Disclosing Inventions 

Disclosing Inventions – Can I disclose my invention to a large company interested in licensing my invention?

The answer is yes, absolutely, BUT you should not disclose your invention before doing at least one of the following:


1)    Get a signed non-disclosure/confidentiality agreement from the company interested in your invention.  These agreements provide you with some legal standing in the event the company you disclose your invention to misuses the information.  For example, if the company used your invention information to develop their own product without compensating you, then the non-disclosure or confidentiality agreement gives you the ability to go to court and seek damages for breach of the non-disclosure/confidentiality agreement. 

In the event a company misappropriates your invention, the non-disclosure/confidentiality agreement becomes a very important part of your court case, and as such, it’s generally best to use your own agreement when you’re sharing your invention information with a potential licensee.  Companies that receive confidential information typically have their own confidentiality agreement that they will send to you to sign and this is a convenient option.  However, before you sign their very convenient confidentiality or non-disclosure agreement, have an attorney experienced in patents review the agreement to confirm your interests are protected.  It is often the case that the agreements sent by companies seeking to license technology are very one sided, designed only to protect the company, and don’t offer appropriate legal protections for small businesses or entrepreneurs wanting to disclose their invention in seeking a licensee without jeopardizing their patent rights in the invention.  So ask an experienced patent attorney to review any agreements before signing to confirm your patent rights are well protected. 

2)    File for a patent before disclosing.  Filing for a patent before disclosing your invention to a prospective licensee is the best course of action.  However, it’s not always possible to prepare and file a patent application before disclosing the invention.  One option to consider is a basic provisional patent application filing.  The filing requirements for a provisional application are much less than a regular utility application, so this gives you the option to get a relatively easy filing date and serial number.  For example, if you have a presentation on your invention that you want to submit to a company for consideration, you have the option to file the presentation as a provisional patent application.  This gives you a filing date and serial number from the patent office, and more importantly, it gives you the filing date for the subject matter disclosed in the presentation you filed as the provisional application. What this means in simple terms if you have an early patent filing date for the information in the presentation and you can freely discuss the information in the presentation with a company without fear of losing your patent rights in the information in the presentation. 

Disclosing Inventions - Important to Remember

One thing to remember in the scenario above is that you’re only protected with a filing date for the information contained in the presentation, so it’s important to submit everything you know about your invention to the patent office.  Anything you don’t submit won’t have the opportunity to be part of your patent and therefore be protected.  Another thing to remember is that provisional patent applications do not ever mature into an enforceable patent.  Think of the provisional patent as a foot in the door of the patent office – all you have with a provisional patent is a filing date and serial number.  To proceed through the patent process you will need to convert your provisional patent application into a formal utility patent application with 12 months of the filing date of the provisional application.  Converting to a utility application is typically an activity that you’ll be better off getting help from a patent attorney on. 

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