A legal system which offers protection to the creator of confidential information, while at the same time granting patent protection to suitably qualified inventors, must accept that there may be hard cases when the two very different protection regimes come into conflict. The differences between the two regimes have been extensively documented1 and they are widely understood by those who work in the intellectual property field. That hard cases can still arise when an inventor seeks to maintain the confidentiality of disclosed information, while at the same time prosecuting an application for patent protection for an invention encompassed by that information, has, however, been given stark illustration in the recent decision of the High Court of Australia in Maggbury Pty Ltd v. Hafele Australia Pty Ltd.

There is an inherent tension between the protection given to confidential information or trade secrets, and that given to patents for inventions which will inevitably be published in the process of prosecuting the application to grant. The essential requirement for protection of trade secrets is that the information is secret – that it has ‘the necessary quality of confidence about it’. A person seeking patent protection must, however, disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art. It is disclosure which provides consideration for the grant of the monopoly which the patent gives.