Developing a new concept into a product and getting that product onto the market often takes some time, effort and money, and is rarely something that can be done in isolation. You obviously don’t want your new idea to be copied and, when the time is right, you may plan to file a patent application to protect it. In the meantime, you may need to speak to product developers, manufacturers or investors, for example, to keep things moving in the right direction. EXCEPT you must not make any non-confidential disclosure of your new product before you file a patent application. So, what can you do about speaking to people about your new product before a patent application has been filed?
Use NDAs
You can use confidentiality agreements or ‘NDAs’. An NDA is basically a contract between you and another party (company or individual) which states that the matter you discuss between you is to be kept confidential, and cannot be disclosed or used in any way by one or both parties (depending on the type of NDA used).
One-way and two-way NDAs
There are two types of NDA: one-way (where only one of the parties is bound by the confidentiality terms) and two-way (where both parties are bound by the same confidentiality terms). Which type you use is dependent on the nature of the discussion, but the two-way NDA is probably the most frequently used. You can get templates for both types from here, provided the discussions are fairly straightforward, but for more complex issues you may want to consult with a commercial solicitor.
Be selective!
The one thing I tell my clients over and over again is to be careful and selective about who you talk to before you file your initial patent application, even under an NDA. If an NDA is in place and there is a breach of confidentiality, the legal recourse is to issue court proceedings for (effectively) breach of contract. Not only is this potentially very costly, you also need to make sure that you are able to locate and pin down the other party in order to fight your case and claim any recompense you are entitled to.
Suing overseas parties from the UK is not a simple matter and, if the other party simply shuts down or moves on, it may be difficult to locate them and ensure they are answerable to your claim. For that reason, if, for example, you want to speak to an unknown overseas manufacturer (especially if they are outside of the EU), you may want to consider filing your initial patent application beforehand. You can still use an NDA as well (and we would normally recommend that you do), but the patent application just gives you an extra layer of protection.
Need Help?
Getting the timing right in terms of when you file your initial patent application can depend on many different factors, and we are happy to advise and support you right from the start of your product development journey. We not only offer an initial confidential consultation, which is free of charge and obligation, but, if the time isn’t right to do anything at that stage, we will readily stay involved in the process with you, and help you to best time your patent application.
If we can help with this, or any other IP matter, please book your free initial consultation by clicking the link below:
https://calendly.com/strachan-ip-a-fresh-view-of-intellectual-property/30min
or by calling 07714 797135 or emailing vicki.strachan@strachanip.co.uk
or you can contact us through our website: https://strachanip.co.uk/contact/
