BizMorph

NDA vs Patent Application

(reprinted from BML January Newsletter)

Protecting your rights while promoting your invention

 

I recently attended a talk given by a serial entrepreneur with a great track record of success.  In the discussion surrounding the talk the issue of NDA's came up.  The speaker opined that NDA's were a thing of the past.  That many large companies today refuse to sign them.  That they are difficult to enforce and getting them wastes time better spent elsewhere.

 

The entrepreneur suggested that inventors forget about getting NDA's and concentrate on building up their business so that they could dominate the market and demonstrate the value of their invention with sales statistics.

I believe there is a lot of truth in what the speaker said but what he said is also limited because it omits a good deal of important information and also ignores other options open to the inventor.

Since I have been in business I have signed dozens of Non-Disclosure agreements.  Most of them are pretty standard.  The only major differences I have found between them are in the term of the agreement. I did find one client who wanted the term to be "in perpetuity".   I refused to sign that one.   But otherwise getting an NDA signed with small companies and individuals has been easy.

Getting a large company to sign an NDA is another matter.  For whatever reason staff attorneys are advising big companies not to sign NDA's.  I have also heard it said that VC's and Angels wont sign them either.  My guess is that they want to avoid potential lawsuits around breach  of these NDA's.  

 Sometimes a big company will want you to sign their NDA which may have  some unacceptable content.  And some attorneys will combine NDA's with non-compete agreements, arguing an NDA only protects you from the other party disclosing your information but not from them using it.

So how does an inventor protect themselves when they want to talk to a big firm about licensing their invention or an Angel or VC about funding their  idea.

The simple answer is to file a patent application.  A provisional patent application can be quite inexpensive if you do the work yourself and cost about half the price of a full  application if you have a professional write it 

You can inform the party you are talking with that you have filed a provisional application on the material you are disclosing to them.  If you later file a non-provisional application (which you must do in one year) you can enforce your patent ,should the company use your IP  without permission,  as soon as the patent application publishes.

 

This method is not as quick as an NDA but it is probably more effective and will allow you to talk with those large companies and investors who refuse to sign NDA's while still protecting your intellectual property

 

If you need more help or advice on this topic, contact us.   just send us an email to rblazey@businessmetamorphosis.com or  give us a call at   (585) 520-3539  

 

The Cosmo Kramer School of Patenting

 

If you are familiar with the Seinfeld TV series you know who Cosmo Kramer is.   Cosmo had lots of inventions some of them were good ideas and some not.  But he made  lots of mistakes  in managing his ideas.  Like the time he gave away the rights to “A perfume that smells like the beach”.

In a small technology company ideas come up all the time.  Sometimes they get captured and patented but most of the time not.  Many companies feel that its not with the time money and effort get patent protection for their invention.   Sometimes that’s true and other times its like throwing money out the window.  Like the way Cosmo felt when he met a model wearing the perfume he had invented and told Calvin Klein about (while being laughed out of their offices).

You obviously can’t run off and patent every idea that comes up in your company.  But you should have a system to screen those evanescent ideas and protect those that are worth the trouble because of their value to the company or to someone else via a license.  Let BML help you with that.  We can set up a system for you to screen ideas  and determine which ones are worth following up on.  We can also help make sure you are ready when you do go to an attorney and we can  help you understand and respond to those confusing “office actions” from the patent office.

Just email us or call - rblazey@rochester.rr.com   (585) 520-3539  www.bmllc.net

You’ve Got a Great Idea – Now what do you do?

 

If you have an idea and you want to make it a reality  you need to own it.  Turning an idea into a commercial product that  you can sell or make your self takes lots of work.  As Edison said “Invention is 1% inspiration and 99% perspiration”.  Let us help you sweat a little less.

  Before you run off to a patent attorney or “call your  friend George”,  contact us.   We  help people own their ideas. If you don’t own your idea anyone else run with it and you can’t do anything about it.   We are not patent attorneys but we do the upfront work , like patent searches, that is necessary for you to work effectively with an attorney.  We know the patent process inside and out and can help you save time money and frustration when you get maddeningly confusing letters from the Patent Office.

Just contact us using the information below or log on to our website for more details.

rblazey@rochester.rr.com   (585) 520-3539   www.bmllc.net

 

What are Your Patents doing for you today?

Your Company has invested in a good size portfolio of patents.  What are they doing for you? Besides costing you maintenance fees?

Technology companies who understand the value of patents often amass a significant number of them. Some of the patents are central to the operation of the business and others simply serve to form a “Patent Thicket” around the valuable patents making it harder for copiers to attack them. 

