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What is the most effective strategy for protecting your intellectual property?
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Protect yourself with a mutual nondisclosure agreement
The short answer would be you need to have a mutual nondisclosure agreement (NDA) that goes between you and anyone you may discuss your ideas with. The mutual portion of this is important to understand, such that I have been in the position where I am consulting for a startup, and they bring me in to pitch or work out a product with them. I will agree, and they will send me a one-sided NDA that is only protecting them. I think it is important to make sure those are converted to a mutual NDA. Many times, a consultant will be working on his own ideas and can have valuable input to help that company. You do not want to give up that right, but you want to make sure that the NDA covers both the company and the consultant to cover the ideas he has already worked on. I have been the beneficiary of this where I have signed a mutual NDA, consulted with a company and gave them some ideas that were new and novel. Weeks later, I received a licensing agreement for the ideas I pitched. It opened my eyes; it was a nice thing for the company to have done to honor the mutual NDA, but I was not aware of the intricacies and turned out to be lucky in that respect. It could have easily gone the other way.
Second, I think having a close circle of friends you can discuss ideas with is important. Trust often is a powerful aspect that can be used. Many times, I will have a close circle of friends that I can share ideas with and not necessarily have them sign an NDA for every idea. We are a small community, trust goes a long way, so if you burn a bridge, people will remember that. A close circle of friends will respect that trust and give you valuable input. They can help you hone that idea for pitching to a company or for going to the next step of designing an NDA.
I am also a believer in sharing ideas freely if you are not going to pursue them yourself. I am open with thoughts and ideas, and if I do not have time to pursue them or if I am not going to run with it, I will pitch it out to someone else. By pitching some ideas to a company or a colleague, you could be brought back in on an advisory board or connected somehow. There are financial rewards, but just having something come to fruition is a reward in and of itself.
I do not think every idea must be protected with an NDA. It can be expensive to chase ideas down and protect them with patents. We all have day jobs. Maybe the easier path is pitching it to someone else and letting yourself get pulled in on an advisory board later.
Once you do come up with an idea, you need to work with a patent attorney to work on protecting that concept in writing, but like I discussed briefly, it can be expensive and a long journey.
William F. Wiley, MD, is the co-inventor of MKO Melt (Imprimis) and medical director of Cleveland Eye Clinic. Disclosure: Wiley reports he is a consultant with Alcon, Johnson & Johnson, Zeiss, Bausch + Lomb, Hoya Vision, Imprimis, Omega Ophthalmics, Lensar, Equinox, New World Medical and AcuFocus.
The responsibility is yours
So, you have a great idea? One of the first things you want to do is to protect your idea, or intellectual property (IP). I am not a legal professional, and I am not giving legal advice here. I recommend that you seek out legal counsel from a patent attorney or patent agent. Yes, it is a legal disclaimer, but it is also a great first step in protecting your IP. Right after you document your discovery or idea, seeking legal counsel is probably one of the first things you want to do if you are serious about protecting your IP.
Documentation is important. It used to be the case that if you could prove that you had the idea first, such as dated entries in a laboratory book, you had claims for that IP. That is no longer the case. Presently, it is the first person to file the patent who has the claim on that IP. So, it is important that you file a provisional patent with the United States Patent and Trademark Office (USPTO) as soon as possible once you have formulated your idea. The provisional process is relatively fast and does not require that much documentation. It is also relatively cheap compared with the legal fees that would be required to file a full nonprovisional patent with the USPTO.
Another thing you do not want to do is have any public disclosure of the IP before you file your provisional patent. This includes publishing a paper, publishing a conference abstract, giving a grand rounds lecture or any other talk on the topic, etc. Doing so can seriously weaken any claims you will have on the IP, and if you are slow, someone else could file claims on your IP before you do.
If you work in academia, your university likely has a technology transfer and licensing office, and you should schedule a meeting with them when you have IP that you think may be important to protect. They will usually go through the process with you and gather the necessary information from you to file the provisional patent before you make any public disclosures. If they think the IP is important (for example, they can license it and make royalties), they will usually foot the legal bills to file the full nonprovisional patent.
If you are not in academia, you have to do this and pay for it all on your own dime. Ultimately, the responsibility is yours to protect your IP, and good documentation and timely filing of the provisional patent application with the aid of your IP legal team are the best ways to protect what you have.
Theodore Leng, MD, FACS, is an assistant professor of ophthalmology at Byers Eye Institute at Stanford in Palo Alto, California. Disclosure: Leng reports no relevant financial disclosures.