Non-disclosure agreements are concluded in order to be able to discuss an innovation with partners, suppliers, producers, etc. before a possible Patent Application is filed. Anyone who waives a non-disclosure agreement risks the information being used to oppose a later Patent Application – unless they can invoke an implicit non-disclosure agreement. However, the Federal Supreme Court decision of November 28, 2016 sets the bar high.
Bombardier and Stadler came into conflict over Patents EP 1 963 157 B1 “Rail vehicle with a drive device”. Bombardier accused Stadler of patent infringement. Stadler, for its part, raised an objection of nullity. This dispute was brought before the Federal Patent Court (BPatG) in St. Gallen.
Stadler raised the defense of invalidity. The patent was not new compared to the content of a letter that ABB had sent to both Siemens and Stadler.
Bombardier denied that the letter in question was prior art. It was not publicly accessible due to an implicit non-disclosure agreement. According to Bombardier, there was a business relationship and a development cooperation between the parties, which resulted in an implicit non-disclosure agreement. In a letter from ABB to Siemens (reverse dispatch in the same matter), there was also an explicit reference to confidentiality.
Stadler responded with confirmations from ABB and Siemens, which proved that the parties were not subject to a confidentiality agreement. Stadler explained that the letter did not concern a cooperation, but an offer, and that letters between customers and suppliers are not usually confidential information. The reference to confidentiality in the other letter from ABB to Siemens merely showed that confidentiality was insisted upon, if it was necessary.
Thus, the BPatG essentially had to decide whether there was a tacit or implicit confidentiality agreement between ABB, Siemens and Stadler. In its decision, the BPatG came to the conclusion that there was no implicit secrecy, so that the nullity defense was affirmed. Therefore, no patent infringement can be assumed. The court justified its decision as follows:
In the absence of a non-disclosure agreement, it can generally be assumed that the transmitted information can be made accessible to the public.
Implicit confidentiality agreements may arise from the overall circumstances. However, these should not be assumed lightly, but should be regarded as an exception. It must be clear from the circumstances.
The information contained in the disputed letter did not concern a transmission in the contractual relationship, but a response to a request for a quotation. Various decisions of the EPO’s Technical Board of Appeal have already shown that technical information to customers is not generally considered secret (T173/83, T958/91, T602/91).
The Federal Supreme Court (BGer) is also of this opinion.
An implicit non-disclosure agreement requires at least proof that an interest in confidentiality actually existed and that confidentiality was secured in such a way that further dissemination of the technical teaching appears to be practically impossible. This proof is not provided by development cooperation alone.
Our note: If you exchange information with others before filing a Patent Application, you must ensure that your intention to maintain secrecy is clearly expressed. In particular, the information to be kept secret must be expressly marked as confidential. Otherwise, the information in question may later be held against the Patents as pre-published prior art.