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(Message started by: Chelsea378 on Oct 11th, 2006, 10:50am)

Title: non-disclosure agreement
Post by Chelsea378 on Oct 11th, 2006, 10:50am
I had an idea for an existing product ( I want to market if for a different purpose).  It's patent has already expired and the art is public domain, so I can't  patent it.   There is no change to the existing product other than the look of it.

Is there anything I can do to protect my idea if I get a prototype made at a Industrial design firm?

Would a non-disclosure agreement help me any?

Title: Re: non-disclosure agreement
Post by JimIvey on Oct 11th, 2006, 12:06pm

on 10/11/06 at 10:50:29, Chelsea378 wrote:
Would a non-disclosure agreement help me any?

No, typically not.  If they learn of the information somewhere else or it "becomes" publicly available knowledge, they're generally free to use whatever information you disclose.  You can exclude those provisions in your NDA, but I doubt anyone knowing what they're doing would sign it.


on 10/11/06 at 10:50:29, Chelsea378 wrote:
Is there anything I can do to protect my idea if I get a prototype made at a Industrial design firm?

Maybe a non-compete agreement?  FWIW, I wouldn't worry about the design firm ripping off your public domain idea.  I'd worry about bigger, more efficient competitors copying your public domain idea.  There's not much you can do about that.  

Regards.


Title: Re: non-disclosure agreement
Post by Chelsea378 on Oct 11th, 2006, 3:07pm
I am worried about bigger, more efficient competitors copying your public domain idea...

it's tough to be small.

Ok, here's a unorthodox question.... can I file for a provisional patent then (even though my patent won't go though) but it will give me the patent pending status for a year that might keep the big boys away till I get it out there?

Title: Re: non-disclosure agreement
Post by JimIvey on Oct 11th, 2006, 5:23pm
Y'know, that is an unorthodox question.  Of course, you can, but should you?

For a real application (not provisional), you have to sign a declaration under penaly of perjury that you are the first true inventor of the subject matter of your application.  I generally don't recommend committing perjury, so that's pretty clearly a bad idea.

As for provisional applications, there is no declaration.  So, there's no perjury problem -- technically speaking.  There is an element of fraud to the whole idea, but I'm not sure where it would catch up with you, if ever.  

Personally, I don't recommend fraud, ever.  I just don't immediately see how and when your comeuppance would come up here.

Regards.

Title: Re: non-disclosure agreement
Post by ChrisWhewell on Oct 11th, 2006, 5:52pm

on 10/11/06 at 10:50:29, Chelsea378 wrote:
I had an idea for an existing product ( I want to market if for a different purpose). It's patent has already expired and the art is public domain, so I can't patent it. There is no change to the existing product other than the look of it.

Is there anything I can do to protect my idea if I get a prototype made at a Industrial design firm?

Would a non-disclosure agreement help me any?



It could be the case that your changing of the look of it might qualify the new embodiment for a design patent, in which case you might be able to obtain some protection.  If you can make money on the newly designed version, then consider spending some $$ on some counsel to see if it is protectable.  That might get you some sustainable competitive advantage.
Keep in mind that if you hire a design firm, that in the absence of a contractual obligation to the otherwise, they may own all the IP in the design they come up with, even though you are paying them to do the work.  I believe what you want is a works for hire contract, assigning you all the IP rights in whatever they do based on what you provide them, or during course of work being done under the agreement, but you should run this by a member of your State's bar to be sure.

Title: Re: non-disclosure agreement
Post by Chelsea378 on Oct 12th, 2006, 5:27am
thank you all for your advice.  It's nice to have people out there to answer questions (even unorthodox ones).  

After all the advice, I have come up with a new design and structures and elements so I should be ok now with being able to get a full patent.

thank you all for your help.

Title: Re: non-disclosure agreement
Post by biopico on Oct 12th, 2006, 7:56am
Are you sure a patent application is a course of action for your case?



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