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(Message started by: Tony Kondaks on Jul 23rd, 2007, 1:29pm)

Title: Confidentiality agreements and patents
Post by Tony Kondaks on Jul 23rd, 2007, 1:29pm
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?

Title: Re: Confidentiality agreements and patents
Post by JimIvey on Jul 23rd, 2007, 2:48pm
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.

Title: Re: Confidentiality agreements and patents
Post by Tony Kondaks on Jul 23rd, 2007, 5:19pm
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?

Title: Re: Confidentiality agreements and patents
Post by JimIvey on Jul 23rd, 2007, 5:45pm
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.

Title: Re: Confidentiality agreements and patents
Post by MrSnuggles on Jul 23rd, 2007, 8:16pm

on 07/23/07 at 17:19:10, 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).

Title: Re: Confidentiality agreements and patents
Post by Tony Kondaks on Jul 24th, 2007, 12:17am
What recourse can one have if someone is infringing upon a patent pending?  Can you put them on notice, so to speak?  That is, say to them that this is patent-pending and you're violating it but I will wait the 2 or 3 years before I am granted a utility patent before I will sue?  

Title: Re: Confidentiality agreements and patents
Post by still_studying on Jul 24th, 2007, 3:39pm

on 07/24/07 at 00:17:48, Tony Kondaks wrote:
What recourse can one have if someone is infringing upon a patent pending? †Can you put them on notice, so to speak? †That is, say to them that this is patent-pending and you're violating it but I will wait the 2 or 3 years before I am granted a utility patent before I will sue? †

Take a look at 35 USC 154, particularly paragraph (d), "provisional rights".  That's pretty much it.  You can talk at them as much as you want, but until you have an issued patent, they don't have to do anything.

Title: Re: Confidentiality agreements and patents
Post by Isaac on Jul 24th, 2007, 4:51pm

on 07/24/07 at 15:39:19, still_studying wrote:
Take a look at 35 USC 154, particularly paragraph (d), "provisional rights". †That's pretty much it. †You can talk at them as much as you want, but until you have an issued patent, they don't have to do anything.



Just to be clear "provisional rights" are not available based on the filing of a provisional application for patent.   I don't know if  "patent pending" is meant to refer to the filing of a provisional.

Title: Re: Confidentiality agreements and patents
Post by JimIvey on Jul 24th, 2007, 9:43pm
Just a short summary of "provisional rights".  You can't stop anybody from making, using, selling, importing your invention until your patent issues.  You may be able to collect a reasonable royalty for unauthorized making, using, selling, importing of your invention as far back as publication of your patent application.  But you'll have to wait to sue for those reasonable until your patent issues.  

Regards.

Title: Re: Confidentiality agreements and patents
Post by MrSnuggles on Jul 26th, 2007, 10:35am
My comment was only to imply that you have some protection, not patent-like or patent protection, but some protection against another person absconding with your idea if you file a provisional application.  That "protection" may be mitigated by whether you fully enabled your idea with the description in the provisional, etc.

As I stated, you can only sue if you have a valid patent.

I brought up the aspect of provisional rights in another post on these boards.  Academically, they are interesting, but in practice, it seems they are rarely enforced.

Title: Re: Confidentiality agreements and patents
Post by still_studying on Jul 28th, 2007, 12:09pm

on 07/24/07 at 16:51:55, Isaac wrote:
Just to be clear "provisional rights" are not available based on the filing of a provisional application for patent. † I don't know if †"patent pending" is meant to refer to the filing of a provisional.

Sorry, yeah, that term *is* confusing (not my fault, blame the USPTO!).  The "provisional rights" don't (and can't) refer to a provisional patent application (PPA), since PPAs don't get published, and USC154 is only enforceable when the application is published (and hence must be a nonprovisional application).  It's the rights that are provisional, not the patent application (which must be a nonprovisional).

However, after filing a PPA, you can mark a product "patent pending".  Different issue, different section of the USC.

Corrections welcomed.

Title: Re: Confidentiality agreements and patents
Post by S.Ratcliffe on Aug 6th, 2007, 3:30pm
Notwithstanding previous messages; I believe that to look up the saga of  cyclonic (bagless) vacuum cleaners might prove worthwhile.

Title: Re: Confidentiality agreements and patents
Post by JSonnabend on Aug 7th, 2007, 8:33am

on 08/06/07 at 15:30:22, S.Ratcliffe wrote:
Notwithstanding previous messages; I believe that to look up the saga of  cyclonic (bagless) vacuum cleaners might prove worthwhile.

Wow, that's pretty cryptic.  Care to provide a cite for those interested?

- Jeff

Title: Re: Confidentiality agreements and patents
Post by patag2001 on Sep 7th, 2007, 3:27pm
Iíve heard submarine patents can catch others off guard that are unknowingly using the invention and can require large royalties.

If a request for non-publication is made, the publication and issue dates are the same.  In such a case, this would appear to limit the collection of royalties to after a patent is granted.  Since collecting royalties can start (i.e., 35 USC 154(d)) on publication for a published patent that has issued, does this prevent the collection of large royalties on submarine patents, meaning a patent having an issue date many years after the filing date?

Many Thanks!

Title: Re: Confidentiality agreements and patents
Post by JimIvey on Sep 7th, 2007, 10:14pm
Well, collecting royalties can start whenever.  Reasonable royalties awarded in an infringement action can date back to publication but no further.  Deciding to forgo publication is also deciding to forgo provisional rights (reasonable royalty between publication and issuance).

Submarine patents are extinct.  The term used to refer to patents that would surface decades after filing.  A colleague of mine once dealt with a Lemelson patent issued in 1991 on an application filed in 1954, I think -- one year after enactment of the modern patent statute.  That's nearly 40 years below the surface.

How could that be?  you might ask.  That was before the 20-year term from the date of filing.  The term used to be 17 years from the date of issue, regardless of the filing/priority date.  The 20-year term from filing did away with true "submarine patents".  

Jeez, I'm starting to feel old.  I used to walk 20 miles in the snow to school every day in bare feet and wearing a trash bag with arm-holes as a coat on days I was lucky enough to find one.  We didn't have PlayStations, not even PS I (well, before they were numbered).  We had a rock and a piece of string, and we liked it.  When we wanted to watch something different, we had to get up and walk to the TV and twist a knob on it to get a different channel, and there were only 5 of them.

Settling back into my rocker....

Regards.

Title: Re: Confidentiality agreements and patents
Post by Bill Richards on Sep 8th, 2007, 8:41am
Didn't Lemelson (his heirs) ultimately get tripped up by what the court called prosecution laches?

Title: Re: Confidentiality agreements and patents
Post by Wiscagent on Sep 8th, 2007, 9:33am
Yes, "Lemelson ultimately get tripped up by what the court called prosecution laches?"  Some Lemelson cases dragged on for several decades after the original application was filed.  But since most patents expire 20 years from the priority application date, prosecution laches is unlikely to be relevant in many cases.

Title: Re: Confidentiality agreements and patents
Post by biopico on Sep 8th, 2007, 3:54pm

on 09/08/07 at 09:33:33, Wiscagent wrote:
Some Lemelson cases dragged on for several decades after the original application was filed.


As I recall and I am not mistaken, it was around 45 years.



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