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Why confidentiality? (Part 3)

By David J. French Confidentiality-Agreement-Template

In the previous two postings (here and here) on the above topic, we addressed why disclosures relating to inventions, for which patent applications have not yet been filed, should only be made on a confidential basis. The last posting ended with an observation that confidentiality agreements or nondisclosure agreements — NDAs — can be much more extensive than simply prohibiting the disclosure of information. This post explores examples of further restraints that can be included by lawyers who prepare NDA documents.

By Googling “confidentiality agreement 3M,” two useful hits arose at the top of the list. The first was a document entitled, “3M In-House Confidentiality Policy and Guidelines.”

This document is a concise summary of how this large corporation requires its employees to handle confidential information. Two aspects of confidentiality agreements are addressed: 1) protecting the special trade information that is advantageous to 3M in the competitive marketplace and 2) engaging in commitments to maintain the confidentiality of information received from third parties. Every business manager should carefully review this document for what it teaches. It has been professionally prepared. Read More

Identifying the invention

invention-bulbBy David French 

In preparing materials for a recent presentation I boldly summarized the patenting process as follows:

It’s very easy to obtain a patent. Just file an application … for a useful idea that includes a description on how to make it happen, and which specifies a feature that is new (done in one or more “claims”).

Easily said, but challenging to fully understand the consequences of these requirements.

The patent novelty requirement

Discussing these issues with aspiring inventors, I’ve come to realize that one of the sticking points in going forward is appreciating the feature that is being patented. This is the feature referenced above that must be “new.”

Inventors often do not fully appreciate the novelty requirement of patent law. Patents are not issued simply because an inventor has conceived of something which is useful. Patents only issue for things which are new. The Golden Rule of patent law is that a patent cannot take away from the public anything that was previously available. “Previously available” includes “obvious variants” on what was already known, disclosed, or put into use anywhere in the world, in any way, at any time prior to the filing of a patent application.

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Why confidentiality? (Part 2)

What-is-a-non-disclosure-agreementBy David French 

In Part 1 last week, we addressed confidentiality agreements and nondisclosure agreements (NDAs), particularly the role that these documents serve in protecting patent rights. We ended Part 1 with the question, “But what is a disclosure made in confidence?”

It’s clearly established that disclosures made to professionals such as patent agents and patent attorneys are assumed to be in confidence. Also, if the parties have agreed that a disclosure is confidential, then the necessary standard of confidentiality has been established. And then there are other cases where the circumstances imply an understanding of confidentiality: Disclosures made to a draftsman or to an industrial designer to improve the product, disclosures made to find out whether there are public regulations that the invention must meet, disclosures within the family, and numerous other cases where a special relationship exists. The problem of establishing confidentiality arises when conversations occur between business persons in the context of arms-length relationships, such as between the inventor and a potential purchaser. Are these exchanges assumed to be confidential?

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Why confidentiality?

By David French

This post is about why it is appropriate to limit disclosures of new technology under confidentiality agreements or understandings. This applies to “confidentiality agreements,” and “nondisclosure agreements – NDAs,” which are essentially the same thing.

Everyone has heard about confidential disclosures and everyone knows something about them. I’ll attempt to consolidate many important issues and clarify others.

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Selling an invention to a patent examiner

By David J. French

One of the most critical jobs of a patent attorney is to convince a patent examiner to grant patent rights to your client. This means convincing the examiner that your client is entitled to exclusive rights over a described version of the invention that, while being of the widest scope possible, will meet the novelty requirements of the patent law. The key requirement is that you have to define the invention in language that does not describe anything that was previously available to the public. But you also want to use language that will shut-down competitors without leaving any loopholes. Not an easy job.

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