Using Non-Disclosure Agreements to Preserve Patentability

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Patents are a highly sought after form of intellectual property for good reason: they allow the inventor or discoverer of a new and useful process, machine, manufacture, or composition of matter (or any new and useful improvement of one) to exclude others from practicing that invention or discovery for a certain period of time. Patents foster innovation because without the guarantee that the inventor can exploit his or her invention to the exclusion of all others, there would be little incentive to invent.

As if creating a new and useful invention weren’t difficult enough, obtaining a patent for it can be an uphill battle. To obtain patent protection, the invention or discovery must be patentable. This means it must be new, useful, and non-obvious. “New” means novel or undiscovered by anyone else. “Useful” means the invention or discovery can offer some measurable benefit and can actually be used. “Non-obvious” means essentially that there is a sufficient level of inventiveness such that the invention differs from prior inventions and not obvious to someone with skills in the particular art.

Even if an invention has all three of these elements at the outset, it is still possible that it does not qualify for patent protection because one of the elements (“novelty” – the “newness” requirement) has been destroyed – usually inadvertently.

Novelty – the “newness” of the invention – can be destroyed through public disclosure. What forms of public disclosure destroy novelty? This requires a case by cases analysis by a qualified patent practitioner, however two common examples are (a) publication and (b) use. When an invention is disclosed or used, a one-year clock starts ticking. It is always advisable to get a patent application filed within one year of its first disclosure or use.

The best way to avoid missteps that might destroy patentability is to engage patent counsel early in the process. It is also advisable to get your patent application filed as soon as possible, particularly since the U.S. is now a first-to-file jurisdiction (as opposed to first-to-invent). If you must disclose your invention or discovery, only do so to those who must absolutely see it and have them sign a binding non-disclosure agreement (NDA) prior to disclosure.

A properly drafted NDA can be an important tool for preserving patentability, but not all NDAs are created equal. Making sure your NDA has been appropriately crafted to protect the patentability of your invention is essential for your business. For more information on non-disclosure agreements, contact CLARK.LAW today.  

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