Dear Rich: I started a product design company and have a design that a company may be interested in licensing. To date I have not told them specifics about the design, only that it fits into their product line. We're meeting soon and I want to be sure to protect the idea for future patentability (by not making it public as defined by patent law) as well as prevent the company from disclosing the idea to others. I've read that having representatives from the company write a quick entry in my invention notebook to the effect that we're meeting to discuss the idea is legally sufficient to protect patentability and disclosure. I've also been told not to bother with an NDA as most companies will not sign them. You are correct to be concerned about public disclosures as they will set the clock ticking on the
one-year bar for filing a patent (and will likely eliminate the chances for any foreign patent rights).
Disclosing in Confidence. To prevent triggering the one-year bar (and to preserve foreign rights), the company must agree your disclosure was made in confidence (and treat it accordingly). It's true that many companies will not sign NDAs, particularly with individuals that they do not know. However, that's usually not the case when the company knows the other party, or has solicited the idea. So, we recommend starting with an NDA (samples are provided
here).
Signing your book. Signing an entry in your invention notebook may preserve confidentiality provided it includes a statement to the effect that the disclosure is being made in confidence and the company will take necessary steps to preserve the confidentiality of the disclosure. Still, it's not as ideal as an NDA which may contain provisions for dispute resolution, attorney fees, jurisdiction, or injunctive relief.
Authority to bind. Finally, make sure the person signing the NDA or book has the authority to bind the company (include their title; be wary of "agents") and if in doubt, verify the authority.
If they won't sign anything. Be wary of companies that won't sign anything. Sometimes they have a legitimate reason -- they don't want to be limited in case they're developing something similar independently -- and sometimes they're just using their bargaining power to see what you have without any restrictions. Keep in mind that any "
publication" that shows how to make and use the invention, or any offer for sale --
licenses are not typically considered an offer for sale -- will trigger the one-year bar. Disclose sparingly in the absence of a confidentiality agreement.
The young man in this photo -- my cousin Andrew -- went on to run a design company that licensed toys to all of the major toy companies. He always used an NDA!
If you create your own version of the song and don't imitate the singing style of Elvis Costello -- imitating artists in ads leads to problems -- you will only need the permission of the publisher (or administrator).
