Patent pending

[James8170]

I would eventually like to license or sell the patent for which I will of course have to seek professional help.

I filed for the patent on the 14th March 2011. I would appreciate it if somebody can confirm for me that I am not jeopardizing my chances of being granted a patent by disclosing the contents of my patent to other people before the patent search, examination and publication has taken place?

 

[McKenna Hughes]

It would be a good idea to sign a Non Disclosure Agreement (or Confidentiality Agreement) with the relevant third party before you begin discussions. This will ensure that the patent application is protected.

 

[technology+business]

Patents are always dated, in your case your patent filing date is 14th March 2011 and there is no harm in disclosing information to anyone after 14th March 2011. Filing date is very important and nobody can claim the invention other than you. So feel free to disclose your invention as patent pending.

 

[VeryMark]

As long as what you disclose is covered by the patent application you have filed, then there should be no problem.

Large companies often look somewhat askance too at Non-Disclosure Agreements on the basis that without the filing of a patent application they cannot be sure that what they are being asked to sign up to is novel and protectable and they may be tying their hands unnecessarily.

 

[technology+business]

NDA and patents are 2 separate things completely.

NDA are an agreement between parties involved whereas patents are protecting intellectual property from infringement.

For disclosing any IP that is protected by a patent you do not need a mandatory NDA whereas if you are disclosing information that is not covered by the patent then I would agree with McKenna Hughes to get a mandatory NDA signed before hand.

 

[MrMichael]

Even if you had a filed patent, I would suggest that you still only disclose as necessary and still where possible with an NDA in place.

If you disclose without an NDA and the third party starts infringing your product, a right to sue for patent infringement will arise upon grant, however, if an NDA was present, you would have an additional right under breach of contract, which you would be able to pursue immediately, rather than from grant.

 

[technology+business]

I agree with MrMichael.

 

[IP Consultant]

Hi James

A couple of points.

If you publicly disclose your invention now, and come up with improvements to your invention later, your disclosure may be cited against a future patent application covering your improvements.

I suggest getting the official search done early, having a good look at the prior art, and considering if there are any improvements to be made.

I also suggest disclosing your invention under an NDA until the invention is officially published about 18 months after filing the application. If you intend to use an NDA you should be careful the recipient is trustworthy, because a public breach could be cited against a future application you make, putting the onus on you to prove the information originated from you.

If you have any questions please do not hesitate to contact me.

Best wishes

Matthew Allen
European Patent Attorney
Allen IP Limited

0121 633 9704