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   Author  Topic: Confidentiality agreements and patents  (Read 2443 times)
Tony Kondaks
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Confidentiality agreements and patents
« on: Jul 23rd, 2007, 1:29pm »
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Suppose I am approaching a company in order to sell them my patented idea.  How necessary is it to get a confidentiality agreement or non-disclosure agreement signed by them prior to telling them what the idea is?  After all, if I have a patent or patent-pending on the concept, isn't that enough protection?  Indeed, if the company did go ahead and steal the idea, wouldn't that be patent infringement and therefore put me in a position to sue?
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JimIvey
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Re: Confidentiality agreements and patents
« Reply #1 on: Jul 23rd, 2007, 2:48pm »
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If you have an issued patent, a promise of confidentiality would be useless, unless you hope to discuss technology beyond that disclosed in your patent.
 
There may be other benefits of an NDA such as a promise not to use the information you disclose.  If they infringe your patent, you might be able to stop them in contract law rather than patent law -- probably at much less expense.
 
In the end, it seems any benefit you might get would be relatively minor.
 
And, "patent pending" is not "protection" in the way most people think of protection.  You can't stop anyone from using your idea with only a pending application.
 
Regards.
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James D. Ivey
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Tony Kondaks
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Re: Confidentiality agreements and patents
« Reply #2 on: Jul 23rd, 2007, 5:19pm »
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Thanks for your response.
 
I found your last paragraph most interesting because I was under the impression that pending was, indeed, as much protection as issued, at least in the circumstances described.  Why woudn't pending provide the same protection, at least until it was rejected by the USPTO?
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JimIvey
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Re: Confidentiality agreements and patents
« Reply #3 on: Jul 23rd, 2007, 5:45pm »
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The short answer is that allowing people to stop commerce merely by filing a patent application is just far too disruptive to the economy.
 
Here's an example:  Suppose I filed a patent application a year or 2 ago that claims 3D desktop/window switching for a windows manager in a computer operating system.  Suppose that I determined that MSFT's new Vista infringed my pending patent and sued.  Should I get billions and stop distribution of Windows Vista?  My application hasn't even been reviewed by an examiner yet.
 
Now, I believe some sort of 3D desktop and/or window switching has been around for at least 2-3 years -- although I could be wrong.  Suppose that 3D windows managers have been around that long.  Ultimately, my application should be rejected and I should not get a patent.  But, who cares?!  I have my billions and I disrupted a global economy for a few months/years!  I'm happy!
 
Now, consider that hundreds of thousands of applications are filed every year.  Consider further that (I would guess) a large majority of them ultimately have their claims narrowed before issuance as a patent or don't issue at all.  That's a huge amount of economic disruption that shouldn't happen because the applications were not patentable with the claims as filed.
 
So, in our system, we wait until it's determined that the applicant deserves a patent before we grant the power to prevent others from making, using, selling, and importing the claimed invention.
 
Regards.
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James D. Ivey
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MrSnuggles
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Re: Confidentiality agreements and patents
« Reply #4 on: Jul 23rd, 2007, 8:16pm »
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on Jul 23rd, 2007, 5:19pm, Tony Kondaks wrote:
Thanks for your response.
 
I found your last paragraph most interesting because I was under the impression that pending was, indeed, as much protection as issued, at least in the circumstances described.  Why woudn't pending provide the same protection, at least until it was rejected by the USPTO?

 
Patent pending may give you some protection in the situation you described, but that may be mitigated by several factors.  If you fully described your idea in a patent application, then at least you have evidentiary documentation that you were the first to invent and first to file.  However, if your discussion went beyond the scope of what you filed, then you may not have "protection" (and I use the term loosely).  Another problem with relying on a patent application is that you don't know what you don't know (in terms of prior art).  As Jim discussed, while you may believe that you were the first to file and describe an invention, there may be prior art out there that invalidates your application or at the very least, severely limits its scope.
 
As to your point of being able to sue for infringement, you can only do that with an issued patent that is still in force (e.g., has not expired or been allowed to lapse for failure to pay maintenance fees, etc).
« Last Edit: Jul 23rd, 2007, 8:17pm by MrSnuggles » IP Logged
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