CHAPTER 17
Protecting IP Rights: Nondisclosure Agreements Protecting IP Rights: Nondisclosure Agreements Prior to registration, IP rights in patents and marks consist of trade secrets. The disclosure of the IP could be deemed publication, and it could even place the IP into the public domain, in which event the IP rights could be lost. Although a copyright usually attaches when a creation is reduced to tangible form, a copyright can also be lost to the public domain if the owner publishes the work without identifying it as being subject to copyright. For these reasons, the owner of IP should take precautions to avoid losing the IP rights to the public at large. The following agreements cover disclosures made in three different situations: to a third party for acquiring capital or for licensing or selling the rights (Creator and Confidant Nondisclosure Agreement), to a publisher for purposes of protecting a copyright (Author and Publisher Nondisclosure Agreement), and to an employee who is leaving the employment of a company (Employer and Employee Nondisclosure Agreement).
Nondisclosure Agreement Between Creator and Confidant USE OF FORM
This form is most useful when an individual IP owner is meeting private parties, venture capitalists, or similar persons. In an effort to make the agreement more acceptable to a company, it is written so as to impose mutual duties of confidentiality on both parties. However, many well-established companies may refuse to sign any nondisclosure agreement, because if the company is already developing the same or a similar creation you could later accuse it of stealing your own idea. In fact, the company may require you to sign a waiver giving up your right to sue for infringement. Without the waiver, there will be no meeting. To sell your creation, you may have to present a summarized version of your IP and trust the company to be honest. You could also try to waive your right to infringement claims in exchange for their acknowledgment that the specific presentation you are making is your own creation. In any event, you should always ensure that before disclosure you have also protected your IP rights, such as by means of an application for registration. NONDISCLOSURE AGREEMENT THIS AGREEMENT IS MADE AS OF [ date ] BY [ name and address of party ] (OWNER) AND [ name and address of party ] (CONFIDANT).
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