How much of provisionally patented invention must I disclose without a CDA to interest an investor enough to sign one?
IP: Methods & materials identified to store energy for sustainable electric generators.
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Mar 23, 2014
Similar to those that have already answered, it depends on the investor. However, what is also important is the comfort level you feel with disclosing more than what is in the provisional patent. You want to disclose enough information that they stay interested, but not enough to give the idea away to protect yourself in the long run as well as getting the best deal for your product.
Jan 26, 2014
Investors worth working with typically don't sign confidentiality agreements. So, protect your idea better before disclosing and see where everything goes.
Being afraid of disclosure is always problematic since eventually your product needs to be released.
Jan 24, 2014
With any idea, if you have a legal team, they will agree, that until your idea is protected in its entirety, rule of thumb, it's better to tell as few people as possible when it comes to inventions. I recently attended a business class specifically in patenting and the new laws, in inventing are these, "... the first person to apply for a patent is usually the one who receives it.." USPTO is now observing a one-year rule in regard to patent applications. Always, always, always obtain a signed confidential non-disclosure,non-compete agreement (NDNCA) that is date and time stamped for your files before revealing your idea to others. As long as you have gotten a signed NDNCA before showing or discussing your invention, it is not counted as a public disclosure. A great way to get time stamped signatures that expedite documents is an online program called Docusign. Docusign used to be relatively used by Realtor's and now is being used world wide by consultants and many other end users. I highly recommend that you cover your ASSet's by getting legal counsel, a hard-core NCNDA and a great program to expedite signatures that are legal and binding in the court of law. When it comes to protecting your idea and you are sharing - remember this one question...."...what would a judge say...?" That will answer your question and alleviate your doubt.
Jan 21, 2014
A provisional patent merely establishes a date for the idea idea you have described in your application. It is not a patent and does not protect the methods and processes that produce the idea. Thus you can disclose the idea but I wouldn't recommend disclosing your methods and processes for achieving the result.
Jan 21, 2014
I'm reminded of an "old" but classic answer. It is like a women's skirt. The information must be short enough to be interesting, but long enough to cover the subject. :-)
Jan 21, 2014
Reasonable minds can differ on this - at least that is what I will hang my hat on as I offer a different opinion. How far are you going to get without investment? If you don't need the investment, its fine to keep the details to yourself.
Otherwise, you need to keep in mind that most investors are not going to entertain multiple pitches, and only a finite number are going to let you make one pitch. I encourage my clients to make sure their interests are protected with the provisional application and then do everything in their power to get that funding. The odds are stacked against you attracting funding as it is, but you diminish your chances to succeed if you are holding back.
Most investors do not care to see how every piece of your technology is put together, but they want to see enough to appreciate what you are bringing to the table. Show them enough to gain their appreciation and show it without reservation. If they ask for more because they are not sold, show them more. Put everything about your invention in your provisional application(s) so that you are comfortable sharing everything with your prospective investors. If you disclose something to an investor that was not in your provisional, you can file another provisional that day (an edited version of your previous filing) to capture that disclosure. And keep in mind that if you fail to file a non-provisional off of the provisional, you will lose any protection provided by the provisional.
Jan 20, 2014
As little as possible but you probably won't be able to control or limit your disclosure if the investor has the greater leverage. Likewise, it is important to have the prospective investor execute a CDA but often that is difficult simply because the CDA represents additional legal liability on the part of the investor and if you make the prospective investment too difficult initially for that investor, that investor could very easily walk away. I would suggest trying to get the investor to execute some sort of simple CDA that is not too legally intimidating but that is sufficiently protective. Also, you need to be careful that the provisional patent is broader in scope than invention you need to disclose.
I believe it is helpful to have a prototype to demonstrate your invention which of course would be encompassed within the provisional patent. Moreover, it is important to follow-up the provisional patent with an actual patent application filing prior to the 1-year expiration date of the provisional patent. Otherwise, you could end up with a disclosure of your invention without any patent protection.
Jan 20, 2014
I would only disclose as much information as needed to explain what the product is/does, and mention that there is more detail that can be provided by signing an Non-Disclosure and Confidentiality Agreement. I wouldn't provide any details without an agreement. Provisional patent or even a granted patent doesn't offer full protection, since sometimes processes or designs can be re-worked so that it doesn't match your patent.
Jan 19, 2014
A provisional patent application gives you a 'patent pending' status - so firstly use the words 'patent pending' on all material, written or verbal, you send to the investors and while making the investor presentation. Secondly, at the time of disclosure, you should expressly request that the information be kept confidential (this would create an implied confidential relationship). Lastly, only disclose what is covered under the provisional patent application. If you believe that there are alternatives and variations (not covered under the provisional patent application) to the invention, its advisable not to disclose it. Additionally, please ensure that you file the non-provisional application within the prescribed timeline.
Jan 19, 2014
Do you mean "CDA" to be a "confidentiality agreement?" If that's the case, disclose only information to the extent that you trust the potential investor. If your invention is provisionally patented, that at least puts you ahead of the game. I would meet with him or her personally, with a witness, to discuss it. If not, Skype and record the talk, with the investor's permission. If CDA has another meaning, please spell it out so that I can update my answer. :)