However , some of those patents you hold are just costing you money .  Maintenance fees add up quickly particularly on patents that are several years old.   Perhaps your company is big enough to afford an IP management department, but usually in small companies this task gets assigned to one person as an afterthought. 

We can help you manage your portfolio.   We can analyze it and we can even do a patent map if you want.   We once did one for a major food company who was merging with a snack company and wanted to combine their portfolios.   We can even help you set up a system to gather those ideas your innovators keep coming up with and patent the ones that are worth it, before the ideas get forgotten or the inventor moves on to other projects or even other locations

Brooklyn Bagel - Garage Sale:

One of my best clients is having a garage sale. Here's the notice:

 GARAGE SALE of 40 years of stuff (yard, garage & pool items, tools, housewares, jewelry, books, some antiques, toys, lamps, bagel knives and much, much more…..)

•  WHEN: Friday April 17 10-5, Saturday April 18 10-5, Sunday April 19 10-2
•  WHERE: Wendy & Dennis Moss, 4 Twining Court, Pittsford, NY 14534, (585)586-6581
•  (Twining Court is off of Charter Oaks which is off of Mendon Rd (RT 64) which is south of Pittsford Village – follow sale signs)

Come early, help as much as you can & have loads of fun!
Please feel free to forward this invite to your friends and relatives.

Letters and Comments - BML Newsletter

To Readers of the BML Newsletter:

 

Many of you have wished to comment on articles in the newsletter and up until now there has been no mechanism to do so.  Now if you wish to comment you can just reply to this article.  Please mention the issue of the Newsletter (Month, Yr) and the title of the article you are commenting on.  Add your name if you wish

 

Best Regards,

 

Dick Blazey

How to Implement the Patent Law Changes in Your Business

Guest Article by Tracy Jong, Patent Attorney

You have undoubtably read about how The America Invents Act changes patent law and practice in the U.S. Now you are left to figure out what your company should do to implement the changes. Do you need to do anything? Will it matter? 

Yes, it will. Let’s look at some real steps you can take to protect your technology. 

• Review your internal procedures for capturing potential inventions. How do you solicit and record new technologies from your employees, contractors, consultants and joint ventures? Do your policies encourage employees to report new ideas? Is there an incentive for doing so? Good written or electronic records will provide the necessary evidence in terms of both substance and timeline in order to put your company in the best position to take advantage of derivation proceedings and the prior user defense.  Use inventor journals to record and document research; regularly have them witnessed and dated. 

• Review or create an intellectual property protection program, including employee policies and agreements, to convey ownership of patents and copyrights to the employer confidentiality agreements and trade secret protection measures. Mark documents confidential, use computer passwords and other electronic security measures and educate your employees on the expectation and importance of confidentiality. 

• The AIA enhances the importance of confidentiality agreements and supports trade secret protection. Take this opportunity to review and update your confidentiality and nondisclosure agreements. Educate your employees to put greater emphasis on Confidentiality Agreements. Emphasize to them that it’s not about distrust, but to protect patent rights. They tend not to use them when they “trust” the other person to whom disclosure is made. 

• When signing confidentiality agreements presented by others, read them carefully to understand all of the provisions, such as whether there are restrictions like non-use and non-competes. These seem like such common documents that people often do not always take the time to appreciate the promises and burdens they are undertaking. 

• Use this opportunity to review and update your consultant contracts and joint development agreements to clarify technology ownership issues in view of changes to patent law novelty/prior art/obviousness scope

• When doing prior art searches, expand your search to as many major global sources of prior art and relevant activities.
• Actively monitor applications and patents in your key technology areas
• You may want to use a patent watch service or monitor weekly USPTO publications (Tuesdays for issued patents and Thursdays for patent applications).
• Proactively evaluate your technology areas to determine if there are some areas where “defensive publication” or intentional disclosure is the best or most cost-effective strategy. For example, you should consider defensive publication when foreign filing is unnecessary or limited. You will want to publish to prevent competition if you are not able or do not want to invest in a patent.
•  For key technologies, file provisional patent applications early to establish prior art dates. Be conservative and file provisional patent applications before all public disclosures or any sales of the technology embodied in or used in the manufacturing of a product. When it is available, it is best to include experimental data that can demonstrate your knowledge of the metes and bounds of the invention. Remember, as tempting as it is might be to keep some portions secret, you must disclose ALL of the technology for the patent to be enforceable. 
• When you file nonprovisional patent applications, use the Fast Track option if you need a speedy process and can afford it the extra few thousand dollars.  

• Develop a website for virtual patent marking. This will enhance your ability to collect damages from potential infringes. It will also help manage against false marking claims. However, do NOT mark products as patented when they are not. 

