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Posts Tagged: "confidentiality agreement"

Mitigating ‘Justified Paranoia’ via Provisional Patent Applications

As mentioned in Part I of this series, many inventors will seek to obtain some kind of patent protection so they can stake claim to their invention. Filing at least a provisional patent application is a necessary strategy, because when you file a patent application you are articulating your invention and getting on record with a filing date that cannot be taken away from you with respect to whatever is in your patent application. A provisional patent application can be a great first step, particularly if you are going to need some assistance later to develop your invention. It is also a good first step because you do not need a confidentiality agreement when dealing with a patent agent or patent attorney because the law already requires that information learned from clients or even prospective clients must remain confidential. So, even if you just seek the advice of a patent attorney or patent agent and never wind up hiring them, they are legally required to keep what you tell them confidential. This legal requirement is much stronger than any confidentiality agreement you could ever have them sign. This is true because any confidentiality agreement will say that if the information becomes public the signer is no longer obligated to keep the information secret. There is no such “out clause” in the attorney-client privilege. What you tell a patent attorney or patent agent about your invention is confidential and will remain confidential even if no representation relationship ever is undertaken.

Justified Paranoia: Patenting and the Delicate Dance Between Confidentiality and Investment

Most inventors understand that a certain amount of paranoia goes a long way when dealing with an idea or invention. Ideas cannot be patented, but every invention starts with an idea. When you have an idea that has been sufficiently formulated and described in a provisional patent application, you may even be able to license that invention idea without yet having received a patent. This all falls apart if you tell others about your invention or otherwise disclose your invention before a patent application is filed. Worse, if you tell someone your idea without a confidentiality agreement, they are free to use the idea without paying you anything. It can feel like the wild west sometimes for inventors seeking to become entrepreneurs—whether their dreams are to license inventions, to build a company to sell a product, or to offer a service representing the invention. Once your idea crosses the idea-invention boundary (discussed here), you can receive a patent, provided of course that it is new and nonobvious. But if you start telling others about your invention, they could make and use your invention without paying you—which is bad enough, but the mere act of someone else moving forward with your idea could forever prevent you from obtaining a patent.

What is a Confidentiality Agreement and Why are they So Important?

A Confidentiality Agreement, which is also known as non-disclosure agreement or simply as an NDA, is simply a contract between two or more parties where the subject of the agreement is a promise that information conveyed will be maintained in secrecy… These types of agreements are particularly useful when one is disclosing information that is valuable so long as secrecy is maintained (i.e., a trade secret), which can include both invention related information and business related information.

Developing a Plan for Employee Departures in California

As discussed elsewhere in this Take 5, although California employers generally cannot restrict an employee’s ability to work elsewhere, California employers can protect their trade secrets and confidential information. One pillar of a successful plan to do so is having an employee departure protocol.

Invention to Patent 101 – Everything You Need to Know to Get Started

This page and website contain contain detailed information to help inventors on the road from invention to patent… Below are a sampling of inventor help links to specific patent and invention related information throughout our website. As you read these articles you will invariably come across links to other articles of interest, which you can and really should read. While I believe inventors should take the time to read all of the pages throughout IPWatchdog.com, I have gone through the IPWatchdog.com archives and created several “reading assignments,” which will hopefully make the task of figuring out where to start more manageable, and which will help get you started. I recommend you do them in this order (i.e., starting with Reading Assignment 1), but if you find something that you just need to know then by all means jump ahead. You can also visit our Inventor Education Archive as well.

Revisiting the Standard NDA After ZeniMax v. Oculus

ZeniMax offers useful insights for enterprises seeking to maximize the benefits of NDAs while minimizing the time and effort needed to negotiate them… Most technology enterprises are well-acquainted with NDAs. On the positive side, they recognize the importance of entering into NDAs with outside parties before disclosing confidential information, whether in the context of discussions related to potential commercial transactions, funding, or joint R&D projects, or for other purposes, such as to support product-related investigations or certification activities. On the negative side, enterprises commonly associate the negotiation of NDAs with cumbersome paperwork, obstacles, and delay.

Protecting a Trade Secret: Taking Precautions to Preserve Secrecy

Trade secrets are easy to protect, at least in theory, because all the law requires is that the owner of the trade secret take reasonable precautions to keep that valuable business information a secret (i.e., not known by the general public). What is reasonable will vary depending on the value of the business information, but keeping things such as customer lists in a filing cabinet in a locked office and stamping the file “Confidential” are relatively low cost efforts and should be employed by everyone seeking to protect information as a trade secret. Any other efforts you take are certainly helpful.

What is a Trade Secret?

