directly with a governing authority, rather than through the PCT process.

When should I get a patent?

A patent needs to be at least, novel and innovative, or novel and inventive, at its priority date. Therefore it is very important that you file the patent as soon as possible and certainly before you disclose the invention publicly.

What is entering national phase?

When a PCT is filed it is not filed in a particular country. Rather all countries are automatically designated but the patentee must decide to “enter national phase” in each country in which it wishes to register the patent. The process of filing the application in the country of choice, is referred to as “entering national phase”.

Can I patent software?

Software can be patented but not all software can be patented. Pure algorithms that do nothing more than can be done without a computer are generally not patentable, but a device that has a computer incorporated into it, that produces a novel output or which acts in a novel way, may well be patentable. If you have a software invention you wish to patent, give EAGLEGATE a call.

When should I get a patent?

A patent needs to be at least, novel and innovative, or novel and inventive, at its priority date. Therefore it is very important that you file the patent as soon as possible and certainly before you disclose the invention publicly.

Will I lose my patent if I start a patent infringement action?

It is common in patent infringement cases to face a cross-claim for invalidity of the patent. If the patent is found to be invalid then there should, without any other claims which may be successful, be no injunction based on any prior infringement on the basis that the patent should never have been granted in the first place.

My employer is claiming my invention is owned by him. Is it?

Ownership of inventions can be contentious, particularly when one party is in a position of power over the other party. A dispute over ownership of an invention is referred to as an “entitlement dispute”. Whether an employer owns an invention made by the employee depends on many factors including, whether the employee was instructed to invent, what the contractual arrangements are between the employer and the employee and whether the invention was created in the course of employment. If you have an entitlement dispute, call EAGLEGATE for assistance.

Trademarks

Do I have to use my trademark?

Trade marks are a use it or loose it regime. This means that you, or someone under your control, must make legitimate use of the trade mark during the relevant non-use period in order to stop it being removed for non-use. It is possible to use the mark on only some of the goods or services of the registration, but that may expose the non-used goods or services to removal for non-use. The relevant period for non-use period is a three year period ending 1 month prior to the filing of a non-use removal application.

Can I expand my trade mark?

Once a trade mark is filed, it cannot be expanded to cover other goods or services. The scope of the trade mark can be reduced by removing goods and services at any time.

Why is IP Australia refusing to register my trademark?

As part of the registration process, IP Australia will examine your trade mark and either accept it for registration (in which case it will be advertised for opposition purposes) or it will reject the application for registration and give reasons for that rejection. This is the start of a conversation with IP Australia and IP Australia can often be convinced to change it’s mind. There are many strategies we can use to overcome a trade mark rejection, call us today for a free confidential chat.

What is a common law trade mark?

A common law trade mark is a trade mark that is used by a trader without registering it with IP Australia. Common law trade marks are enforceable under the Australian Consumer Law but it does not afford the same protection as a trade mark registration.

How do I know if someone is infringing my brand?

You must remain vigilant to other traders adopting your mark. There are three types of trademark infringement under the Australian Trade Marks Act. To infringe a mark a trader must use as a sign a mark that is substantially identical or deceptively similar to the registered trademark, AND the goods/services must be identical or of the same description. Alternatively, if the mark is a famous mark then the goods/services can be unrelated but because of the fame of the mark, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trademark. No defences must apply to the infringement.

Copyright

What is Copyright?

Copyright rights protect Works such as literary, dramatic, musical or artistic works. Computer programs are considered a literary work under the Copyright Act. Depending on the Work, copyright rights can be infringed by reproduction, publishing the works, offering infringing goods for sale, making an adaptation and communicating the Work to the public. There are many exceptions which apply to copyright rights infringement, including independent creation.

What does Copyright protect?

Copyright protects the expression of an idea, not the idea itself. Thus, it will not protect a copyright owner against independent creation.

Is there a Copyright register in Australia?

Within Australia there is no mechanism of registration of copyright rights and the rights are created automatically with the creation of the work. That is not the case in other countries and you should take qualified advice from suitably qualified copyright lawyers in each jurisdiction before taking action.

What does infringement of copyright look like?

In our experience the types of copyright rights infringements we see include software programs (both source code and object code), business development agreements, marketing material (particularly from competitors websites), images and photographs and educational material. The usual scenarios we encounter are employees taking material as they leave employment, employees accessing and copying material whilst still employed and competitors taking material from the internet.

Infringers do not always use copyrighted material for economic gain.

What relief will a Court give me if someone infringes my copyright?

The usual remedies available to a rights holder includes (at their election) damages or an account of profits, injunctions and appropriate delivery up orders. If you elect to be compensated by way of damages, it may also be possible to obtain additional damages but you cannot claim both account of profits and additional damages.

If you believe someone has taken your works, call EAGLEGATE for a free confidential discussion.

Copyright Rights

I can’t find the owner of a work, can I still use it?

A work where the author cannot be found is known as an orphaned work. Use of an orphaned work may constitute infringement if an exception to infringement cannot be found.

How long do copyright rights last?

The answer depends on the type of work, when it was created, whether it was published and whether the author of the work is still alive (and if not when they passed away).

If I just take 10% of a work can I still infringe copyright rights in the work?

The answer depends on the use of the work, but that exception to infringement only applies to one type of use. Copyright is infringed when a person, without authorisation, does an act comprised in copyright rights (such as reproduction) and no defences or exceptions apply. The test is whether a substantial part of the work has been taken and it is based on quality not quantity of what is taken. Therefore a person can take only 2% of a work and still be found to infringe that work.