Data and Confidentiality

Introduction

There are two sorts of intellectual property right that are protected by legislation in Australia:

• rights that arise automatically – copyright and eligible layout rights in circuit layouts;

• rights that require registration – patents, plant varieties, designs and trade marks.

The law also protects information through the action of breach of confidence – provided that:

• it has the necessary quality of confidence, i.e. it is relatively secret;

• it has been disclosed in circumstances that indicate that the discloser expected it to be treated as confidential; and

• it has been used without the consent of the discloser to the discloser’s detriment.

Some of the outcomes of research will not be capable of intellectual property protection, but will have the right quality to be protected as confidential information.  For example:

• an invention that lacks sufficient novelty or usefulness to be patentable,

• a database or other collection of raw data that lacks the originality of expression to be covered by copyright,

• technical ideas, methodologies, processes, formulae or the like, that have been generated within the scope of a research project, but that have yet to be fully worked through and expressed.

Protection

Even where information has the right quality to be capable of protection, it will only be protected if it is kept confidential.  Once information is made public, protection ceases.

If research data needs protection, it is important that all those involved in a project are made aware of the fact and procedures are set up to ensure that there is no leakage. In such cases, non-disclosure or confidentiality agreements are put in place.

A non-disclosure or confidentiality agreement is a legal contract between at least two parties that outlines confidential material, knowledge, or information that the parties wish to share with one another for certain purposes, but wish to restrict access to or by third parties. It is a contract through which the parties agree not to disclose information covered by the agreement. Such an agreement is particularly important with discussions in relation to an unpatented invention where public disclosure of the invention cancels any options for patenting.  The agreement must establish the purpose for the disclosure (eg. a recipient evaluating the confidential information to enable the parties to explore a commercial relationship) and state the particular project for which the confidential information is to be used thereby clearly defining the extent of the area to which the confidential information relates.

Most importantly, where JCU staff are involved in discussions with outside parties such as potential collaborators in a commercialisation deal, use should be made of a non-disclosure or confidentiality agreement.  JCU staff must approach the Innovation and Commercialisation (I&C) team if they are to be involved in confidential discussions so that an appropriate non-disclosure or confidentiality agreement can be drawn up. Please note, these agreements cannot be executed by staff on behalf of JCU and requests for non-disclosure or confidentiality agreements must come through the I&C office within Research Services.

Click here for an example Confidentiality agreement.

Further enquiries about confidentiality agreements should be directed to [email protected].

Confidentiality and Patenting

The protection of confidentiality comes considerably more cheaply than a patent, and it is not unreasonable in some cases to choose to simply keep research outcomes secret.  Indeed in some cases an industry partner taking on the commercialisation of research outcomes may opt to do just that.  Factors to be considered include:

• whether or not information can be reverse engineered,

• the likely lifespan of the product in the marketplace,

• whether or not the industry partner has an effective monopoly in the field.

Ownership

It is not unusual for agreements that govern research projects to include confidential information within the definition of the project’s intellectual property, and hence within the scope of ownership provisions.  This is a typical example:

Intellectual Property means

• an invention or discovery; manner, method or process of manufacture; method or principle of construction; chemical composition or formulation; computer program; integrated circuit, circuit layout or semiconductor chip layout or design; plan, drawing or design; or scientific, technical or engineering information or document;

• improvement, modification or development of any of the foregoing;

• patent, application for a patent, right to apply for a patent or similar rights for or in respect of any Intellectual Property referred to in sub-paragraphs (a) or (b);

• trade secret, know-how, or right of secrecy or confidentiality in respect of any information or document or other Intellectual Property referred to in sub-paragraphs (a) or (b);

• copyright or other rights in the nature of copyright subsisting in any works or other subject matter referred to in sub-paragraphs (a) or (b).

“Ownership” of information that is generated within a research project is captured through this notion of: having the right to keep the information confidential.  Usually where this occurs there will be corresponding terms limiting the right to publish the information.