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What an IP co-ordinator should know, confidentially speaking

By David French

While recently on a trip to the United States, I was invited by an inventor with new technology relating to Cold Fusion to sign a Confidentiality Document, also known as a Nondisclosure Agreement, or NDA. I reviewed the document and I was reminded of the important points to consider before ever signing such a paper.

Inventors rely on non-disclosure agreements to preserve their rights to file for patent protection when disclosing their ideas to others during the development or funding stage of their inventions. Most countries in the world will not grant a patent, or uphold its validity in litigation, if it comes out that the inventor broke secrecy before filing a first patent application. This is the famous novelty requirement of patent law. Until further jurisprudence develops, it is likely that a single disclosure to a person who is not obligated to keep the information confidential will have the effect of invalidating the right to obtain a patent. Accordingly, it’s legitimate for inventors to want to discuss their ideas only on a confidential basis.

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We’re under NDA, right?

This is post is by Associate Phil Newman, a London-based marketing and commercialization strategist for technology companies. We welcome your comments.

By Phil Newman

“OK. Tuesday at 2:30. Great, see you then. We’ll get our NDA over to you guys … yeah, it’s mutual … we can talk more freely about how things could shape up between us. OK, Tuesday it is.”

Sounds fine, doesn’t it? Countersigned NDA filed in the company’s records, check. Possible collaboration with the guys at XYZ Corp., check. Mutual NDA that states what’s ours is ours, check.

But is the NDA, or Non-Disclosure Agreement, a simple business-process document that’s as everyday as a purchase order, or a legally binding document that opens up the potential of intellectual property (IP) issues later? And what about those IP clauses in your standard employment contract? French car-maker Renault recently suspended three senior execs in what was described as a sophisticated case of industrial espionage. The case revolved around electric vehicle programs and power train and battery technology. Chinese companies have been named, but involvement has been denied.

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Recent Comments

  • James LaPalme : Francis Would not say thrived - but close - in spite of geography. 15ish years ago - a group of similar skilled and experience and capable business folks (sales, channel, alliance, business development) all lived in Canada (Ottawa-Toronto-Waterloo). All except for one stayed - that would be me. Well the guys that went to Silicon Valley have thrived well beyond expectations. The others - Boston, Dallas and EU have done very well - thrived. My survival has been predominately based on CEO's from outside Ontario seeing my value. Best to move on to more receptive fertile ground if ambitious. A successful strategy is to move south do a few years and remove the pure northern business experience then come back - which my experience is very few will.

  • Francis Moran : I'm so glad to see you warming to this idea, Luc. Not that you were ever one of those mindless critics who automatically opposed the proposal; you were properly skeptical and demanding that it contain more of what folks like you and I believed was necessary for success. Looks like the city is listening.

  • Luc Lalande : Hi Francis, thank you for the steady and keen eye on the development of this important project for the City. I share your view that open spaces in the building’s design will be critical components for encouraging spontaneous interactions between people. Integrating such spaces in the Innovation Complex sends the right signals to the community-at-large and not just the local startup ecosystem: everyone is welcomed! With respect to Patti’s comments about the arts sector, it would be worth bringing back to light that the Hintonburg-Mechanicsville area has emerged as the first Arts District in the City of Ottawa, housing many artist studios, performing arts studios, and media groups. While the 7 Bayview located Innovation Complex may cater to the entrepreneurial set, there is still considerable property on these lands that could, one day, be developed and capitalize on the area’s sizable artistic community. But perhaps the open spaces at the Innovation Complex can be equally accommodating for anyone who embraces creativity and entrepreneurship: artists and innovators alike.

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