What if My Idea Is in Development, What Can I Disclose?

You’ve been working on a novel technology. Due to the positive impact of my technology, you get new connections and they are willing to collaborate with you all the time. Since you have not filed a patent on it yet, you are concerned of protecting your IP and scared of disclosing any of your secret recipe to new people.  However, you’ll need another 1-2 years to fully accomplish the project.  What do you do?

If you are a university faculty or student. The first thing that comes to mind is what your agreement is with the University.  Often times, the university will require its faculty to assign intellectual property rights to any invention to the university.  The reason that, since they’ve provided the facilities, materials, and funding (in the form of salary or otherwise), they are entitled to the intellectual property that is discovered or created under their wing.

So, being a student or faculty at the university, the first thing you need to do is to make sure you’re not required to sign your rights to the university.  And if you are, there may be some compensation scheme in place that’s worth exploring.

If you’ve crossed that hurdle, or aren’t part of a university (and neither are your collaborators), the next question you need to answer is: Should I keep my idea secret or should I file a patent application?  You can keep a patent application from publication, but that’s not always recommended.  Read this article here to find out why.  You should keep your idea secret if you believe that it’s hard to reverse engineer.   If that’s what you decide, you should make sure all of your disclosures under strict Non-Disclosure Agreements (NDA), detailing the involvement of trade secrets in the disclosure.  You should also document every instance of interaction and disclosure of you idea that you make, with the receiving party signing the NDA.  You should not make any disclosures outside of the NDA.

You can also enter a collaboration agreement with the folks that are under NDA.  The agreement can specfiy that you (or your business entity) will own all of the rights to the inventions, its iterations and derivations, including the contributions made by the collaborators.

If you make disclosures that are not under NDA, you 1) immediately forfeit your international patent rights and 2) have 12 months from the time of your first public disclosure to file for patent protection in the US alone.  If you are not ‘done’ inventing, then you should keep things a secret until you finish.  If there is novelty in what you have come up with thus far, you can file a provisional patent application – which provides you patent priority for 1 year without disclosing the subject matter of your patent to the public.  Within that 1 year, you must submit the provisional patent application for examination or forfeit the patent priority date you’ve established by the provisional.  Learn more here.  You can file provisional on each increment of your discover, and then time them together in a non-provisional patent filing (so long as the earliest provisional is still within the 12 month date).

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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