Product Development, Invention, and Disclosure Issues

Lack of proper procedures in the invention, product development, or policy on disclosure of confidential materials can arise to haunt the business. When a company is knee-deep in intellectual property litigation or a dispute has arisen concerning intellectual property rights, that is not the time to be thinking about procedure. Obviously, the ideal time to have sound procedures in place is before there is a problem.

Altera’s attorneys ask a lot of questions to help a business protect its intellectual property. In the product development or invention stage, some questions that need answers are: Does the business have signed employment agreements on intellectual property rights with the likely inventors? Do the inventors use a bound laboratory notebook with non-erasable ink? Is there a regular procedure in place for a non-inventor to review, understand, sign, and date an inventor’s notebook? Does the company use a record of invention form? Is there security in place to prevent the removal or destruction of valuable documents? Are trade secrets marked in accordance with their value? Is there security such as locking materials in a cabinet, and restricting access to trade secret materials?

Other questions that need answers are those relating to disclosure of inventions: Does the company have a policy about disclosure of ideas on products under development? Does the company require a clearance before the inventor is allowed to publish a paper or speak at a public meeting or seminar? Does the company use non-disclosure agreements? If foreign patent rights are to be sought, is there at least a provisional patent application on file with the Patent Office before a meeting occurs that may be considered a public disclosure? Does the company have a policy with respect to unsolicited ideas sent to the business by third parties?