August 6, 2016 • By Dennis Beaver
“I have invented an amazing BBQ and campfire lighter that works on any kind of fuel, prevents the user from being burned and reduces the risk of causing a fire. How can I talk about it to these companies which claim to help market inventions without my idea being stolen? What should I do?”
For an answer to that question, we turned to Minneapolis-based attorney Ted Dorenkamp who helps protect and defend his clients’ intellectual property, including patents, trademarks and copyrights. He is also a Continuing Legal Education lecturer for the National Business Institute.
Have a non-disclosure agreement in place before any discussions
“When you reveal your idea to anyone,” Dorenkamp points out, “the result is a very real risk of losing control of it. But, obviously, you may need to discuss it with a number of people.
“One solution is by having a properly drafted, signed, non-disclosure agreement (NDA) in place before discussing the details between the person who has the invention or idea and the company that may build it or help in marketing.
“So, with an NDA your reader with his BBQ lighter would share his idea with a potential developer, but they are prohibited from employing it themselves, or from disclosing it to others.”
Don’t reveal specifics
Of course, not everyone is able to hire a lawyer to draft one of these agreements, and for readers who are long on ideas but short of cash, Dorenkamp offers a possible solution.
“You can easily find sample agreements online. The key is having a very good description of what the innovation or idea is in such a way that tells the reader what it does–defining it–but without disclosing the specifics of how it works. Describe the innovation or idea without disclosing the details that make it novel.”
For people who are not especially good writers, this is such an important step which might need the help of an attorney who handles patent, trademark and copyright matters. Dorenkamp offers the following example:
“Let’s take your reader’s BBQ lighter example. Instead of saying BBQ or Camp Fire lighter that incorporates X design or technology, say that you have invented a better fire ignition device that avoids causing fires or burning the user. You do not want to disclose the design or specific technology in your disclosure agreement. Instead, you will state, “I am going to enter into a discussion concerning a novel design or technology in a device which can safely ignite a fire.”
“Of course, they will ask for more information, and if you share any documents or blue prints, these must be properly identified as confidential and subject to your non-disclosure agreement,” Dorenkamp points out.
“So, then it is a two-step process. Right?” We asked.
“Usually,” He replied. “Your first meeting or discussion describes the item, what it does, without giving away the details of how it works. Then, if they want to move ahead, you should discuss a non-disclosure agreement that includes a confidentiality provision covering other documents, like designs or blueprints.”
What should I be careful of?
Dorenkamp underscores the importance of knowing that you are dealing with the right person or people in the organization, including:
- Someone who can make decisions;
- Who is authorized to sign such an agreement;
- And can bind the company in their agreement, such as a corporate officer.
“Google the company and individuals who you meet – you’ve got to know who you are dealing with. And, whatever you do, before having your agreement signed by the right person, never divulge your secret over the phone! If they ask you to, hang up,” he cautions.
“A Non-Disclosure Agreement should have a time limitation, for example, valid from 2 to 5 years after signing. Include a clause stating that any documents, samples, or exhibits provided including copies, will be returned immediately at the termination of the agreement.
“Specify where a lawsuit would be filed — preferably in the city and county where you live — in the event things go south.”
Have someone with you at the signing
Dorenkamp recommends bringing someone to the signing of the Non-Disclosure Agreement, especially your own lawyer, which conveys the clear message that you are serious and know how to protect yourself.
However, after the agreement is signed and you are revealing certain details of your idea, Dorenkamp urges against making a video or recording of that session:
“Because the conversations are confidential under the agreement, any discussions are confined to that relationship. A recording or video that goes public and discloses your secret is another way to lose control of the idea. This is definitely not for YouTube.”
Dennis Beaver practices law in Bakersfield and enjoys hearing from his readers. Contact Dennis Beaver.