Preserving Intellectual Property

Dec. 21, 2004

With commercialization of nanotechnology beginning to pick up speed, intellectual property safeguards need to be considered, emphasizes Stephen B. Maebius, partner in the Washington, D.C., offices of Foley & Lardner. He suggests starting with an organized effort to understand the patent landscape in your sector of nanotechnology. He offers the following list as preparation for a dialog with qualified intellectual property counsel.

  • Do not publish, publicly present or offer to sell an invention before filing a patent application and consulting a patent attorney.
  • Do not discuss the technology with potential investors until you have entered into a nondisclosure agreement, consulted with a patent attorney and preferably filed a patent application.
  • In consultation with your patent attorney, conduct a freedom-to-operate search of third-party patents before launching a product or investing large sums of money to develop a product. A patent covering your product does not give you the right to practice under other parties' patents -- a patent is only a right to exclude others, not a right to practice.
  • Maintain detailed lab notebooks with each page dated, signed by the person who performed the work and countersigned by a witness who can understand your technology, to document the discoveries.
  • Consider the use of invention disclosure forms (in addition to maintaining lab notebooks) to facilitate preparation of patent applications.
  • Remember that grant proposals can work against your own later-filed patent applications, so language to be included in grant proposals should be reviewed by a patent attorney before it is submitted.
  • Be sure your intellectual property counsel has a technical background sufficiently relevant to understand your invention and the full range of applications of the technology.
  • Take steps to maintain confidentiality of your research and prevent access by non-employee visitors.
  • New employees should sign agreements clearly stating that their inventions will be owned by the company (if that is the intended result of the employment relationship) and that they agree to be bound by your company's confidentiality policies and procedures.
  • Be sure to screen new employees to ensure that they have not misappropriated trade secrets that are owned by other parties, such as previous employers.
  • Before collaborating with other parties to jointly develop technology or to contract for the development of new technology by another party, consult with a patent attorney to ensure that agreements are in place that properly define ownership of any resulting intellectual property.
  • Before licensing in or licensing out any intellectual property, consult with a patent attorney to conduct a due diligence review to ascertain the value of the intellectual property. Failure to be informed of weaknesses or strengths in intellectual property can negatively impact your negotiations.
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