Patent and Invention Help Forum

First approach with Companies - Best practice

First approach with Companies - Best practice
« on: October 03, 2018, 04:14:48 AM »
Dear members of the forum, in the next days I plan to file a patent related to a luminous decoration device.

Once submitted, a company wants to view the patent and I'm trying to understand what I should do for this introduction meeting, considering that for the moment I do not intend to avail myself of a patent attorney.
I have read a lot on the web on the topic, but I still have some questions in my mind:

- Shall I sign a non-disclosure agreement? If yes, what do you suggest in terms of penalty fee amount and secrecy duration?

- In this introduction meeting, shall I be generic (advantages, costs, etc.) or can I show the patent documents with constructive details?

- Can I bring the prototype?

- Am I allowed to leave them specific documents, if I'm asked to?

Any further suggestion would be appreciated.
Thank you in advance!
« Last Edit: October 03, 2018, 04:23:26 AM by lollinopil »

Brad

  • Patent Agent
  • *****
  • 1824
  • Owner of PatentFile, LLC
    • View Profile
    • Patent File
Re: First approach with Companies - Best practice
« Reply #1 on: October 03, 2018, 09:41:44 AM »
Some of these are more legal quesitons which cannot be answered here so I will stick to just some general "business" advice.

First of all, what type of company is this?   If its an "invention marketing" type company where they are in the business of working with inventors I would absolutely get them to sign an NDA that at the very least restricts what they can do with the information you share (i.e. they can only use your information for working with you on your project).  I would also follow this if the company is a manufacturer and would essentially be working for you and they should be willing to sign this type of agreement.

If its a "legit" company that is already making and selling products in your field I would still see if they can sign a NDA with you but I would not be surprised if they say "no" or ask you to sign theirs.   Here you may need the help of an attorney to review the contract.

In both cases it would be important to label all your documents as "Confidential" as that is usually required under most NDAs.   It would be smart to also follow up with them by email stating what you discussed at the meeting and noting what you consider to be your confidential and proprietary information.

As far as sharing the patent application itself, I think its not needed at the first introduction meeting but certainly as you move forward they are going to need to see it to do their due diligence on your offering.  Again, just make sure to label it as "confidential" in the header or some other location. 

*This is not legal advice, just general business advice on working with a company.



My free patent template: https://patentfile.org/free-provisional-patent-template/

Hire Me:  https://patentfile.org/packages/

Disclaimer: The information on this site is not legal advice and is not a substitute for an attorney or a law firm.  You should seek legal counsel for legal questions.

Re: First approach with Companies - Best practice
« Reply #2 on: October 03, 2018, 10:45:32 AM »
First of all, what type of company is this?   If its an "invention marketing" type company where they are in the business of working with inventors I would absolutely get them to sign an NDA that at the very least restricts what they can do with the information you share (i.e. they can only use your information for working with you on your project).  I would also follow this if the company is a manufacturer and would essentially be working for you and they should be willing to sign this type of agreement.
If its a "legit" company that is already making and selling products in your field I would still see if they can sign a NDA with you but I would not be surprised if they say "no" or ask you to sign theirs.   Here you may need the help of an attorney to review the contract.
It is a wholesale company that import (mostly from China) and sell to retailers in my country. Ok, I will ask for an NDA and wait for their response. In any case, if my understanding is correct before even an introduction meeting an agreement of this kind must be signed.

As far as sharing the patent application itself, I think its not needed at the first introduction meeting but certainly as you move forward they are going to need to see it to do their due diligence on your offering.  Again, just make sure to label it as "confidential" in the header or some other location.
I have no problem to show the patent application documents. If there is no potential issue or risk to show the details of the invention in the first introduction meeting, I think I will proceed in this way. Of course, every page will be stamped with the "confidential" statement.

Thank you very much for the help


Brad

  • Patent Agent
  • *****
  • 1824
  • Owner of PatentFile, LLC
    • View Profile
    • Patent File
Re: First approach with Companies - Best practice
« Reply #3 on: October 03, 2018, 01:24:40 PM »
What country are you in?

If you file your patent in the US only there is nothing that would stop them from copying your invention and trying to sell in your non-US country.

My free patent template: https://patentfile.org/free-provisional-patent-template/

Hire Me:  https://patentfile.org/packages/

Disclaimer: The information on this site is not legal advice and is not a substitute for an attorney or a law firm.  You should seek legal counsel for legal questions.

Re: First approach with Companies - Best practice
« Reply #4 on: October 03, 2018, 04:30:30 PM »
I am from Italy.
What about the priority right for the international extension? I guess that if we sign a NDA and they sell it abroad, in case the patent will be extended they can be pursued. If they do as you told, they're taking a risk. Is it correct?

Brad

  • Patent Agent
  • *****
  • 1824
  • Owner of PatentFile, LLC
    • View Profile
    • Patent File
Re: First approach with Companies - Best practice
« Reply #5 on: October 04, 2018, 09:00:55 AM »
yes as long a you make sure to keep your priority from your USA application to European or Italian application you may be okay here. 
My free patent template: https://patentfile.org/free-provisional-patent-template/

Hire Me:  https://patentfile.org/packages/

Disclaimer: The information on this site is not legal advice and is not a substitute for an attorney or a law firm.  You should seek legal counsel for legal questions.