Research security: A mapping of what is 'publicly available' versus confidential information
The subject of foreign interference and espionage has been keeping many awake at night, especially when it comes to matters of intellectual property (IP). For instance:
Canada’s security intelligence service (CSIS) has published a directive on research security, as well as reports on foreign interference threats to Canada's democratic process,
the Canadian ministry of Innovation Science and Economic Development (ISED) has released its national security guidelines for research partnerships, and
the Canadian House of Commons Standing Committee on Science and Research has also studied the topic of Canadian research partnerships with entities connected to the People's Republic of China.
Recently, the Federal Court of Canada has weighed in on the topic of espionage in the university research sector. In its recent immigration decision - Li v. Canada (Citizenship and Immigration), 2023 FC 1753 (Li) - the Court was called upon to clarify the definition of “espionage” as this term is not defined in current legislation. At paragraphs 47 to 50 of the decision, the Court held:
[47] In summary, and having regard to the foregoing, I consider that the term “espionage” contemplates (i) the secret, clandestine, surreptitious or covert gathering of information on behalf of a foreign government or other foreign entity or person, or (ii) the reporting or communication of information, whether surreptitiously or publicly gathered, to such a recipient. I further consider it reasonable to include within the definition of “espionage” the unauthorized reporting or communication of such information to a third party acting as an intermediary for the transmission of the information to such a recipient. When such activity is against Canada or is contrary to Canada’s interests, it falls within the purview of paragraph 34(1)(a). This is so even if the information in question was gathered in public.
[48] Contrary to Mr. Li’s submissions, it is not necessary to demonstrate that the impugned activity be under the control and direction of a foreign entity, or that the information be regarded as secretive in nature. It is also not necessary to establish that the information in question was collected without the knowledge and consent of the person(s) whose information was gathered and reported. It will suffice if that information, even if publicly available, was communicated or reported upon to a foreign state or other foreign entity or person, without any authorization. This interpretation is consistent with the FCA’s teaching that the words in what is now subsection 34(1) of the Act be given a broad meaning: Qu FCA, at para 34.
[49] Mr. Li further maintains that espionage cannot be committed without intent or knowledge. Although he was not able to provide any authority in support of that submission, I am inclined to agree with his basic proposition. In my view, some element of knowing complicity or participation in one of the two types of activities described in paragraph 47 above is required. That is to say, it must be demonstrated that the person in question was aware that they were, or might be, either (i) gathering, in a secret, clandestine, surreptitious or covert manner, information on behalf of a foreign government or other foreign entity or person, or (ii) reporting or communicating information, whether surreptitiously or publicly gathered, to such a recipient.
[50] In the interests of completeness, it is relevant to add that the term “espionage” includes activities that are carried out on behalf of a foreign government, or other entity or person, pursuant to the laws of the foreign jurisdiction in question: Afanasyev v Canada (Citizenship and Immigration), 2012 FC 1270, at para 19 [Afanasyev]. Furthermore, “espionage” does not contemplate any element of hostile intent, or that the person engaging in the impugned activity have an appreciation of how the gathered or reported information may be put to later use by its recipient(s): Afanasyev at para 19. It also does not contemplate that such activity have an illicit outcome as its goal: Peer, at para 34.
Though one can agree that avoiding the potential of espionage and leaking of IP and know-how into foreign hands is important, should the reporting or communication of “publicly available” information to a foreign state or other foreign entity or person, without any authorization, be considered a form of espionage? Probably not, as its publicly available and is often as used as prior art disclosure in the patent system.
Indeed, sufficient disclosure, including the disclosure of prior art in certain circumstances, is a part of the patentee’s quid pro quo (the exchange) for the monopoly, and it is the heart of the patent system (Teva Canada Ltd. v. Pfizer Canada Inc., 2012 SCC 60 at paras. 31 and 32). Prior art is generally defined as evidence that your invention was already publicly known or available, in whole or in part, before the effective filing date of your patent application (see for example: federal statute 35 U.S. Code §102). At sections 28.2 and 28.3 of the Canadian Patent Act, reference is made to information that “...became available to the public in Canada or elsewhere”. In certain jurisdictions, applicants have the duty to disclose prior art at the time of filing the application and/or during the examination of the application, such via information disclosure statements in the United States, under the duty of disclosure, candor, and good faith, or section 29 of the Canadian Patent Regulations. During examination (or patent prosecution), patent examiners are also expected in their novelty (anticipation) and obviousness (i.e., lack of inventive step) assessments (patentability requirements) to review any publicly available information that became public anywhere in the world. As such, they have access to private and public databases and registers, containing millions of publicly available documents to conduct their assessments. Indeed, “Espacenet contains 100 million patent documents from more than 90+ countries including Canada and the U.S., plus 2 million records for non-patent literature cited in EPO search reports.” This is one of many other databases (see: Queens University website).
