Take the 1-question survey on LinkedIn.
The basic underlying question has to do with whether an NDA or other agreement can effectively limit an inventor’s ability to pursue patent protection — even in circumstances where the inventor has not transferred patent rights.
[Unfortunately, LinkedIn won’t let me embed the survey here].
He has the right to file, but then violates the NDA by doing so and can be sued for damages.
^^^ Same flavor in a different context, armchair attorney (yes, read that as non-attorney) Random would quip that you must not be an attorney Jonathon, as one cannot have a right to violate any rule (contract or judicial procedure) — vis a vis a comparison with Judge Newman.
Seems like the correct answer to the strict question, does the inventor have “the right” to file a patent application, seems that the answer is “yes,” and can do so without obtaining permission from the corporation. In this example, the inventor is not an employee and, according to the hypothetical, there are no contractual provisions that would override the default rule (at least in the U.S.) that the inventor is the initial sole owner of the subject matter of the patent application.
While the inventor may have the “right” as a technical matter to file a patent application under the patent laws, of course, that filing may carry other legal consequences for the inventor. If the contents of the application constituted a breach of the NDA or misappropriation of company trade secrets, for example, the company could sue the inventor in court and seek compensatory damages for the breach. Depending on the facts, the company could also ask the court for an injunction against the inventor, for example, to enjoin the inventor from further prosecuting a pending patent application containing the alleged company trade secrets. For example, if the inventor had submitted a request for nonpublication with the patent application, a court could order the inventor to expressly abandon the application so the confidential information in the application does not fall into the public domain.
Meh. If the corp wants the invention, it doesn’t matter what the law says (see, e.g. the CAFC).
He who has the gold — or the gavel — makes the rules.
Remember, this is America.
The question is: “Does Inventor have the right to file for patent protection?” Yes, they do and without the permission of Corp.
Merely filing a patent application does not necessarily require public disclosure. Inventor could ask for the application not to be published.
Obtaining an issued patent would be another matter. The issued patent would be public. But the question was not whether Inventor could obtain the patent, it was only if they could file.
During pendency of the patent application, Inventor and Corp. could negotiate and perhaps reach an agreement.
To your last paragraph, what type of your negotiation are you expecting (given — for ipguy’s sake — an ironclad NDA known by both sides to be so)…?
I’d have to know what the NDA says. My experience is that there are a wide varieties of NDAs when it comes to specificity on what is and what is not covered.
I took the question as assuming that some of the requisite disclosures for the patent application are covered by the NDA. Certainly a lawyer opining would have to review that carefully first.
There’s been more than once in my career when a client came to me after-the-fact under the assumption that something had been covered by an NDA but turned out to be rather ambiguous. Not all NDAs are equal.
+1
Seems to me the middle answer is correct. Without an assignment, the Inventor would own the invention and the right to patent it. But a patent application is by definition a public disclosure, so its content could be covered by an NDA.
Could an inventor agree by contract not to file a patent application without a transfer of rights? I don’t see why not. That in effect is what this is, unless the parties can come to some accommodation.
Viewed from a different perspective, inventors sometimes have to decide whether to protect what they have through trade secret law or patent law, since often one excludes the other. Why can’t the company and the inventor agree by contract to go the trade secret route?
BTW, as of my voting, the middle position was ahead 65%.
>But a patent application is by definition a public disclosure,
It’s only a future public disclosure, particularly if you file a US application with a non-publication request. And, IIRC, many states won’t enforce a perpetual NDA
That works at most until a patent is issued, which is the whole point of an application. NDA’s can easily last that long, they don’t have to be perpetual. And, in any case, if there are trade secrets involved, they can indeed be perpetual.
My point is more that you can file an app without violating the NDA. And, there is a good chance the NDA will have expired / be unenforceable before the patent issues.
A 5-year pendency is easily achievable … and that’s longer than virtually every NDA I’ve seen in the software-business (are different standards in the wetter arts??)
OTOH, standard NDA clauses like “must delete all written records when the contract is complete” might be problematic here.
The unnecessary use of the pronoun “they” in its present context in this hypothetical is confusing (e.g., does it refer to the Corp or the inventor?). Better writers, please.
Meh, it’s clear enough from the context, and I just took it as the Professor being hip to reflect that the inventor has chosen alternative pronouns.
Maybe you have some unconscious bias going on, spewing out your micro-agress10ns and all.
Hey Prophet — I made that intentionally ambiguous — everybody wants to patent it.
Your students must love you.😂 That was the other ambiguous part: is the NDA with “Corp.” or a third party?
If you want to play that game, who is to say that any signing (chosen pronoun or otherwise) is effective for anything?
It is not made explicit that the signing was shared or otherwise put into legal effect.
One could as easily surmise that some cheap “internet-legal-forms-for-you” NDA was printed off, signed, and placed in the inventor’s home lock-box without having been shared with anyone.
Effectively? Of course, assuming the NDA is legal and the inventor doesn’t want to break the agreement. The alternative would be to file an “incomplete” patent application and accept whatever undesired results flow from that.
Comments are closed.