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I have an Invention ... Now What?
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   Provisional patent and NDA
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   Author  Topic: Provisional patent and NDA  (Read 974 times)
flyingfish
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Provisional patent and NDA
« on: Aug 15th, 2005, 5:24pm »
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Hello,
I have filed a provisional patent application for my idea and now I am thinking about the licensing.  Do I need to have a company sign an NDA to show them my idea?  Is it safe to show them my design without an NDA?  What if they would say they have already beening developing the same design as I have and refuse to license my idea?
Thanks a lot.
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JimIvey
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Re: Provisional patent and NDA
« Reply #1 on: Aug 16th, 2005, 10:42am »
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on Aug 15th, 2005, 5:24pm, flyingfish wrote:
Hello,
I have filed a provisional patent application for my idea and now I am thinking about the licensing.  Do I need to have a company sign an NDA to show them my idea?  

Of course, you don't need to do that.  If you want to maintain trade secret protection until your patent application is published (or until your patent issues), it's a good idea to do that.
 
on Aug 15th, 2005, 5:24pm, flyingfish wrote:
Is it safe to show them my design without an NDA?  

"Safe" is another subjective term.  No one will get hurt of you show your design without an NDA, so I suppose it's "safe."  You could very likely lose any trade secret protection.  You will eventually lose it anyway, assuming you file a real patent application and it is published or issues as a patent.  Trade secret is an interim form of protection.  It is eventually replaced by patent protection if you choose to get a patent.
 
on Aug 15th, 2005, 5:24pm, flyingfish wrote:
What if they would say they have already beening developing the same design as I have and refuse to license my idea?
Thanks a lot.

"Thank you for your time.  We won't be needing a license."  or maybe "Don't call us; we'll call you."  Something like that.
 
Most NDAs (and I think trade secret law generally) do not try to cover material already known by the disclosee as trade secret.  
 
However, the ultimate winner in your scenario is the party obtaining a patent.  If they also file for a patent on the same idea, they (or you) can provoke an interference to sort out who gets the patent.  Independent creation/invention is not a defense to patent infringement.
 
I see this time and time again.  With a pending patent application (a real one, not a provisional), you essentially tell the VC/license "Pay me know or pay me later."  They almost always opt for "pay me later" and then call you nasty names like a patent troll or even a patent terrorist, because -- as we all know -- patents mame and wound many innocent people.  Eventually, VCs and business people will begin to understand how patents work.
 
But, you know what they say:  "sticks and stones may break my bones, but you can wire me the money at ....."
 
Okay, that's a bit overly optimistic, but you get the idea.
 
Regards.
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James D. Ivey
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flyingfish
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Re: Provisional patent and NDA
« Reply #2 on: Aug 20th, 2005, 6:57pm »
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Thank you Jim, now I get better understanding on this.
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ChrisWhewell
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Re: Provisional patent and NDA
« Reply #3 on: Aug 30th, 2005, 9:26pm »
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on Aug 15th, 2005, 5:24pm, flyingfish wrote:
Hello,
I have filed a provisional patent application for my idea and now I am thinking about the licensing.  Do I need to have a company sign an NDA to show them my idea?  Is it safe to show them my design without an NDA?  What if they would say they have already beening developing the same design as I have and refuse to license my idea?
Thanks a lot.

 
In addition to Mr. Ivey's good comments, my first reaction would be to want to know just what the contents of your provisional application are.   Some practitioners who write provisionals (and some individual inventors) have been known to cut corners on these to appease a client whose main motivation is to "save money", sometimes sacrificing protection.  If your provisional application is non-enabling for the commercially most preferable embodiment, then you might be in a pickle.
Towards that end, having a knowledgeable and experienced professional on your side can make a big difference.
 
« Last Edit: Aug 30th, 2005, 9:27pm by ChrisWhewell » IP Logged

Chris Whewell, M.S.
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