Examples of proprietary information that would be important to protect include: • Scientific, technical, engineering data and results; • Engineering drawings and designs;
Q Why would I need a confidentiality agreement to protect my invention? A To seek patent protection, it is not necessary to have actually implemented the invention before filing a patent application. In fact, it is often better to file a patent application prior to implementation, when there is less risk of public disclosure. When there is a need for disclosure of confidential information before a patent application has been filed, such as when presenting an invention to potential investors, having a strong confidentiality agreement in place before any disclosure is critical. Even after a patent application is filed, a confidentiality agreement may help to preserve the confidential nature of the invention, thereby preventing third parties from developing and commercializing the invention prior to the owner. In the U.S., patent rights are forfeited if a patent application is not filed within a one-year grace period from the date of first publication, public use, sale, or offer for sale of the invention. Many other countries are less forgiving and will not allow a patent on any invention that was publicly disclosed before filing the patent application. A confidentiality agreement places an obligation on the recipient to maintain the information in confidence, thereby potentially preserving the owner’s ability to file a patent application prior to any publication, public use or sale of the invention.
Q How can a confidentiality agreement help to protect my trade secrets? A Proprietary information, in the nature of trade secrets and knowhow, provides a business advantage over competitors. It is important to protect proprietary information from reaching your competitors, the media, and the general public to maintain your competitive advantage. For such information to be legally protected as a trade secret, the information must be secret (not generally known); valuable; and subject to reasonable efforts to safeguard and maintain its secrecy. Confidentiality agreements help establish that these “reasonable efforts” are made.
• Specifications; • Customer and supplier lists; • Processes and
production methods;
• Equipment; • Recipes; • Unpublished patent applications; and • Business operation
and financial information.
IP ESSENTIALS: CONFIDENTIALITY AGREEMENTS
50
51
Made with FlippingBook HTML5