Non-Disclosure Agreements (“NDAs”) or Confidentiality Agreements are probably the most overused and abused of all commercial contracts. Businessmen and engineers often sign NDAs and then freely disclose patentable ideas, business plans, trade secrets to potential “business partners” because they believe they are fully protected by an NDA. However, NDAs vary widely in the scope of their protection. Some NDAs offer powerful protection, but many NDAs offer very little practical protection. In fact, agreeing to some NDAs may be worse than no agreement at all. We can provide NDAs that protect your Intellectual Property and/or help you negotiate favorable terms if using someone else’s NDA.
When it comes to technology licensing, we have a broad range of experience spanning over two decades. We have negotiated everything from medical device license agreements to “turn key” manufacturing plants using proprietary processes and trade secrets. Every licensing deal is different and we know how to structure license deals to maximize protection and profit for our clients.
Although your product may have been designed internally, your manufacturing outsourcing partner or partners may have modified the product so that the product can be produced in a more efficient and cost effective manner. Often the modified product or manufacutring process is patentable or may be considered a trade secret.
We can assist you in negotiating manufacturing agreements so that you own the intellectual property rights to these product and process improvements. We can also work with your manufacturing partners to identify any technology developed specifically for you.
Many businesses are unaware that they are letting their intellectual property walk out with their consultants. Even though they pay consultants to specifically develop technology for them, without the proper consulting agreement, the consultants own the copyrights and patent rights in the developed technology. They only own a right to use the developed technology. We can work with you and supply you the agreements, procedures, and forms to make sure that you own all you think you own.
Employee rights are another area of confusion with many businessmen because they are different depending on the specific intellectual property right. For instance, copyrights created by employees are the property of the employer. However, patent rights are owned by the employee unless there is an pre-existing agreement assigning their rights to the employer. Although we are not employment lawyers, we can review employment agreements to ensure that the intellectual property generated by your employees belongs to you.
At some point in time, investors, businessmen and engineers evaluate patents for one reason or another. Usually, the evaluation centers on an interpretation of patent claims. Unfortunately, patent claims are usually stated in a technical and arcane language. Furthermore, U.S. courts have held that claims do not always mean what they say. In other words, to interpret the scope of the claims, one must often rely on more than just the “plain meaning” of the claim language. To further complicate matters, Federal case law has also established legal doctrines which have both expanded claim breadth and have decreased claim breadth. So, to interpret the proper claim scope for any given claim, several sources are usually analyzed and several legal doctrines are usually applied.
There are state and now new federal laws protecting your confidential knowledge and trade secrets. However, you can only take advantage of this protection when you take the appropriate measures to prevent trade secret leaks. We can assist you in identifying your trade secrets, develop procedures and offer training so that you can take full advantage of the protections offered by these laws.
We often work on a consulting basis to ensure that your procurement department has the training, forms, checklists, forms, and procedures necessary to ensure that intellectual property rights developed by your vendors for you are actually owned by you.