How can I show my work without risking the patent?

November 21, 2004 5:02 AM

Portfolio Confidentiality

I'm applying for a job with an industrial design firm which requires a portfolio. Some of my best work is part of a project which is in the process of being patented (but has not been filed for yet), so I'm unsure how to handle it. It seems excessive and limiting (and maybe rude?) to ask for an NDA from a potential employer, but I don't feel completely comfortable sending this information out. Anyone have any suggestions or experience in this area?
posted by hugo to (9 comments total)

Much of my portfolio work was done for a huge financial company that owns the rights to everything I made under their watch and won't release it.

I use graphics that I state are similar to the ones I made for Company X. They're really the same graphics with the labels and explanations changed so that you couldn't glean any competitive info from them.

Might still be in violation of my confidentiality agreement, but why bother to get me for it?
posted by Mayor Curley at 6:56 AM on November 21, 2004

Unless you want some serious lawyer trouble, don't show it to them. If you've signed an NDA with your current employer, then it doesn't matter even if you ask your future employer to sign an NDA. Because you don't have those rights in the first place.

Have you considered creating a mock portfolio? Take products that exist and redo them? Or create designs for concepts that don't exist yet? Or perhaps, if you've got balls, take one of the potential employer's designs and show how you could improve it? Such work would be free of any legal restrictions and would also highlight creativity. IMO, of course.
posted by madman at 7:54 AM on November 21, 2004

Looked at from the other perspective, a recruiter realizing someone is showing them proprietary information from a current employer is likely to be rather unimpressed with such an indiscretion.
posted by normy at 8:33 AM on November 21, 2004

(IANAL, but I just went through this at my workplace).

I think previous posters are jumping to conclusions that may not be correct (clarification from the OP would help). First off, there's a difference between patent and copyright, and while the project itself (methods) might be patentable, you need to determine whether the instantiation (work product) is copyrightable, and who owns those rights. It's entirely possible for the patent for the method to be held by one party and the copyrights to the product held by others.

The key is this: if you're showing work that's 100% yours (and rights for which you have not transferred to anyone else), you're probably OK. However: if you created this product on somebody else's dime, or using others' resources, then you may have a problem, as it's likely you've assigned either patent interest or copyright to your employer.

Without more information, I'm not sure anyone can give you definitive advice other than "tread carefully".
posted by aberrant at 9:25 AM on November 21, 2004

Ask your current employer what you can show and what you can't. It is likely that the design is not proprietary, but the information contained in it is. If that is the case, you can remove/change the context and keep the design. Make sure you get written permission from them before showing anything to anyone without an NDA (even an e-mail was fine in my case, yours might be different).

Like madman said, you can't ask them to sign an NDA yourself, if you do not have sole ownership of the material in the first place. Unlikely, but worth asking, is whether your current employer is willing to add them on their NDA. If the new firm ever does any patentable stuff, they are too familiar with the NDA business already, and it won't hurt you much.
posted by copperbleu at 10:07 AM on November 21, 2004

Thanks for all the input. I should clarify that the designs and methods are actually 100% mine, and I'll be the one filing the patents for them. Since the portfolio is of designs and not methods, perhaps it's more of a copyright issue. My concern is more whether it's a bad idea to show a good idea that's not completely protected to someone who could potentially use it. Or would the 'publishing' of it in a portfolio constitute a kind of prior art (as in copyright), so if they steal it I can point to the portfolio and say, "Wait a minute..."

This question has two parts then: the legal one, which I should maybe discuss with a patent lawyer, and whether a top-flight design firm is trustworthy in this way.
posted by hugo at 10:36 AM on November 21, 2004

Well, first off, if you're in the process of filing patents, then you'll have a date of application, which should protect you (again, though, IANAL, just a holder of some copyright IP -- not even patents, though I've just dealt with a rights assignment issue at my job).

Secondly, my (limited) understanding is that copyright is generally implied, but it wouldn't hurt to put an explicit notification (e.g., "all images (c) 2004 (your name here). Reproduction in whole or in part is expressly prohibited without author's consent" or something along those lines).

Finally, something to think about: if you have this many misgivings BEFORE you're an employee, while they're supposedly trying to woo you, what will it take to address your concerns assuming you get (and take) the job? My position is that I won't work for a company whose basic ethics (and protection of IP is one of them, for me) I can't trust (or at least sense) right off the bat.
posted by aberrant at 11:51 AM on November 21, 2004

Copyright adheres as soon as you fix your expression in a tangible medium. Your deisgn drawings are copyrighted immediately when they hit the paper, regardless of the little © notice. The notice or a registration helps with suing and trying to recover monetary damages though.

The patent is a bigger concern than copyright. First, methods are only one type of patent. Devices/machines/systems are often covered, so your product design is not simply a copyright issue. Copyright doesn't protect functional things, generally speaking. If you're concerned about them copying designs from your portfolio, that's a copyright concern. If you're concerned that they might see the design and then be able to reproduce what you're about to patent, the patent protection is a bigger issue.

Really, if you think the patents or copyrights in question are likely to be of any value, your best bet is to consult a patent attorney. It's very easy to lose your IP rights if you're not careful, so investing in good counsel up front, even if costly, is the best way to protect your IP assets.
posted by jewishbuddha at 12:14 PM on November 21, 2004

Thanks for all the input. I should clarify that the designs and methods are actually 100% mine, and I'll be the one filing the patents for them.

So you were not working for anyone when these methods were developed? Just trying to get the information straight. Although you see individual inventors names on patent applications it is often the case that there is corporate ownership. By contract with current or former employer employer you may have easily pre-assigned all IP you create under their employ. Without knowing every detail of the specific situation there is know way to answer this question with any accuracy.
posted by anathema at 3:33 PM on November 21, 2004