I was sat on a bus recently and noticed the person sat in front of me reading an email. The subject header clearly read "PRIVATE AND CONFIDENTIAL".

It's not possible to know what is contained in such an email without surreptitiously peering over that person's shoulder. However, should one choose that particular course of action, would that constitute a novelty destroying disclosure if the email contained details of a new invention?

This is potentially problematic, as a novelty destroying disclosure could invalidate a subsequent patent protecting that invention.

Emails as disclosures

The European Patent Office (EPO) considered emails as disclosures in a test case (T 2/09) where it was said that an email transmitted over the internet before the filing date of a patent application is not prejudicial against the novelty and inventive step of that patent application.

In summary, the decision set out that an email being transmitted over the internet is private and analogous to confidential information.

However, this decision did not consider a situation where an email had been surreptitiously viewed over a person's shoulder. These days, when more of us read important emails on the move, it's inevitable that a situation will arise where an email has been viewed in a public place, such as on public transport. This means that confidential information will be passed from one person to another by virtue of the fact they are sat adjacent to each other on a bus or train.

This could well be details of your new product or your latest innovation. You may not yet have sought protection for that product or innovation — so any 'over the shoulder' disclosure is highly undesirable.

Reading emails in a 'public place'

The probability that a person may be reading an email in a public place is high. Today, we access our emails through all manner of devices. We may also have printed, physical documents with us to get some work done while travelling.

It's difficult to mitigate the possibility of an employee reading an email in a public place without placing restrictions on email access outside of company premises. Yet in the modern world, this is not always a realistic course of action.

Confidentiality in a public place

It seems like an oxymoron, but the European Convention on Human Rights provides for an individual right to privacy even in a public place. This is part of the reasoning behind the decision in T 2/09 — i.e. that a person's emails, and the information inside them, are private and not public property.

From this perspective, it should not matter if a third party obtains confidential information by reading an email over someone's shoulder as the circumstances have a 'quality of confidence'. This is essential to demonstrate a breach of confidence if confidential information is ever used to damage a party — i.e. by using the disclosure to invalidate a patent application protecting the invention, which was the subject of the email.

That said, an action for a breach of confidence is expensive and the burden of proof is very high. It would also be difficult to prove that the confidential information has been imparted in the way described.

Additionally, if a third party obtained such information and then filed a patent application to protect the invention described in the information, you may well consider filing entitlement proceedings. Again, however, the costs can be prohibitive and proving that the third party did not devise the invention independently would be very difficult.

A pragmatic approach to emails

While it's unrealistic to completely stop employees reading emails during a commute, there are certain pragmatic steps that can be taken to reduce the chances of an email containing confidential information being read by a third party who is not privy to that information:

  • Mark emails containing confidential information as 'PRIVATE AND CONFIDENTIAL' to put off would-be surreptitious readers.
  • Provide training to employees, making them aware of the dangers of reading emails in public places.
  • Keep information that is private and confidential confined to those who are actively involved in the project — this reduces the likelihood that an 'over the shoulder' disclosure will take place.

01 June 2018

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.