Patent It Yourself - PDF Archive

ChaPter 3 | DOCUMENTATION and the PPA | 49
2. Keep Your Building and Testing
Activity Confidential
If, as part of the testing of your invention, you have to
order any special part or material, or if you have to reveal
to or discuss your invention with anyone to get it built or
documented, be cautious about how and whom you contact.
And when you do make any specific revelation, have the
recipient of the information about your invention (the
disclosee) sign a Nondisclosure Agreement (“NDA”) (Form
3-1 in Appendix 7).
Getting the Agreement Signed
Model makers and machine shops are used to signing
these agreements. When you make an appointment to
show your invention and you wish to have the recipient
sign the agreement before viewing, it’s only courteous
and proper business practice to advise the recipient that
you are bringing along a nondisclosure agreement (NDA)
before signing. Don’t spring the agreement in a surprise
manner.
The agreement is completed by specifically identifying
the confidential materials (documents or hardware) (the
“Confidential Information”), and the name of the recipient
(the Receiving Party; you’re the Disclosing Party). Have
the Receiving Party fill in, sign, and date the bottom of the
agreement. I recommend that you give a copy of the signed
NDA to the Receiving Party, as well as any extra copies that
may be needed if any other persons in the Receiving Party’s
organization are to sign also.
Note that if you are lending confidential materials to
the Receiving Party, the agreement refers to the delivery
of materials to the Receiving Party as a “loan.” This will
give you maximum rights if the Receiving Party makes
unauthorized use of or refuses to return the materials.
It’s also desirable to document everything you transact
with the disclosee by sending a confirmatory email after
each transaction and getting receipts or acknowledgments
for everything you do lend or deliver. In other words get
and make a full “paper trail” of your activities.
This agreement will cover almost all situations where
you need to disclose your invention or deliver proprietary
materials under an NDA. However, it isn’t cast in stone:
If, for example, you are making more than a loan of the
materials, feel free to redraft the agreement, for example, by
changing “loaned” to “delivered.”
CAUTION
About NDAs: While it’s desirable to have disclosees
sign an NDA, note that if a disclosee steals or copies your
invention (rare for uncommercialized inventions), your NDA
will be of little value unless you have the funds to hire a
attorney to sue the invention thief. Even then the thief can (a)
raise defenses that may defeat your suit (nothing is certain in
the law), (b) show that you have no actual monetary damages,
and (c) be judgment proof (that is, have no assets to pay you
for your damages). As stated, it’s best to investigate (or “vet”)
your disclosee beforehand by getting references and making
sure that he or she is a responsible person or organization.
F. How to Record Your Invention
Hopefully, I’ve managed to sell you on the need to carefully
and accurately record your thoughts and activities that
normally occur in the course of inventing. There are several
ways to do the recording. These are discussed below,
together with examples.
1. The Lab Notebook
The best, most reliable, and most useful way to record
an invention project (conception, building and testing,
marketing, etc.) is to use a lab notebook, such as The
Inventor’s Notebook, by Fred Grissom and David Pressman
(Nolo). Specifically designed for use with this book, The
Inventor’s Notebook provides organized guidance for
properly documenting your invention.
If you’re a prolific inventor, or are employed as an engineer
or the like, you will want to record a number of inventions
as you make and develop them. The best way to do this is
by using a blank or lab notebook. Preferably, it should have
a thick cover, with the pages bound in permanently, such
as by sewing or gluing or a closed spiral binding. Also, the
pages should be consecutively numbered. Lab notebooks of
this type are available at engineering and laboratory supply
stores, and generally have crosshatched, prenumbered pages
with special lines at the bottom of each page for signatures
(and signature dates) of the inventor and the witnesses.
As should be apparent, the use of a bound, paginated
notebook that’s faithfully kept up provides a formidable
piece of evidence if your inventorship or date of invention
is ever called into question, for instance, in an interference
proceeding or lawsuit. A bound notebook with consecutively
dated, signed, and witnessed entries on sequential pages
establishes almost irrefutably that you are the inventor—that
is, the first to conceive the invention—on the date indicated
in the notebook. Lab notebooks can be purchased through