Sometimes when an inventor and attorney work together, there is a learning curve for figuring out when to call to discuss updates about recent actions taken. What kind of activity triggers a call from an attorney, and should an inventor call her attorney every time she has a thought about her invention? Here is a client story where the inventor should have called me before he took steps to manufacture his invention.
Client M has multiple issued patents on his version of a lock that is useful in his industry. He has two versions that cover different uses and has designed another version with improvements that will make the latest version more universal for multiple uses. As part of this effort, he sought the assistance of a fabricator to make a prototype of the improved design. He took his design ideas and a previous prototype he made and sought a final design that can be easily manufactured for sale.
The fabricator took the information and suggested “minor changes” that would improve the design for manufacture. While the improved prototype was being made, a dispute arose about how to fabricate the final design in larger numbers. The client reached out to me for advice and assistance once the dispute became heated.
The client thought that he was contracting for the fabrication of his design. He intended to seek additional patent protection for the improved device. Fortunately, the new design is likely to be protected by existing patent claims, but the improvement had not been finalized, and its corresponding application has not been filed. The agreement to make the prototype and its design improvements was a simple oral agreement between my client and the fabricator while discussing the project on one occasion.
M used an online AI tool to check his rights and was informed that the prototype design would be a “derivative work” that is likely considered “a work for hire.” So M was convinced that he would own the IP rights in the design of the prototype.
Had M discussed the situation with me before talking to the fabricator, I would have advised him of a few points:
First, the concepts of derivative works and work for hire are applicable to copyright law. Patent law treats joint inventors differently.
Second, the scope of IP ownership rights is broad and detailed. Rights discussed in an oral agreement are challenging to enforce, especially rights that aren’t even mentioned. Any IP ownership rights are best agreed to in a written form reviewed by your attorney.
Lastly, the discussion of an improved design with a third party may constitute a public disclosure creating prior art issues for patenting the latest design.
If M had called me before talking to his fabricator I would have provided him with a standard non-disclosure agreement (NDA) that contains IP ownership rights and would have eliminated any issues that arose. The call would have lasted 10-15 minutes. M can use this standard form agreement any time he contacts a 3rd-party for services related to his invention without further attorney involvement. Now M can keep me updated on his actions by sending me copies of any executed agreements with 3rd-party vendors.
Client calls are welcome at GIPL. A brief discussion and a standard NDA are little or no fee. We do charge clients who require longer calls and/or a customized NDA a nominal fee. Our goal is always to effectively protect your IP rights in the most affordable way.
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