Intellectual Property Management System
You know that in today's highly competitive business world, it is imperative to seek new ideas for heightening the efficiency and profitability of your operations. The mere fact that such ideas are capable of being nurtured into patentable inventions is, in and of itself, an incentive for their discovery and development. Patents, trade secrets, copyrights, and trademarks safeguard innovations that help improve corporate earnings, which ultimately benefit the individual employee and the public in general. Considerable income can accrue to the company from technology licensing activities.
Patents are important to business because they allow exclusion of others from making, using or selling inventions upon which a patent has been obtained. It is good business to utilize the patent system to establish further and maintain your company's competitive edge. MEYER & ASSOCIATES, LLC has an Intellectual Property Management System which can help your company maintain confidentiality as well as obtain patents in the United States and, where commercially advantageous, in other countries of the world.
The purpose of the MEYER & ASSOCIATES, LLC Intellectual Property Management System is to effectively and efficiently record and protect your ideas so that they can become protectable and valuable assets, whether or not they are ever actually the subject of a patent application.
LEGAL RECORDATION AND DOCUMENTATION
The first aspect of the system involves the legal recordation and documentation of an employee's idea. Employees who have conceived, or believe they have conceived, an invention of potential importance should ask themselves: "Is my invention a new or improved solution to a problem?" While research and development are essential to many process and product patents, patents may sometimes be based on well-developed but untried solutions to problems. Even inventions that at first appear to be only minor technical achievements can often result in a device or process generating high dollar volumes in sales. Many an inventor has overlooked the patentability of an idea only to see a patent on it issued to someone else. Hence, you should encourage your employees not to be excessively critical of their ideas but to submit them to the company for consideration. These ideas may be trade secrets or know-how, which should be evaluated and protected as they may foster more and "better" inventions.
Scientists, engineers and other researchers must keep day-to-day records, such as laboratory notebooks to enable others in the company to know precisely what was done. To satisfy legal requirements, any inventor must provide a written record of their innovative idea. Patent requirements for record keeping are simple and are based upon common sense. The requirements for record keeping involving patents were established mainly due to the fact that the story of the inventor alone is not believed and must be buttressed (corroborated) by the testimony of others.
It is important for patent purposes to establish dates of invention. A well-established date of invention can be used as follows:
1. To prove invention before the effective date of prior patents or publications cited as references by the Patent Office against your invention.
2. To win a so-called interference in the Patent Office. Basically, an interference in the Patent Office is a proceeding carried out to determine which of two or more competing inventors had the prior invention.
3. To prove dates and facts regarding invention in actual or threatened patent litigation; and
4. To establish the name(s) of the correct inventors so that a patent application can be made in the name(s) of the proper individuals.
There are several basic legal principles, which are necessary to establish the date of the invention:
1. The inventor's testimony and records alone are wholly inadequate to establish inventorship and reduction to practice. His or her work must be corroborated by others.
2. Conception is wholly within the inventor's mind and, therefore, can only be proven by his disclosure to others.
3. Conception of an invention is best proven by a written document disclosing the invention in complete form, which is dated and signed by the inventor and witnessed by at least one other person who understands the invention.
4. The actual carrying out or making of the invention (the so-called reduction to practice) must be proven or corroborated by someone other than the inventor who can swear that he either (a) watched the inventor carry out the important aspects of the invention with attestation to detail, or (b) carried out the invention on behalf of or at the request of the inventor.
5. A witness of the inventor's idea (conception) or a corroborator of the reduction to practice cannot be a co-inventor.
6. The testimony of a witness or corroborator would be supported by tangible evidence prepared at the time he either witnessed the conception of the invention or corroborated the reduction to practice of the invention. This evidence can be in the form of writings, sketches, drawings, such as in a lab notebook, blueprints, samples, models, etc.
7. All documents should be dated.
8. In some legal proceedings, it is necessary to prove that an inventor diligently reduced his invention to practice. Generally, this proof is necessary in situations where an inventor conceives of an invention earlier than another party but reduces the invention to practice later than the other party. Since one never knows in advance when such a situation will arise, it is important to be diligent in accomplishing reduction to practice and to keep good records of the steps taken towards complete reduction to practice.
After the employee has had an idea, which is called a "conception", the employee then builds a model or prototype if it is a machine or article of manufacture or he tries a process out to see if the idea will work in a useful manner, i.e. whether or not the invention has "utility". This act of testing an invention is called a "reduction to practice". The idea should be recorded in sufficient detail to establish clearly its nature and purpose. The inventor should also state what is personally known of the prevailing practice in the art for which the invention is intended, the shortcomings of that practice, and the improvements that the adoption of this particular invention would make possible. The inventor should further mention the reason chosen for approaching the problem, why it was deemed to be a conception superior to the best methods previously known, the best way to use it (including sketches and examples), whether and to what extent it can be altered without losing its advantages, and all known publications and patents related to it. If the nature of the invention permits, sketches and diagrams should be included in the disclosure. Each inventor must sign and date the completed form. It should also be read and signed by at least one witness (other than a co-inventor) who understands what the inventor has done.
