• Understanding What to Keep Secret
  • February 16, 2015 | Author: Chinh H. Pham
  • Law Firm: Greenberg Traurig, LLP - Boston Office
  • Two of the most important requirements of patentability are that the invention must be novel and non-obvious at the filing date of the patent application. In the United States, the prior sale, prior use or public disclosure of the invention by the inventor or others may affect your ability to obtain a valid patent. Inventors may inadvertently jeopardize their ability to successfully apply for or be granted a patent by disclosing any information about the invention to the public, and thus, may fail to meet the requirement of novelty and/or non-obviousness.

    Additionally, when you disclose an idea to the public, you risk waiving related trade secret as well as patent rights. Trade secrets are only enforceable when you have taken steps to ensure they are-and will remain-secret. Although an inventor has up to one year from a public disclosure to file a patent application in the U.S., it is strongly advised that an inventor first take precautions to protect all IP, or risk losing all IP rights. In the new U.S. first-inventor-to-file system, it is even more important to be savvy about disclosure - or you risk that another inventor could file a patent application before you.

    Manage Confidential Information to Avoid Unintentional Loss of IP Rights

    One of the most important ways to protect IP is to avoid inadvertent or unplanned public disclosure. If the invention is released into the public domain - whether by publication, presentation, posting on a website, blogging, or discussion with potential customers or suppliers - before a patent application has been filed, a loss of the right to obtain a patent can result. Such public disclosure is an absolute bar for patentability in most foreign countries, although the U.S. has a one-year grace period for the inventor’s own disclosure (or disclosure by another who obtained the invention from the inventor). Additionally, such inadvertent disclosure of the invention can reduce or eliminate competitive advantage.

    There are some very basic documents you should always have in place to minimize intellectual loss of your intellectual property. The major ones are invention disclosure forms, NDAs, assignment agreements, and employee handbooks.

    Invention Disclosure Forms

    Invention disclosure forms are routinely used by companies to document inventions. This helps establish date and content of the invention, as well as inventorship. In situations where a third-party obtained the company’s invention and filed for patent protection before the company, the invention disclosure form may be helpful in establishing an earlier invention date (under the first-to-invent system), or showing that the third party obtained the invention from the company (under the first-inventor-to-file system).

    • Non-Disclosure Agreements

    Non-disclosure agreements (NDAs) may be used to maintain confidentiality and protect rights if disclosure to third parties is necessary for good business reasons. NDAs should be utilized when entrepreneurs present their inventions or business plans to potential investors, vendors, or advisors in an effort to secure financing or commercialize their product. To the extent possible, one should try not to divulge sensitive information until the NDA is signed.

    • Invention Assignment Agreements

    An invention assignment agreement basically provides that all ownership rights in anything the employees, contractors, or consultants develop within the scope of their employment or relationship with the company are automatically assigned to the company. This helps avoid any ownership discrepancies.

    • Employee Handbooks

    Employee handbooks are great for laying out the expectations of employment, particularly the expectation that the company’s intellectual property is not to be shared, disseminated, or stolen under any circumstances.