No can haz my special sauce!
September 2, 2010 9:07 AM   Subscribe

Intellectual Property (IP) disclosure: Alternatives to NDA?

I've a potential client who wants a photo of my user interface in action to use in promotion and sales. The problem is that such a photo would disclose a good deal of my unique method(s). Upon seeing the methods, a competitor would get a few "Ahah!" moments.

How do I protect my intellectual property? Ordinarily I'd think NDA, but the purpose of the photo is for outward promotion.

I see two possible answers:
1) Patent the method. If granted, a patent will eventually protect my rights by letting me sue those who infringe. Whee.
2)"No can haz." The special sauce recipe is secret.

Do you see alternatives?
posted by lothar to Technology (11 answers total) 1 user marked this as a favorite
I think we need to know a little bit more about your product. If this is consumer software, any potential competitor would just have to buy a copy to gain this information. Trying to protect it would be futile.

If this is an enterprise app, or something similarly back-endy, that's a whole different kettle of fish.
posted by Oktober at 9:18 AM on September 2, 2010

I am an attorney, but I am not your attorney. You should consult a competent IP attorney in your jurisdiction.

Be aware that a patent may not be an option. In the US, if your invention has been on sale or in public use for more than a year, you're generally unable to receive a patent. And 'public use' is defined more broadly than you might think. In other countries the rule is even stricter, with no one year grace period (ie 'absolute novelty' is required).
posted by jedicus at 9:21 AM on September 2, 2010

I am not an IP lawyer, but my instinct is to keep the special sauce recipe secret. Without knowing anything about your product, as a general rule, method patents are notoriously hard to get, and it is even harder to uphold their validity in a litigation scenario. (Not to mention how long and expensive patent litigation can be.) And without a patent, once you release a photo, well, all bets are off. You gave away your secret and put it in the public domain. (It's hard to say more without knowing exactly what your product/process is, however.)

Would your client be understanding if you explained?
posted by HonoriaGlossop at 9:21 AM on September 2, 2010

Response by poster: This is something back-endy. I'm doing real time interactive virtual puppetry. No one ever sees the performer or the methods. The methods are novel. Prior art of which I'm aware has always been carefully hidden from the competition, to the point of not taking credit for installations.
posted by lothar at 9:27 AM on September 2, 2010

Could you redact or alter the image in a way that will still promote your clean, easy to use interface but doesn't give away the content? Not knowing exactly what it holds is hard but at least prospective buyers see that it looks nice and usable without seeing how you do your magic.
posted by msbutah at 9:39 AM on September 2, 2010

You need a lawyer.

But know that patenting something isn't as simple as saying so. My company was recently awarded a business method patent it took ten years to prosecute.
posted by valkyryn at 9:45 AM on September 2, 2010

Best answer: I'm having a little trouble with the concept of " action." Are you doing the work for the client and they're trying to get funding or whatever based on your work? That is, is it work-for-hire that you're doing for them? You say, "potential client," so my basic advice is to step lively and charge them for the ability to reveal it to people other than the principals involved. If your secret-sauce methods are easily implemented once the right person sees their effect, you should really be protecting yourself more and possibly treating the potential client more like an employee, or hiring them as one.
posted by rhizome at 9:47 AM on September 2, 2010

Best answer: "No can haz." I would just say no, and suggest to the potential client some other promotional option. And in your user agreements you should probably specify that the look, feel, content and functionality of the UI is proprietary and is not to be disclosed or described to anyone, and not to be copied or photographed for any purpose.
posted by beagle at 10:03 AM on September 2, 2010

Best answer: I'm doing real time interactive virtual puppetry. No one ever sees the performer or the methods. The methods are novel.

Again, talk to a competent patent lawyer in your jurisdiction, but it generally doesn't matter if the 'how' is visible to the public, only that it's been used in public or available for sale more than a year ago. (I'm assuming you're in the US). There are ways around this limitation in certain cases, but they're tricky and you really should talk to a patent attorney about it.

As an example of how strict the rule is, a rather famous case involved a corset. Obviously no one saw the corset itself, since it's a kind of underwear, but it was sufficient that it was worn in public by even one person.
posted by jedicus at 10:11 AM on September 2, 2010

Best answer: I think your intellectual property is a great example of a trade secret. Those have some legal protection, but a key part is you have to make a good effort to keep it secret. No photos.
posted by Nelson at 10:30 AM on September 2, 2010

Response by poster: Fantastic help so far, thanks mefi.

jedicus, this is a new process that isn't yet in the wild. The timing of my question is critical in that I've mentioned what I'm doing to a few humans, and producers are jumping aboard to get the unobtanium firstest.

rhizome, yes, I see that my view of the "potential client" was misstated. I should see him as a contractor or employee working for me. Special sauce is the difference: I have it, he doesn't. Step lively and charge accordingly, indeed.

The answer for today is "No can haz." And I'll see a lawyer soon.
posted by lothar at 10:31 AM on September 2, 2010

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