There are different ways of protecting your inventive contributions in collaboration with, or disclosure to, third parties. Intellectual Property (IP) includes trade secrets, trademarks, copyrights, and patents. I’ll be discussing the protections you can use for patents, but confidential disclosure agreements (CDAs) (also called non-disclosure agreements, or NDA’s), employment agreements, and Assignments are also useful for protecting these forms of IP. The basic forms to protect your invention are a CDA, a patent or patent application, and an Assignment.
Ownership of IP resulting from a collaboration is often negotiable. Often parties will agree that each participant maintains ownership of its respective pre-existing technology, while truly jointly-developed technology will be jointly owned. When discussing your technology with a third party (and especially prior to filing a patent application), you should have a Confidentiality Disclosure Agreement (CDA) prepared and signed by the third party to comfortably disclose your product without holding back details that could lead to an innovative collaboration. A CDA spells out that any information disclosure during any discussions must remain confidential, meaning that any discussions about your product with the third party cannot be disclosed to others during or after the collaboration ends, and that any material provided to the third party should be returned. There are a number of provisions in a CDA that are useful, and should be curtailed to fit your needs and level of comfort when disclosing your technology.
A patent application filed with the US Patent & Trademark Office further ensures your priority claim to your invention, as it can serve as an objective measure of what you possessed as your contributions to the potential solution as of a given point in time. That means, if someone learns of your technology during a tradeshow, for example, and files a patent application to go after your tech, your priority claim will preempt theirs and they will not lawfully obtain a patent. A patent application by itself does not give you any patent rights – only following an examination that results in issuance of a patent are you then awarded with the exclusionary rights described earlier, and those rights are limited to what is claimed (i.e., the specific claim language in the claims section of the patent).
Even if you have a patent application pending, a CDA would still be useful when entering in discussions about your technology. The CDA can protect you from losing any potential coverage for anything discussed outside or not covered by your application or patent. That way you are protected no matter what, even if it might seem like overkill.
On the other hand, there may be benefits to not requiring others to sign a CDA if you have an issued patent or a patent application pending at the US patent office. For example, requiring others to sign a CDA before every conversation you have at a tradeshow could possibly harm your outreach. Having an issued patent or patent application already on file can attract interest, and often does!
Lastly, an Assignment is a legal contract that conveys someone’s intellectual property rights to someone else or another entity. Assignment documents are very useful for joint collaborations, rights over technology invented by an employee, and conveying ownership from an individual to a company.
In the beginning stages of developing your product, you may wish to hire a third party consultant, for example, an engineering design firm. Not only should you have a CDA in place, but the CDA should have a provision that explains what will happen to any intellectual property that is jointly created during the collaboration with the third party. This is helpful at the outset of a relationship as it will help guide the parties to answer questions of who owns the patent rights to technology resulting from the collaboration.
For example, if you hire a product designer to help with forming your prototype, they may be named as a co-inventor (depending on their contributions to the claims of the application). If they are a co-inventor, a CDA in place can require them to assign their rights over to you or your company, and an Assignment (or chain of assignments, such as in the event the employee of the consultant is obligated by a pre-existing employment agreement to the consultant company) is used to do that.
DISCLAIMER: These comments do not necessarily reflect the views of Giordana Mahn’s firm of Marshall, Gerstein & Borun or its clients, and should not be relied upon as legal advice for any particular situations. Providing these responses is not intended to and should not be considered as reflecting an attorney-client relationship.
