Breaches of confidentiality and intellectual property rights

by Redmans on March 20, 2013

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We’re going to take a look in this post at intellectual property – specifically when the disclosure of information relating to an employer’s intellectual property could be in breach of the (former) employee’s duty of confidentiality, potentially causing the employer loss. We’ll do so by examining the following:

  1. Who owns the intellectual property?
  2. Has a former employee breached confidentiality?
  3. What should you do if you suspect a former employee has breached confidentiality?

Who owns the intellectual property?

Who owns the particular intellectual property really depends on the type of intellectual property in question. For example, the owner of a trademark is normally the person (legal or natural) to whom the trademark is registered, whereas whom the owner of copyright is relating to a piece of computer software (for example) would depend upon whether the work was made in the course of employment or not. If the computer software was produced in the course of employment (and under a contract of service) then the copyright would be owned by the employer (unless there was an agreement to the contrary). The reverse is true for work produced outside of the course of employment unless there is an agreement to the contrary.

Has a former employee breached confidentiality?

This is a question of both fact and law.

It is important to be as sure as possible that a former employee has breached confidentiality and revealed confidential information (the intellectual property) or used it for his own purposes. Further, it is important to ascertain whether the breach of confidentiality has caused your business any quantifiable loss. It is therefore necessary to conduct a thorough investigation prior to commencing (or threatening to commence) legal proceedings against such an employee. Information that could be gathered through such an investigation could include both documentary and witness evidence. Such evidence could include emails, transcripts of meetings, text messages, letters etc. It may be necessary to request access to the employee’s computer(s) and mobile phone(s) in order to forensically scan this for any relevant evidence relating to the breach of confidentiality. If the employee refuses to comply with this request then it may be necessary to threaten proceedings for breach of contract.

When could such a problem occur?

Such problems could occur with all types of intellectual property. For example, an employee who had been working on a patent for a new type of drug could potentially leave employment and try and disclose the “blueprint” for the patent to a third party (potentially a competitor). Equally, a former employee could use confidential computer code for his own devices or sell the code to a third party.

What should you do if you suspect a former employee has breached confidentiality?

If you suspect that a former employee has breached confidentiality then you it is advisable to obtain legal advice from from an employment lawyer (ideally an employment lawyer with experience in contract law) on what potential course of action you should take in the circumstances. It may be possible to obtain an injunction against the former employee, preventing him from using the confidential intellectual property or from divulging the confidential information to anyone else.

Redmans Solicitors are employment law solicitors offering employment law advice to employees and employers

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