MEYER & ASSOCIATES, LLC has designed a set of documents and forms that your employees can fill in to facilitate record keeping and assure protection of their ideas. The scope of the MEYER & ASSOCIATES, LLC Intellectual Property Management System involves much more than evaluating the patentability of new ideas and filing patent applications.
EMPLOYEE CONFIDENTIALITY AGREEMENTS
The second aspect of the MEYER & ASSOCIATES, LLC Intellectual Property Management System is the execution by employees of appropriate Confidentiality and Invention Assignment Agreements. Such agreements delineate the information to be protected, as well as the degree of care required to insure protection. The document should concentrate on the information to be protected, rather than on the people who should sign.
A comprehensive agreement relating to assignment of inventions and protection of confidential information covers: a. assignment of inventions; b. confidentiality of company information, both technical and business; c. confidentiality of information derived from third parties by the company under confidentiality agreement.
Signatory Parties The agreement is signed by all employees of divisions, subsidiaries and affiliates falling under the direct control of your company. Exceptions are those employees who, in the course of their work and by nature of their position and function would probably:
a. never be exposed to confidential or sensitive material or
b. never have cause or occasion to invent products or processes in the course and scope of their employment.
While it may be difficult for you to identify particular employees who need not be included in the program, those classes of employees, which are included, can be easily identified. MEYER & ASSOCIATES, LLC can help you in implementing your company's employee confidentiality system.
THIRD PARTY CONFIDENTIALITY AGREEMENTS
Another part of the MEYER & ASSOCIATES, LLC Intellectual Property Management System comprises the protection of your company's confidential information. This protection is achieved by a confidentiality agreement of which there are two types. The first type of agreement is used when your company discloses confidential information to another company for their review. The second type of agreement is utilized when your company wishes to receive confidential information from another company. These agreements are readily prepared by MEYER & ASSOCIATES, LLC upon receipt of the necessary information.
VISITORS CONFIDENTIALITY AGREEMENT
No doubt various types of individuals and organizations request and receive permission to visit your plants and other facilities. Whether the visit is for your company's benefit, as when your equipment is being serviced, or for the benefit of the visitor, as when certain techniques or processes are being evaluated by a potential licensee, your company must protect its trade secrets, know-how and other proprietary information. If adequate care is not taken, valuable property rights and competitive advantages may be lost.
In an attempt to avoid potential problems, a system of confidentiality agreements has been developed. Different agreements vary with the reason for the visit and the expected scope of the disclosure.
General Contractors, Service Personnel and Vendors. A confidentiality clause is to be incorporated into any service contracts or purchase agreements. All such clauses, as well as those vesting any rights in intellectual property, should be reviewed by an attorney.
Potential Licensees. The standard multi-page confidentiality agreement must be signed by an officer or authorized agent of any potential licensee who desires to enter your facilities in order to acquire specific technical information for evaluation and review. Such agreements should be prepared by an attorney.
Vendees, Vendors, Prospective Customers, Guests. Casual visitors to any plant or facility must sign the short form Visitor's Confidentiality Agreement before entering any production and especially any development areas. These forms can be obtained from MEYER & ASSOCIATES, LLC.
UNSOLICITED DISCLOSURES
When your company attracts unsolicited suggestions and ideas from people who are not your employees, these suggestions should be handled with the same degree of care as you handle other confidential information. Only after necessary releases have been obtained from the submitter to protect your company against legal difficulties by reason of your consideration of the submitter's ideas, should the ideas be directed to proper persons in the company for consideration. Again, MEYER & ASSOCIATES, LLC can help you set up a system to assure proper handling of these documents.
TECHNICAL PAPERS FOR PUBLICATION
The professional standing of many people is measured by the quality and originality of their research work. Their work is brought to the attention of the professional community through the publication of papers dealing with their work. Prior to publication, such papers should be reviewed by MEYER & ASSOCIATES LLC to ensure that patentable subject matter is protected and that the publication of the information contained in the paper will not endanger your company's Intellectual Property.
LICENSE AGREEMENTS
MEYER & ASSOCIATES, LLC has the expertise and experience to prepare license agreements under which company patents and other intellectual property are licensed or under which the company takes a license.
VALIDITY OPINIONS
Studies, which seek to determine the scope and validity of competitive patents, are also carried out by MEYER & ASSOCIATES, LLC. Patents, which appear to be valid, may not in fact be valid at all. In many situations business decisions may turn on the validity of a patent. This is a fairly technical aspect of patent law and should only be done by a licensed patent attorney.
INFRINGEMENT OPINIONS
In other situations the question of infringement may arise in regard to the outstanding patents of others. A knowledgeable choice of components, reactants or reaction conditions may easily avoid infringement of the patent claims of others. Infringement opinions are given by MEYER & ASSOCIATES, LLC. These opinions could save you thousands of dollars in litigation or licensing fees
Meyer & Associates, LLC
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