Asked in Patents (Intellectual Property)

Q: After a patent application's been made can details of it be shared with organisations for model licensing

Patent being for a business methods and AI software system topology. At which time would NDA's be needed if at all?

1 Lawyer Answer
Kevin E. Flynn
PREMIUM
Kevin E. Flynn
Answered
  • Patents Lawyer
  • Pittsboro, NC

A: I hope that you took advantage of one of several ways to expedite the review of your patent application. Many companies will not engage in serious licensing discussions until you have a Notice of Allowance. It is just hard to tell whether you will be able to obtain commercially useful claims when you have not had a first action on the merits (Sometimes called FOAM).

Now if you are a seasoned veteran with several issued patents in this space and can discuss what sort of prior art searching was done before filing, that may tip the scales with many companies.

Unless you otherwise disclose your idea, Your idea documented in the patent application is still a trade secret until the patent issues or a publication of the application happens. Unless you were planning to file outside of the United States, I would have filed this with a non-publication request so you did not teach the world how to use your idea unless you were getting at least strong patent protection in the US.

So I would encourage the use of a NDA/non-use agreement even though your filing of a patent application has reduced the risks of the receiving party filing a patent application on the original idea. There remains a risk of them filing a series of improvement patent applications with this non-public information about the still secret patent application.

You need to work closely with patent and licensing attorneys that have been down this path many times.

I hope that this helps.

Kevin E Flynn

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