If you're trying to license your invention, you run the risk that someone will rip you off. Here aresome ways to avoid trouble.
If you've developed a potentially marketable invention, you are faced with a dilemma. To make moneyfrom the invention, you must generally license the rights to it to another business, often a manufacturer ordistributor. But in pitching the invention to potential licensees, you run the risk of disclosing so muchinformation that the invention might be stolen or no longer protected by law.
Horror stories abound of unscrupulous businesses who feign disinterest in the hard work of an inventor,only to turn around and use the inventor's description of her work to steal the invention for themselves --and reap huge profits. Some inventors have fought back in court and won millions -- money that rightfullyshould have been theirs in the first place. One study determined that trade secret owners prevailed in 75%of the cases -- poor odds for parties planning to steal. But winning these cases isn't easy or cheap.
Using Nondisclosure Agreements
So how can you shop your invention around without jeopardizing your rights? If your invention potentiallyqualifies for a patent, it may be worth your while to file a provisional patent application ($75 for smallentities) and obtain "patent pending" status. Most often, this will deter rip-offs. However, if you determinethat the invention is probably not patentable, the best way to protect yourself is to execute a nondisclosureagreement (sometimes called a confidentiality agreement) before youdisclose any secrets to a prospective licensee. If someone signs a nondisclosure agreement and later uses yoursecret without authorization, you can sue for damages.
Nondisclosure agreements vary in format. Generally, they contain these important elements:
- What's confidential. Every nondisclosure agreement provides a definition of confidential information ortrade secrets. Every nondisclosure agreement also specifically excludes some information from protection,meaning that the receiving party has no obligation to protect that information. Information is not protectedif it was created or discovered before or independent of any involvement with you.
- Obligations of the receiving party. The person or company you're sharing confidential information withmust generally hold the information in confidence and limit its use. Under most state laws, the receivingparty cannot breach the confidential relationship, induce others to breach it, or induce others to acquire thesecret by improper means. Most companies accept these obligations without discussion. If you enter into amutual nondisclosure agreement, you should also feel comfortable with these requirements.
- Time periods. How long must the information be kept confidential? This issue is often a subject ofnegotiation. Disclosing parties want a long period; receiving parties want a short one. Five years is acommon length in the United States, although many companies insist on two or three years. In Europe, it isnot unusual for the period to be as long as 10 years. Ultimately, the result depends on the relativebargaining power of the parties.
One factor in negotiations may be the shelf life of your idea. Ask yourself:
- How long will it be before others stumble upon the same innovation?
- If the product were licensed in the next year or two, how long would it be before the secret would be figured out?
If the answer to these questions is only a few years, then you are unlikely to be damaged by a shorter (two-to three-year) period.
Disclosing without an Agreement
It's always safest to get prospective licensees to sign a nondisclosure agreement, but you may not always beable to convince them to do so. When that happens, you are left in a vulnerable position. If you disclosecrucial information without the agreement, you risk losing your rights to the invention. If you don't discloseit, you risk losing a business opportunity.
Probably the most important factor to consider is the reputation of the person or company you're dealingwith. If the company has a poor reputation, the dangers of losing your secrets outweigh the businessopportunity.
How Intellectual Property Law Applies to Inventions
Under trade secret law, if you reveal your secret to the public, you lose your rights to the secret. In other words, once you've disclosed the secret, you can no longer claim that you own exclusive rights to it.
Under patent law, if you disclose details of an invention to the public before obtaining a patent, you must apply for patent protection within one year of making the disclosure. If you don't, the invention will no longer be patentable, meaning anyone can use it. If you have filed a provisional patent application, you still must file a regular patent application within one year.
If you decide to go ahead and disclose, proceed cautiously. Here are some tips:
- Disclose "around" the secret. A licensee is primarily concerned with two questions about yourinvention: What does it do, and is it profitable? Try to determine if there is a way to present yourinvention and an estimate of its costs without disclosing trade secrets. If you can give a company thisinformation, it may enter into a nondisclosure agreement.
- Establish a confidential relationship. A confidential relationship can, in some cases, be establishedwithout a signed agreement. An "implied" confidential relationship occurs when the conduct of the partiesindicates that they intended to create one. An implied confidential relationship gives you legal rightssimilar to those created by a written agreement, but it is always more difficult to prove that an impliedrelationship existed.
A confidential relationship can be implied if certain factors are present:
- The person to whom you gave confidential information solicited the idea from you -- you did not send it without prompting.
- You indicated that the invention was a business proposition and hoped for payment.
- At the time of disclosure you requested that the information be kept secret.
- The information is a trade secret -- it has commercial value and is not known by competitors.
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