Failure to keep the invention in confidence
I once advised a client who invented a series of “widgets.” The inventor contacted a few major manufacturers and told them about his invention. He even went so far as to offer the invention for sale to the manufacturers.
On one occasion, a group of engineers from one of the manufacturing companies began corresponding with the inventor. The engineers asked the inventor many questions about his invention to which the inventor willingly responded to each inquiry. Most notably, the engineers asked the inventor whether he had patented the invention. He had not. Later, he even sent the engineers a prototype of his invention.
After a few months of correspondence, the engineers ceased communicating with the inventor despite numerous attempts to contact them. After it was clear that the engineers would no longer communicate with the inventor, the inventor came to me for advice.
I wanted to help the inventor but he had put himself in a tough position. I informed the inventor that because he offered the invention for sale greater than a year ago, he was therefore barred from obtaining a patent on his invention. Like many inventors, my former client had no idea that one is barred from obtaining patent rights for an invention if they do not file a patent application within one year of offering the invention for sale.
Many also do not understand that companies acting in bad faith often take advantage of an inventor’s good will by sifting the details of the invention from the inventor shortly after the inventor has offered to sell the invention to them. After the company discovers that the inventor has not filed a patent application for the invention, they might tease the inventor with emails or other tenuous correspondence just until a year after the offer date. At this point, the company has no need to further communicate with the inventor because the company is knows that the inventor is barred from obtaining a patent on his invention.
I informed the client that because he willingly divulged confidential information about his invention to the company, his options for legal remedies were limited. It is not clear whether the company ever created and sold products based on the invention. However, companies acting in bad faith will typically change up the invention to the point where they can claim non-infringement, a claim where a product or method does not infringe the patented invention, in the case that the inventor has time to patent his invention.
It was unfortunate that I was not able to help him. However, I can help others by passing on this story. Accordingly, it is best for individuals to keep their inventions in confidence unless disclosure is necessary. In the case of disclosure, it is best that the inventor mandate that recipients sign a non-disclosure agreement.
Moreover, inventors should realize that oftentimes disclosing one’s invention includes identifying problems that the invention seeks to solve. Identifying problems is not protectable legally, but exposing such problems may be just as important as the invention itself.