Alternative ways of IP protection

Patenting is NOT the only way to protect your idea. Actually it might be better (cheaper) to consider the following alternatives or to wait with a patent application.

Confidential information and non-disclosure agreements (NDA)
Confidentiality of a Master’s thesis
Trade secret
Copyright
Design right
Trademark
Defensive publication

Confidential information and non-disclosure agreements (NDA)

A major alternative to patent applications for protecting your invention is to keep it secret. Confidential information is regarded as intellectual property; however it is not covered by a statutory IP right. To keep an invention confidential depends largely on your own common sense measures, which you should take from the day you first have an idea. You should be safe when disclosing details of your idea to people whose professions require them to keep confidentiality when dealing with clients. These include VUB TechTransfer staff, patent attorneys, IP advisors, public servants at funding agencies,…

When dealing with anyone else – companies in particular – you should disclose nothing without at least a signed non-disclosure agreement (NDA) and free forms of legal protection in place, such as copyright or unregistered design rights (for advice on this, contact VUB TechTransfer). You should however try to avoid obsessive secrecy or a demand for payment before disclosing any detail. Therefore, before talking to companies or individuals not bound by confidentiality, decide exactly how much you can tell them without describing the crucial parts of your invention. Focus rather on what it is and how good (or how much better) the invention performs than on what makes it novel and on how it works.

Don’t discuss the technical aspects in too much detail but instead discuss the competitive advantages (cheaper, more reliable, easier to use,…). Furthermore, try to be diplomatic but firm on the need to restrict disclosure. Insist on signing an NDA and if they refuse, walk away. Even if protected by an NDA, be very careful what you reveal to experts in your field. Prior to discussing your invention with third parties consider registering your invention by a notary or i-depot (for more information, contact VUB TechTransfer or check the Benelux Office for Intellectual Property (BOIP) website). Registering your invention does not however provide any protection. It only provides evidence that somebody has infringed an NDA.

Confidentiality of a Master’s thesis

One needs to make a distinction between research results obtained by Master students and results obtained by researchers within the framework of an employment contract or grant: the IP rights to results obtained by Master students are not the property of the university. The following guidelines are important to take into account.

  1. Students who in the course of their Master’s thesis research gain access to confidential information belonging to the university, are obliged to treat this information as confidential. Therefore, a confidentiality agreement needs to be signed, preferably at the start of the research project.
  2. In case a student is involved in a research project in collaboration with third parties and the concluding research results are subject to valorization, the student has to transfer his intellectual property rights to the university in order to enable the university to comply with its technology transfer obligations. Anyhow, for any internal VUB project, the Master student is strongly advised to sign a confidentiality agreement and an agreement comprising a waiver of rights in order to safeguard the university’s “freedom to operate” and IP. A model of such an agreement is available from the Technology Transfer Interface.  The Masterstudent will at all times consult with his promotor on the subject.
  3. Concerning the defence of a Master’s thesis, it might be necessary to provide a confidential version of the thesis and/or a defence behind closed doors. The thesis student’s promotor is the best placed person to judge this. Both internal and external reviewers involved in evaluating the thesis need to sign a confidentiality statement, which is available from VUB TechTransfer.

In each of these cases it might be necessary - before disclosure of any kind - to inform the Knowledge and Technology Transfer Interface about possible valorization opportunities that might arise from the Master’s thesis research results in order to take valorization possibilities into careful consideration with the Master student, the promotor and VUB TechTransfer.

Trade secret

A trade secret is undocumented information known only to you. Without it, others may find it difficult or unrewarding to exploit your idea. This information can be commercially valuableand is often included in licensing agreements. There is however no way of registering it and it can be hard to establish. Be very careful about marking information as know-how and leaving information out of a patent application.

Copyright

Copyright protects you for many years against the unauthorized copying or adapting of drawn, written or photographic descriptions of your idea. It does not protect the idea itself. Copyright arises automatically and is free of charge. With regard to copyright ownership issues: make descriptions, drawings, photos, etc, of your idea and copy them on a CD/DVD, place your documents/CD/DVD in a secure sealed envelope and have it registered (e.g. via i-depot). In the case of software code (as is, not its implementation) copyright is the only protection available for computer programs in Europe since the European Patent Office (EPO) does not grant patents for computer programs.

However, the EPO does grant patents on computer implemented inventions (CII). A CII is defined as an invention that works by using a computer, a computer network or other programmable apparatus. The technical effect of a CII must go beyond the inherent technical interactions between hardware and software.

Design right

A design right protects the outward appearance of a product including its shape, pattern, texture, decorations, etc. Unregistered design rights are free and are similar to copyright and allow you to prevent unauthorised copying. Use an i-depot to register your designs. Registered design rights provide a more robust protection and can last for up to 25 years. Applications can be made to most national IP offices, or to the Office of Harmonization for the Internal Market (OHIM) where a single application can be registered for the whole of the European Union.

To be validly registered the design must be new and have “individual character”. You can take legal action against anyone who makes, sells, uses, or imports articles that look like what you’ve registered. The application is fast and relatively cheap but only makes sense when the outward appearance is a strong selling argument for your product.

Trademark

A trademark can be any sign that distinguishes your product from that of others. Trademarks can be valid indefinitely. A trademark associated with a popular brand name may be of enormous value to its owner. Trademarks do not protect ideas or products per se but link your product to your company. It is important that your trademark is sufficiently distinguishing.

Therefore a trademark should not be descriptive of your product/service or contain generic terms. When you refer to your product, always mention the correct trademark and avoid using your trademark as a verb or in plural. This might lead to the dilution of your trademark.For example, a Kodak does no longer refer to the specific product of one company but refers more and more in general to a camera.

Defensive publication

A defensive publication is helpful in minimizing the risk of unwanted patent applications by third parties and in ensuring future freedom to operate. Once published, the invention described can no longer be patented by competitors. Publication will also help to promote your inventions. Therefore, it is recommended to mention in your publications that the invention described is patented. You can either refer to the publication number of the patentor (when the patent has not yet been published) you can mention that the invention is “patent pending”. 

Sources:

  • Pipers Patent Attorneys. What is Infringement? Retrieved August 2009 from www.piperpat.com/Small Businesses/Introduction/What is Infringement/tabid/83/Default.aspx
  • EPO – The European Patent Office. Inventors’ Handbook. Retrieved July 2009 from www.epo.org/topics/innovation-and-economy/handbook.html
  • EPO – The European Patent Office. Patents for software? Retrieved October 2009 from www.epo.org/topics/issues/computer-implemented inventions/software.html
  • WIPO – World Intellectual Property Organisation. WIPO Intellectual Property Handbook: Policy, Law and Use. Retrieved August 2009 from www.wipo.int/about-ip/en/iprm/
  • MIT - Massachusetts Institute of Technology. An Inventors Guide to Technology Transfer at the Massachusetts Institute of Technology. PDF retrieved September 2009 from http://mit.edu/tlo/www/

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