This article is part of the “What Should I Do (WSID)?” series where I discuss various scenarios involving intellectual property and business. Topic suggestions are always welcome.
“I want to share my innovative idea! What should I do?”
In my previous post, I examined the question of whether or not you should seek patent protection for your innovative idea. Here, I’m going to consider how you can discuss your innovative idea with other people.
As an innovator, you’re probably eager to share your latest and greatest idea with the world, find partners to help you develop the concepts, and launch your next venture or new product line based on your innovation.
STOP. Slow down.
Let’s think strategically before you broadcast your innovative idea to the world.
For example, if you’ve already determined that your answer to the question “to patent or not to patent” is YES, you’d like to file for patent protection for your innovative idea, then you need to think carefully about the circumstances under which you will discuss your idea with any third party.
At a recent discussion of IP at a startup entrepreneurs event, one of the panelists mentioned that you can lose patent rights if you’ve discussed your innovative idea with a third party without an NDA. An audience member immediately asked the question, with a very concerned look, “You mean that, if I’ve already discussed my innovation with a potential customer, I may not be able to patent my idea?” Oh the sadness that ensued.
IP professionals hate to have to tell their client that their innovative idea cannot be protected because the client had already discussed the idea with a third party. In the US, a public disclosure of the innovation starts a one-year clock, after the expiration of which the inventor can no longer seek patent protection for that particular innovation. Even worse, if you’re seeking patent protection pretty much anywhere outside of the US, you are out of luck after ANY public disclosure.
Here are six key issues for you to consider before discussing your ideas with others:
- Do you need to describe your innovative idea to this particular person at all? Is there a business need for this discussion? This consideration is also important if you are tempted to talk about your latest innovation at social events or coffee shops, where you can’t control who may overhear your conversation. If describing your innovative idea to a particular person does not have a potential business upside, then it may be better to keep your idea to yourself.
- Does this person need to know all of the gory details under the hood, or would a generic, non-confidential description suffice? Unless you’re in the deep throes of a detailed due diligence process, even investors don’t always want to hear about all of the nuts and bolts of your innovative idea. A good pitch deck or elevator pitch should describe your innovation in a non-confidential, yet still enticing, way.
- Is the other party under a non-disclosure agreement (NDA) to not discuss? While an NDA is not the end-all, cure-all for potential business disputes, a well-crafted agreement can at least establish a framework for resolution. It’s worth a conversation with your legal professional to at least have a template one-way and two-way NDAs to have in your corporate arsenal. Just know that many venture capitalists (VCs) publicly state that they will NOT sign NDAs prior to execution of a term sheet.
- Even if you are only describing your innovative idea in generic terms, are you offering to sell a product, based on your innovative idea, to a third party? Now we’re getting into tricky territory because there are specific provisions in US patent law about “offers for sale” as being a potential bar to obtaining a patent to the innovation that was the basis of the sale. Definitely have a conversation with your IP professional before you start hawking your sales pitch or marketing brochure.
- Have you already filed a patent application, which thoroughly describes your innovative idea and any modifications thereof that you can think to make, including ways to cover future versions of any product that you or your competitor may release to the market place? A well-prepared patent application can be your ticket to allow you to have free conversations with the outside world about your idea. Again, seek professional guidance.
- Have you decided to keep your innovative idea a trade secret? If you decided to keep your innovative idea a trade secret, there are specific requirements in order to demonstrate that you have put protective measures in place in order to prevent ready access to the trade secrets; such measures would include when and with whom you discuss your innovative idea. Be sure to talk with an IP professional, if you’re considering the trade secret route.
There are nuances to the above questions that may make it difficult to formulate the answers in your specific situation. As always, be sure to talk with an IP professional, such as a patent attorney or patent agent, who can help navigate the way.
Now that we’ve looked at the topics of whether or not to patent your innovative idea, and how to discuss your innovative idea with others, we’ll take a look at how to determine your IP endgame (a.k.a., what should I do now that I have created intellectual assets?) in the next post.
About the Author and Disclaimer: Yoriko Morita has worked with innovators in a variety of contexts, in a law firm working for inventors, as in-house IP director, and as a licensing professional. She currently helps clients with such IP-related questions, as well as developing integrated business/technology/patent strategies, through her company, Patents Integrated. The contents of this article are intended to be informational only, not legal advice. The reading of this article does not establish an agent-client privilege between you and Patents Integrated, and Patents Integrated is not responsible for any damages arising from your use of the information in this article under any circumstance. Your use of the information in this article is at your own risk, and you should seek the advice of a licensed legal professional regarding your own specific situation.
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