Posted: 11/6/2008 4:16:56 PM EDT
| I have an invention that a company wants to see a proto-type,, How do I protect my invention during this time.. Please advise. |
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Preferably, document the design in a bound, page-numbered laboratory notebook, have it witnessed and notarized prior to meeting anyone from the company you want to disclose the idea to. Get a non-disclosure agreement (NDA) in place (see an attorney about the NDA) before any disclosure. If you disclose the idea without an NDA in place it is not a patentable idea any longer (unless you agree to get into bed with the ONE company you disclose it to).
I'm not a patent attorney - but I have dealt with them plenty in my prior career as an engineer. Good luck, MCA |
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If you really think you have a novel idea, one that is not already found in the published literature, then you should not disclose it to anyone without the assistance of an attorney who specializes in intellectual property.
The ways that you can lose the rights to an idea are too numerous to list. |
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Some good advise here, but I would go even stronger. If you decide to show the item to the interested party, they should clearly document in the NDA or any other documents that you own any and all Intellectual Property (IP) associated with the idea and even consider a penalty clause should they somehow try to duplicate your IP in any manor.
Do not let them have any drawings for the item. Ensure all drawings and notes are clearly labeled as IP owned by you. This is often over looked and comes back to bite people, it must be clearly marked on all documentation. Not a lawyer, but my 2 cents |
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Fortunately for you there is an IP lawyer in the house, and I've been doing this for a long time. Patent prosecutions are not my forte (you have to be registered as a patent lawyer with USPTO), but all the commercial, employment and licensing issues are right in my power zone. For example, my NDAs and invention assignment agreements are pretty bullet proof (pun intended).
Send me a note through the board with contact information and I'll be glad to talk off the clock (that's free time –– not something we bloodsuckers do very often) to see if I can help you. If I can't, I'm sure I can refer you to somebody who can. Regards |
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In addition to an NDA, every page of confidential stuff gets a header marked "TRADE SECRET INFORMATION" and a footer reading:
The contents of this document are strictly confidential
Viewing by or disclosure of the contents herein to any person is strictly prohibited unless specifically authorized by an authorized officer of (company name). This information shall be considered “trade secret” data. By accepting a copy of or viewing the contents of this document, the reader agrees to protect such copy and the contents thereof from all disclosure to any and all unauthorized parties in accordance U.S. and (State Name) State laws governing disclosure of trade secret information. |
| I was told by an IP attorney that large corporations usually would not sign an NDA because they may already have something in research and development like your idea. I have had an idea stolen by a company, and the lesson I learned was to spend the money on a good attorney and have him there every step of the way. I'm sure that you know, but here is a link where you can research patents https://patft.uspto.gov/ |
| Another option is to find a patent attorney and file a "Provisional" Patent. This protects your idea for 12 months from anyone else filing a patent on your idea. You can renew the Provisional patent or apply for a full patent. Provisional runs about $650 and a full patent runs about $3500. You need a patent attorney to help you file as there are a hundred ways around a poorly writen patent application. |
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You guys have used "Trade Secret" and "Confidential". His idea is neither of these. It is "Proprietary Information".
Disclose the idea to no one until it is patented. Know, also, that patenting it makes it a matter of public record. Anyone in the field will have free access to your patent. What has been happening is the new patents are reviewd and some variation, thereon, is made. The variation is then patented, avoiding royalites to teh original patent owner. Don't like it, better have money and lots of time to sue. Your success is anything but guaranteed, too. The one with more money usually wins. |
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Quoted:
You guys have used "Trade Secret" and "Confidential". His idea is neither of these. It is "Proprietary Information". Disclose the idea to no one until it is patented. Know, also, that patenting it makes it a matter of public record. Anyone in the field will have free access to your patent. What has been happening is the new patents are reviewd and some variation, thereon, is made. The variation is then patented, avoiding royalites to teh original patent owner. Don't like it, better have money and lots of time to sue. Your success is anything but guaranteed, too. The one with more money usually wins. First of all, "proprietary information" is a legally meaningless term. Trade secret law is how "proprietary information" is protected. Secondly, an improvement patent does not avoid paying royalties to the original patentee - so long as the original patent is still in force. |