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Getting to confidentiality

Discussion in 'Copyright, Trademark, Patent Law' started by soundingBoard, Apr 16, 2021.

  1. soundingBoard

    soundingBoard Law Topic Starter New Member

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    Jurisdiction:
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    I just filed utility patent application. In this weird period between application and (I hope) granting of the patent where anyone could make/use/etc without my having a right to exclude. Hoping to use that period to find licensing, etc. In prelim communication with a company. Which brings us to confidentiality/disclosure issues.

    With an appropriate NDA or confidentiality agreement, I'd disclose all details to other party. But stuck in this weird dance where I say I need to protect myself and they say but if you don't give at least high level summary, we don't know that it's worth our time. I've already disclosed the subject area, problem solved, customer demographic, and reasons I approached them including compatibility with their product portfolio (without saying how). If I give any particulars or even just tags/buzzwords describing the device, it would likely give them enough to attempt their own quick R&D.

    Am I paranoid? Well, about a year ago, before filing patent app, I did speak with another company. Limited my disclosure to the problem solved. They expounded on their respect for creators, blah blah, and asked for an NDA. I had one prepared, sent it, and they not only ghosted me, but four months later announced their own product attempting to solve that very problem. Fortunately it has zero in common with my solution, but yeah, it made me more cautious than before.

    So the question is, how does one best approach confidentiality/disclosure protections, without disclosing the very things you're trying to protect, to entice another party into a discussion? Am I making sense? Thank you.
     
  2. adjusterjack

    adjusterjack Super Moderator

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    Yes. The answer is simple. Wait for your patent to be granted before you talk to anybody about it.
     
  3. zddoodah

    zddoodah Well-Known Member

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    Did you utilize the services of a patent attorney or patent prosecutor to do this?

    Your question doesn't raise a legal issue, but it's something an attorney who handles patent licensing could address with you.
     
  4. soundingBoard

    soundingBoard Law Topic Starter New Member

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    adjusterjack and zddoodah, thank you both for the responses. Food for thought.
     
  5. flyingron

    flyingron Well-Known Member

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    Yes, public disclosure bars you or anybody else from patenting anything. Having filed a provisional or regular patent prior to making such disclosures does provide protection PROVIDED you didn't screw it up. Screwing it up likely again means nobody can patent it.
     

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