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I have an Invention ... Now What?
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   showing provisional app to prospective licensee?
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   Author  Topic: showing provisional app to prospective licensee?  (Read 1209 times)
JimIvey
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  jamesdivey  
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Re: showing provisional app to prospective license
« Reply #5 on: Dec 22nd, 2005, 1:11pm »
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Oops #2.  Yes, I had presumed an NDA was given.  
 
If they refuse to sign an NDA (or provide their own anti-NDA disguised as an NDA -- quite common), you have to decide whether  your patent position is or will be strong enough to protect your interests.
 
I have just a couple more thoughts.
 
First, it sounds like someone within the licensee is interested.  Perhaps you could leverage that interest to get them to sign an NDA.  It might help to point out that your NDA (assuming it does) gives them an explicit out if they already know of the information, it becomes publicly known without their involvement, or it is disclosed to them by another party unrelated to the NDA.  That might give them some comfort.
 
Second, I have a mildly sneaky idea.  There was a recent case upholing an entirely oral (unwritten) NDA.  If you find yourself in the company of someone that might be able to bind the licensee (the company itself), you might just innocently say, "You're not going to tell anyone about this, are you?"  Perhaps you can say "Now, I presume ABC Corp. can keep a secret.  I don't want to show this to you if you're going to share this information outside ABC Corp.  Can I trust you?"  Go home (or even before getting home if possible) and immediately document that conversation, remembering the exact exchange in as much detail as possible.  
 
Lastly, my disclaimer.  I'm not at all experienced in trade secret law.  You may want to discuss these approaches with your attorney.
 
Regards.
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James D. Ivey
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Sue
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Re: showing provisional app to prospective license
« Reply #6 on: Dec 22nd, 2005, 3:31pm »
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Thanks again.
 
I guess Im unclear on the definition of a trade secret - if I filed for a ppa, then I thought the idea was not a trade secret (but I guess its not actually protected or publicly disclosed either, so it seems like its in transition)...  Its a frustrating situation.  I dont want to spend thousands in legal fees until I know I have some form reimbursement, yet I dont want to be taken advantage of...  At the same time, if I deal with them as a paranoid, they will likely become frustrated with me.  This is a difficult game - there are only a couple of real medical device manufacturers out there, so its not like there are many places to shop an idea around.
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Isaac
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Re: showing provisional app to prospective license
« Reply #7 on: Dec 22nd, 2005, 3:45pm »
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A provisional is not accessible to the public via the patent office until a non provisional claiming priority to the provisional is published.   If you don't disclose the contents you can maintain the subject matter as a trade secret.   If you elect not to have your non provisional published, you can maintain the subject matter a secret up until the time a patent issues.
 
As you suggest, parties may be reluctant to sign NDAs, but the reluctance may fade as it becomes more clear that money can be made.  Disclosing your provisional may disclose everything.  If that's what's needed to make a deal, you may have to do so.   But summaries can be generated at various levels of detail.  Those summaries might generate interest and still leave you with some secrets.
 
Of course I don't know your market, the players, the culture etc.   I could not give you any concrete guidance.
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Isaac
Sue
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Re: showing provisional app to prospective license
« Reply #8 on: Dec 22nd, 2005, 4:06pm »
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Unfortunately, the idea is *relatively* low tech from a functional standpoint (not from a materials standpoint) - there's really not much to hide once you see the idea.  There are many variations (alternate embodiments) of the invention described in the ppa, which I suppose I could not disclose initially but frankly they make whole the idea much more appealing as a whole...   I guess I'm going to have to trust them.  As far as I can tell, the only big concerns are that they would -  
A.  tell me that they are not interested but pursue it anyway (and hope i abandon it), which they could do anyway
B.  try to design around my provisional patent, which they ultimately could try to do anyway
C.  directly infringe on my idea and force me to sue, which they could do anyway
 None of this seems really worth their while...  The way I see it, management at these companies arent spending their own money anyway, and it seems more likely that they would just offer me an unfavorable take it or leave it deal rather than bother to do any of the above.  All in all, probably better to roll the dice and just show it to them, and if their serious then i'll hire an attorney.
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