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  • Steve Davey

How can I stop an infringer before my patent is granted?

If you ask someone to sign a confidentiality agreement before you disclose your provisional patent application to them, then you can sue them for breach of confidentiality if they steal your idea, even if your patent is not yet granted.

In almost all cases, a dishonest person won't run with your exact idea, but will run their own variation of your invention. Therefore, its important that the confidentiality agreement requires that recipient assigns their rights in any variations of your invention back to you.

Moreover, the confidential information disclosed must be defined with clarity and exactitude in order for a court to find in your favour.

Almost all standard confidentiality agreements will not have these additional provisions that can make the difference between winning and losing a case. We can assist you to draft an effective confidentiality agreement.

An exmplary case of these issues is Concrete Mining Structures Pty Ltd v Cellcrete Australia Pty Ltd [2015] FCA 888.

Case example

Mr Reiniger was a director of Concrete Mining Structures Pty Ltd ("CMS").

CMS had invented a new form of pump and had filed a provisional patent application for the invention. Provisional patent applications are not downloadable on the Patents database, Auspat, so the content of the provisional patent application was still confidential.

Mr Reiniger left CMS and used his other business, Cellcrete Australia Pty Ltd, to to sell his version of the invention.

CMS sued Mr Reiniger for breach of confidentiality by disclosing and selling the invention disclosed in the provisional patent application.

CMS sought an injunction to stop Mr Reiniger from continuing to sell his version of the invention.

When you seek an injunction, the court has to way up whether you have a case at face value (and that you have a prospect of winning at a full trial) and the relative inconvenience to both parties if the injunction is awarded or refused.

Mr Reiniger had argued that the CMS was effectively seeking to enforce patent rights, but its patent was not yet granted. However, the judge found the action for breach of confidentiality was separate from the patent issues.

Nevertheless, the judge found that the confidential information was described in ways that were too imprecise for the judge to award the injunction.

Even though the injunction was not awarded, the pressure of the case forced Mr Reiniger to give underakings to CMS regarding the sale of his version of the pump. This enabled the matter to be settled and the judge made orders in accordance with the undertakings provided by Mr Reiniger.

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