What to Do Before You Disclose
Author: Gerald R. Prettyman, J.D., LL.M.
A question high on the list of first asked questions to a Patent Attorney, is “what do I need to protect my idea before I talk to an investor, (a manufacturer or licensor), etc. The answer, or answers as a inventor should take multiple steps, are not complicated.
The first step is to record the idea in writing. While many inventors are reluctant to putting the idea in writing with the thought that doing so limits them to only what is in writing, not having the idea in writing violates the rules of proof. You can only prove the idea is yours, your date of invention, and the whole of the idea, if you put it in writing! You will also need the idea in writing to use the next steps to protect the idea.
The second step is review the idea and your written notes with a Patent and Intellectual Property lawyer. There are many reasons for this review. For one, a patent protects only certain ideas and only certain aspects of those ideas. A patent can protect a tangible and useful item, but there are people who argue that software is not tangible (i.e., abstract) and is therefore not protectable. Software can, however, have creative elements, and those are protectable by Copyright. Then there are elements of ideas that could be protectable by Trademark if properly used. Your Patent and Intellectual Property lawyer might also discuss with you the elements in the idea that are not protectable by patent, copyright or trademark, but might be protectable as a Trade Secret or with a Confidentiality Agreement. Make sure you prepare a chart of your idea, your filings and when to file for them. You should also discuss with your Patent Attorney what you need to hold back from disclosure and note this information on your chart. Almost never does an investor or manufacturer need to know everything, or at least until the other person has signed a well-prepared Confidentiality Agreement.
Use NDA’s Correctly and Sparingly
Some inventors believe they need an Non-Disclosure Agreement (NDA) with a lawyer. There are three reasons why this is false. First, California lawyers are bound by penalty of law to protect client information; second, most NDA’s lack adequate enforecement measures; and third, you are hiring the lawyer to ultimately to help you properly disclose the idea. This is particulary true with patent lawyers.
The third step is to file a provisional patent application for the functional aspects of your invention. The reason for filing a provisional patent application is that (1) the U.S. and every other country requires the filing of a patent application before public disclosure or you forfeit the right to a patent, and (2) even if the idea currently lacks a patent protectable feature, you may develop a patentable feature, but by not having a patent application on file, you risk forfeit of the right to a patent.
Discuss Patent Application with a Patent Attorney
The fourth step is to discuss a design patent application with your patent attorney. Design patents protect the appearance of an invention, but (1) a provisional patent application does not apply to design patent applications, and (2) the allowed time frame for filing a design patent application is much less than for a utility patent application. As with all patents, if you fail to file a design patent within the required time, you forfeit the right to a patent.
The fifth step is to use your chart as confidential guide. Make sure you do not disclose your trade secrets to anyone, including investors, until after they have joined you, and make sure you have a solid Confidentiality Agreement or Non-Disclosure Agreement. Note that these Agreements are distinct as there are multiple varieties. An NDA, for example, may be for unilateral disclosure, bilateral disclosure, performance related, employment related, for trade secrets, non-compete related, or for a patent agent should you use one. (Note: patent agents are not bound by lawyer confidentiality rules). Be sure to tell your patent lawyer of all the people to whom you plan to talk.
Lastly, you might consider a Freedom to Operate (Patent Search) review. This step is to assist you in knowing whether your invention may infringe on someone else’s patent. While there are many companies that sell this service, you can also get this service as a free add-on by filing a regular (non-provisional) patent application. After all, the job of the Patent Examiner is to search for earlier filed patents relevant to your invention.
Once you cover your steps, you are ready to disclose. Good Luck!
Gerald R. Prettyman is Patent and Intellectual Property Counsel to J.G., PC., Business & Corporate Law. Mr. Prettyman earned his law degree with a Certificate in Intellectual Property with Distinction and a Masters degree in Intellectual Property.