Advising team on protecting their prototype as product heads into development?
November 4, 2011 3:05 PM Subscribe
I'm advising a team which has created a clever interactive teaching item for a specific type of healthcare scenario. It has been received well in initial testing of the working prototype, and the team would like to pursue further development. They need to begin to involve others in exploring refinement and manufacturing, and are trying to determine how to protect their interests. But NDA (non-disclosure agreements) are rarely accepted nowadays. Need to consider alternative strategies...
The product has hardware and software components, as well as a special exterior casing/interface which enables the interactivity.
They are doing the programming and would design the hardware, but would like to work with experts to optimize/refine the hardware; design the manufacturing specifications; and to get the manufacturing done.
They understand why fewer and fewer people agree to sign NDA's these days, but are trying to figure out strategies for protecting their interests for at least three years while they pursue development. We discussed strategies such as separating the components (such as the circuit board) from other components for optimization by different parties. But I'm trying to brainstorm more ideas with them that they can pursue or ask about.
What are alternative strategies that are used in place of an NDA to protect products in the development stage? I work more on the design side or with large companies which have in-house capabilities for development and manufacturing. So, I'm not up-to-date on the strategies being used these days.
The product has hardware and software components, as well as a special exterior casing/interface which enables the interactivity.
They are doing the programming and would design the hardware, but would like to work with experts to optimize/refine the hardware; design the manufacturing specifications; and to get the manufacturing done.
They understand why fewer and fewer people agree to sign NDA's these days, but are trying to figure out strategies for protecting their interests for at least three years while they pursue development. We discussed strategies such as separating the components (such as the circuit board) from other components for optimization by different parties. But I'm trying to brainstorm more ideas with them that they can pursue or ask about.
What are alternative strategies that are used in place of an NDA to protect products in the development stage? I work more on the design side or with large companies which have in-house capabilities for development and manufacturing. So, I'm not up-to-date on the strategies being used these days.
Response by poster: The team has already filed a provisional patent. Most recently, the situation arose when meeting with the head of a company, specializing in design and design for manufacturing of products that have the same complexity as this product (robotic, interactive, but not for this use in this context).
More than one party has refused to sign an NDA. One party refused to sign because they wouldn't want the team to claim that they copied the product idea if they ever produced something that was tangent. The other (very connected, high profile) individual became offended and walked out of the meeting to complain to the adviser who had set up the meeting (which took the team by surprise, as they had been advised by an IP attorney that morning to always get a signed NDA.) This created problems with the person who set up the meeting, a high-profile product designer who is not participating on the team, but was acting in good faith as someone who supports this team.
It surprised me that someone as experienced as this high-profile person was angry that his friend was offended by the request for an NDA and chided the team for the perceived insult, suggesting that NDA's "just weren't done anymore." But I've also experienced more refusals to sign NDA's on other projects (though those projects could not be patented, they were online projects being developed with code). I wasn't present at the meeting where the person perceived offense, but this is a very polite and respectful (even though inexperienced) project team.
I suspect that they have to decide whether they want to partner financially with a company that sells whole products similar to their prototype, either eventually selling their rights to that company or risk that the company will cut them out. Or to focus on the smaller components of the product with many different companies as a "controlled reveal"...not really giving anyone the whole story and putting the pieces together themselves.
The combination of legal-related issues AND product development strategy is the reason that I posted this where I did. There are ways to approach product development from an IP perspective. And I imagine (though I don't know...thus the question) that there are ways to always manage the strategy of product development projects. I'm more interested in the latter but will also be happy to hear different opinions on the former as well.
posted by jeanmari at 10:50 AM on November 5, 2011
More than one party has refused to sign an NDA. One party refused to sign because they wouldn't want the team to claim that they copied the product idea if they ever produced something that was tangent. The other (very connected, high profile) individual became offended and walked out of the meeting to complain to the adviser who had set up the meeting (which took the team by surprise, as they had been advised by an IP attorney that morning to always get a signed NDA.) This created problems with the person who set up the meeting, a high-profile product designer who is not participating on the team, but was acting in good faith as someone who supports this team.
It surprised me that someone as experienced as this high-profile person was angry that his friend was offended by the request for an NDA and chided the team for the perceived insult, suggesting that NDA's "just weren't done anymore." But I've also experienced more refusals to sign NDA's on other projects (though those projects could not be patented, they were online projects being developed with code). I wasn't present at the meeting where the person perceived offense, but this is a very polite and respectful (even though inexperienced) project team.
I suspect that they have to decide whether they want to partner financially with a company that sells whole products similar to their prototype, either eventually selling their rights to that company or risk that the company will cut them out. Or to focus on the smaller components of the product with many different companies as a "controlled reveal"...not really giving anyone the whole story and putting the pieces together themselves.
The combination of legal-related issues AND product development strategy is the reason that I posted this where I did. There are ways to approach product development from an IP perspective. And I imagine (though I don't know...thus the question) that there are ways to always manage the strategy of product development projects. I'm more interested in the latter but will also be happy to hear different opinions on the former as well.
posted by jeanmari at 10:50 AM on November 5, 2011
Not a lawyer, but in my experience NDAs are *always* done. The offense possibly arose because it wasn't done *before* the meeting. We require NDAs to be in place before an appointment is even made.
More typically, we make the NDA an MNDA - a Mutual Non-Disclosure Agreement, so that it's obviously even handed.
The MNDA is discussed between counsels for each team, so that there's never a question of offense. Just lawyers doing business.
posted by blue_wardrobe at 1:20 PM on November 5, 2011
More typically, we make the NDA an MNDA - a Mutual Non-Disclosure Agreement, so that it's obviously even handed.
The MNDA is discussed between counsels for each team, so that there's never a question of offense. Just lawyers doing business.
posted by blue_wardrobe at 1:20 PM on November 5, 2011
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You should consult a competent intellectual property attorney in your jurisdiction about the feasibility and value of patenting the invention. One of the key purposes of a patent is to allow the invention to be disclosed to others (e.g. potential manufacturing partners and customers) while preventing them from copying it.
posted by jedicus at 4:06 PM on November 4, 2011