 

• Proceed conservatively. Any prior art exception for inventor disclosure and derivation claim should be narrowly construed – precisely the same invention (even minor variations are likely to be problematic until the law is interpreted over time). Be sure that you file new provisional applications on even slight variations of the technology. Conservative practice will ensure that the company can benefit from derivation proceedings and will not be subject to prior art rejections, especially under Section 103 obviousness. The new 102 exception or grace period for inventor disclosures will likely be narrowly construed to cover the exact invention only and may not extend to non-disclosed variations, no matter how minor they may be. The same narrow construction is likely to apply in derivation proceedings. There is no concept in the new law of “derivation-in-part” for situations where the original invention is modified or improved on by someone else. Protection is likely to be accorded only for the exact version of the invention that was disclosed or shared with the other party.

 

• Lastly, organize your patent portfolio data. This will also help minimize the chance of missed maintenance fee payments.

 

Our firm can help you with these strategies to implement and benefit from the new patent laws. Call our office if you would like to discuss your situation in detail. We can help customize a technology protection strategy that helps your business profit from its most important and valuable assets.

 

 

Lessons from "The Social Network" [Jointly developed Intellectual Property]

Reprinted from the Business Metamorphosis Newsletter [www.bmllc.net]  December 2011

 

 

 

It's not often that an abstruse legal subject such as Jointly developed Intellectual property becomes the subject of a major motion picture, but that in fact is what happened with "The Social Network".  The movie about the founding ofFacebook, and who really invented it  is  rooted in the complex legalities of intellectual property law.

 

The movie is built around a court case between the Mark Zukerberg, the founder of Facebook  and the Winkelvoss twins who claim that he stole the idea for Facebook from them.   The story is very interesting to someone like myself who studies Intellectual Property ownership because it's an example of what happens when you don't follow the established procedures and then end up in a mess as a result.

 

As the story goes the "Winkelvii"  hire  Zukerberg to write the software that will drive their invention,  called the Harvard Connection.  At the time, social sharing sites were not unknown as MySpace was already in the market and doing quite well.   The Winkelvii supposedly had the idea to focus social sharing websites  on specific Universities rather than make it open to every one as MySpace did then [and Facebook eventually did also].

 

  When they hired Zukerberg they made their first mistake.   They did not execute and sign an intellectual property agreement with him.   It's a very common practice to draft such agreements.  Most large companies use them.  I signed one at Kodak.  They say very plainly that anything you invent on your boss's dime belongs to them, not to you.   Zukerberg could have declined to sign, but he never had to.

 

The Winkelvii apparently knew  little about writing software.  That's why they hired Zukerberg.  He eventually decided that  their concept was "lame"  and  went  off  on his own to design a "better mousetrap"  which eventually becomesFacebook.   Since the inventions Zukerberg makes after parting from the Winkelvii make no use of their original concepts,  as Zukerberg concludes, when he is brought to court over the matter, he feels they contributed nothing and are owed nothing.

 

Strictly speaking both the Winkelvii and Zukerberg are co-inventors as they both contributed elements of the final invention.  The rule in patent law is that anyone who is responsible for at least one patent claim is a co-inventor and thus is named on the patent. The fairest way to handle such situations is with a Joint Development Agreement. 

 

 A properly constructed Joint Development agreement (and I've seen many) has 2 basic rules. 

1) Each side specifies what they owned in advance.  The agreements  usually allow them to keep that material.  

2) Anything that is developed after the project starts, no matter by whom, is considered Jointly Developed Intellectual Property and its ownership is the subject of, and is determined by, the agreement.  

 

If the Winkelvii and Zukerberg had executed a JDIP agreement, both would have owned a piece of Facebook as specified by the agreement and there would have been no need for a court battle. 

 

The Winkelvii eventually earned $67M from their court case.   But, given the current value of Facebook, ($24-$32 Billion ) that was chump change.  Their lawyers also probably took at least a third of their $67M.   I understand they are now suing for more. They are not expected to get it. To bad they didn't think things through at the beginning.

 

 What is not said in the movie is that the Winkelvii founded the Harvard Connection well before connecting with Zukerberg.  If they had patented their  invention, and never even  connected with Zukerberg,  his inventions would have been viewed as improvements to their patent, and while he could have patented the improvements he would have needed a license from the Winkelvii to practice them.  All together the Winkelvii were the ones who made the biggest mistakes and lost the most as a result.

 

 If you are considering Joint Development of an invention, find out how to  do to right.  Just  check us out at www.alacartepatents.com , write us at rblazey@businessmetamorphosis.com or  give us a call at  (585) 520-3539  

 

 

Should you File a Provisional Patent Application?