A trade secret is defined as any valuable business information that is not generally known and is subject to reasonable efforts to preserve confidentiality. Generally speaking, a trade secret will be protected from exploitation by those who either obtain access through improper means, those who obtain the information from one who they know or should have known gained access through improper means, or those who breach a promise to keep the information confidential. While virtually every business has at least some trade secrets, they are quite fragile because they protect information and resources that are secret, which necessarily means that protection is lost if and when the secret becomes publicly known. For that reason, when other forms of intellectual property protection are available, such as copyright or patent protection, one should carefully consider the wisdom of relying only on trade secret protection.

A Provocative Idea That Turns Out to be Wrong

A very troublesome flaw in Talent Wants to be Free is that the author frequently conflates non-compete agreements with two other very common forms of employee restraints: confidentiality (or nondisclosure) agreements and invention assignments. As most practitioners can readily appreciate, there is a world of difference between the first one and the other two, and they typically are not joined in a single document. Non-competes stop someone from taking a job with a competitor, and their use is restricted in many places and illegal in a few, like California.

Moving from Idea to Patent – When Do You Have an Invention?

In order to protect an idea it must mature into an invention first. This means that you need to be able to explain to others how to make and use the invention so that they could replicate the invention after simply reading your description of the invention in a patent application. A patent application does not need to provide blue-print level detail, but rather it must teach those who have skill in the area you are innovating what they need to know to be able to carry out the invention. You also do not need to have a prototype, but you will need to be able to describe the invention with detail, providing sketches showing your inventive contribution. In order to get this far it is common for inventors to seek assistance from a product development company…

Protecting Ideas: Can Ideas Be Protected or Patented?

Unfortunately, despite what you may have heard from late night television, satellite radio commercials or snake oil salesmen, there is no effective way to protect an idea… If you get stuck in the idea phase don’t just throw in the towel. Many good many inventors will become stuck in the idea phase from time to time, so if that is where you are you are not alone. It may surprise you to learn that you just think you are stuck in the idea phase and you might actually have an invention without even knowing it yet… Many people will have great ideas, but what separates those who can turn their ideas into money from those who cannot is a strategy to define the idea enough so that it can become an asset that can ultimately be protected.

12 Year-End Considerations for Non-Disclosure Agreements

As the year quickly comes to a close, I recently engaged in some file cleanup. During this cleanup, it struck me that the most common type of agreement – by far – I worked on for my clients in the past year was the Non-Disclosure Agreement (NDA). While NDAs are no doubt considered “routine” or “standard” by practitioners and business clients alike, I suggest that each time you engage in the drafting and negotiating of one in the New Year, you actually question the forms you normally use by considering…

Justified Paranoia: Confidentiality Before and After Patent Filings

Just because getting a confidentiality agreement is difficult doesn’t mean that you shouldn’t try. There are those out there that are used to signing confidentiality agreements, such as manufacturers and engineers who you might need to work with to create engineering drawings or a prototype. Whenever you are showing your invention to someone within your industry or to those who would have the technical knowledge and ability to move forward with your invention without you, a confidentiality agreement is both essential and more likely to be obtained. Just don’t expect investors or potential licensees to be all that interested in signing a confidentiality agreement , at least at first. However, if they like what they hear it is not unheard of that at some point they might be willing to sign a confidentiality agreement. So there is many times a delicate dance where you show a little to entice the reluctant signer of the confidentiality agreement. As interest builds they may become more willing to sign.

Moving Forward Responsibly with Your Invention Idea

Once you have done as much as you possibly can on your own you might want to consider hiring an engineering firm to provide additional information and input to put your invention over the top. The thing to remember is that if the person or firm you hire provides information that relates to the conception of the invention they will be considered a co-inventor. As a co-inventor they have rights to the patent. In order to get the help you don’t want to give up rights to your invention. You will want to have an agreement in place keeping ownership of the patent rights if you seek assistance from someone else, whether they are a professional or not. You should also have a confidentiality agreement in place, unless you are speaking with an attorney, in which case a confidentiality agreement is unnecessary. We have some free sample confidentiality agreements you can use as you see fit.

Lessons: 5 Odd Things Inventors Tell Patent Attorneys

One of the problems created by true newbies, particularly those who have not done any reading or tried to at least bring themselves up to speed to some extent, is that they present in a way that makes established patent attorneys and law firms want to run and hide. Whether it is unrealistic expectations, wanting a confidentiality agreement signed because they want to be able to sue you if things go bad, or wanting representation on a contingency basis, these things scream PROBLEM to most patent attorneys, thereby foreclosing a possible representation relationship in many cases.