That said, what is or isn’t publicly available information: a mapping exercise
There is a wide gap between what is publicly available information and what is not (i.e., non-public information), for instance: confidential information, trade secrets, which should benefit from legal, contractual, and technological protections (i.e., NDAs, contractual protections through confidentiality clauses, security measures, etc.), subject enforcement actions (i.e., sanction for illicit conduct should it occur).
In other words, there should be a positive action to delineate the two (2) types of information, which raises the questions: (1) How does one delineate between the types of information, and (2) how can one protect information from becoming publicly available; hence the importance of information and IP management.
Examples of publicly available information
Prior art, which includes: (1) product that was available for sale, (2) commercial use of the invention, (3) articles, publications, or journals (printed or electronic anywhere in the world), (4) presentation at a public event (a trade show, conference, etc.), (5) public knowledge or use of the invention (e.g. demonstration), (6) previously filed patent application, provided that it has become published. It is worth mentioning that patent applications typically remain secret for a period of 18 months. Further information can found in the Government of Canada’s Trade Commissioner services, available at: Public disclosure and offers for sale in the US and Canada.
Public registries; Court and tribunal records, amongst other sources of information set forth in the Office of the Privacy Commissioner of Canada’s (OPC’s) Interpretation Bulletin on publicly available information and corresponding Regulations specifying publicly available information. Access to information requests may also render certain documents public.
The United States Office of the Director of National Intelligence also released a report titled Civil Liberties and Privacy Guidance for Intelligence Community Professionals, Properly obtaining and using publicly available information (CLPO, July 2011), in which it provides guidance as to the use of publicly available information.
Examples of non-public information
Confidential information, consisting of information transmitted between parties to an agreement, which contains a confidentiality clause, of which a sample definition can read as follows:
Trade secrets, which can be generally defined as “any business information that has commercial value derived from its secrecy”. The protection of a trade secret requires the following, at a minimum: (i) that the information has commercial value, (ii) that the information is secret, and (iii) that the information has been subject to reasonable measures by the business to ensure that it remains secret. Further information can be found here (Canada) and Trade secrets / regulatory data protection (US).
Classified and protected information, which are described in Public Works and Government Services Canada's (PWGSC) notice on levels of security – security screening for government contracts – security requirements for contracting with the Government of Canada. In addition, the World Intellectual Property Office (WIPO) has published a list of known filing restrictions for reasons of national security (see: International applications and national security considerations).
Abandoned provisional applications in the United States, provided no exceptions apply. In this regard, US provisional patent applications are abandoned and never published. However, an exception may apply to this secrecy: a provisional patent application is available for download by the public if one files a non-provisional patent application claiming priority of the provisional patent application, whereby the non-provisional patent application is either: (a) granted as a patent or (b) published. The provisional patent application can only be viewed through a direct request to inspect the provisional patent application or download a copy via the USPTO Patent Center. In Canada, the informal applications are eventually published unless withdrawn by the applicant.
Secret applications, filed under, for example: national IP legislation (section 20 of the Canadian Patent Act and corresponding NATO treaties (1960, 1977). Further information regarding the Agreement for the Mutual Safeguarding of Secrecy of Inventions Relating to Defense and for Which Applications for Patents Have Been Made, done at Paris September 21, 1960 can be found here (US Department of State), as well as articles (here and here, Gapcynski)
Information communicated with legal protections, such as Court orders, which maintain the confidentiality of documents.
Information with a legitimate expectation of privacy, amongst others.
Ensuring protection of information through information and IP management
In light of the above, information and IP management must be top of mind at all times, and that the information (or data) controllers must quickly determine what information should be safeguarded and benefit of protections so as to retain confidentiality as long as possible (i.e., information within a "zone of confidentiality), before eventually forming part of the public domain, or become publicly available.
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