 Provisional patent applications have value but its not always what the people who write them think it is.   A provisional patent gives the applicant one additional year to file a non-provisional patent application but its no substitute for a real patent application.  If you don't file a non-provisional within one year the provisional expires and you loose the one year extension that it brought you. 

The most important value of a provisional application is to protect your patent rights from being lost due  to public disclosure or offering for sale.  If you do either of those things without filing a patent application, you start a one year period during which you MUST file the patent application or loose all rights to your invention which becomes part of the public domain.  You loose all European rights on offering for sale or public disclosure , immediately.   There is no grace period for European applications. 

A provisional patent is filed but not examined.  That means no one will look at your provisional application. It will simply sit on the shelf until such time as a non-provisional claiming it is filed.    Then it is removed from the shelf and compared to the non-provisional.   Any material which is in both applications gets the priority date of the provisional. 

So what should be included in a Provisional application?   Many attorneys don't include claims in a provisional or include just 1.  The body of the provisional should contain everything you want included in the non-provisional patent. If you do this correctly, most of the information you want included in the non-provisional will get the "priority date"  of the provisional.

Another useful property of the provisional patent is that it is not published.  That means its not disclosed so if  you so choose you can resubmit the provisional after it expires.  What you have lost by doing this is the priority date, so anyone who happened to file on something similar to your invention during the year your provisional was in force, is now prior art which can be used against you.

For this reason we recommend anyone contemplating this strategy do a patent search for patents filed in the patent classes into which your invention falls , for the year that has just been lost due to the provisional's expiration.

 

 

 

Kicking the Tires : Checking out Potential Joint Venture Partners

It's important to know who it is you are  doing business with.  Many small businesspeople have found to their dismay that the company they had invested time and money getting to joint venture with was not who they thought they were.  We had such an experience recently when someone contacted one of our companies with an exciting proposal.  They claimed to be part of a well respected firm which could have credibly stood behind the promises they were making ,   but it later turned out they were working on their own and using the firm to establish a false credibility.  One one company buys another, its common practice to do a complete analysis of the other firm,  and a "due diligence"  report is often prepared.   However the time and cost associated with these reports makes them impractical for many purposes.  For example, if a company wants to consider several possible merger partners the cost of doing a full due diligence on all of them may be prohibitive.  Also the searching company may not need all the information in a due diligence report to make a decision.  This is the reason that Penguin introduced our First Look product line.  First  Look gives the purchaser a chance to buy only the information that they need and get it faster.  Also,  Penguin has partnered with C3 Business Information , vendor of Skyminder reports to provide top flight credit information on target companies.   Whiile you can often find much of what you want on the web,  a web search may also give you tons of irrelevant material to sort through.  Also some very useful  data sources are only available by paid subscription.   Penguin has those subscriptions and a skilled professional researcher who knows how to use them.  Contact us when you need to find out WHO that other party with the exciting offer really is.

 

Storming the Castle: How to get your ideas in front of the Right people

One of the most difficult problems in patent licensing is making contact with the people who  have the authority to make a decision on licensing your invention.  In many companies today the decision makers are so well insulated from the outside world that Michal Boylan in his book "Accelerants"  likened reaching them to storming a castle. 

Not that these folks have ever been easy to reach, but in the past the "gatekeepers"  were often human beings who could be reasoned with.  Those individuals have long since disappeared and been replaced by voice-mail trees that operate like Escher's endless staircase leading nowhere.. 

However, all is not lost because there are new media available that offer different routes to the decision makers.  Among these are the social media , particularly Link edIn. You can use these media to find out who works at the companies that you are targeting and more importantly who you know who can introduce you to them.

 

The first problem for the invenor or their agent is to identify who the decision-maker is.  Unless you have access to an internal corporate phone book (or its on line equivalent) this is extremely difficult,.

In some large companies there are persons whose job it is to "protect" the company from outside inventors.   The reason that such an unlikely job exists is that those companies are constantly creating new ideas internally.  They don't want find later on that their new product can be blocked in the marketplace by lawsuit from an inventor claiming he told them about it.   Hence the "Outside Ideas Office"  whose job is to be the only one in the corporation who talks to outside inventors,  and more importantly never to other members of the corporation.

To bypass this office you need to talk to someone else, for which you need an introduction.  And you need to be sure this person never sends your idea to the "Outside Ideas Officer"  as that is the kiss of death.

Again the Internet is one of your best resources to help find decision makers because they are often well represented at trade association conferences and other public documents.  For publicly held companies you can also find information on the officers and directors but this information is unavailable for many privately held companies.

If you need help in getting to the right people, its helpful to deal with a company that has been through this process and may even have contacts in the companies you are targeting.   Give us a call at ITTr and see if we can help