Obtaining and maintaining ownership of intellectual property (patents, copyrights, trade secrets, other valuable information, etc.) is an important and sometimes touchy subject. For individuals, maintaining ownership of your creations and valuable information is not especially difficult if you keep them entirely to yourself—however, it is often necessary to disclose your work to third parties, e.g., investors, manufacturers, engineers, licensees, publishers. In these situations, maintaining control over the information you provide to third parties is imperative. Most situations necessitate the use of a contractual document, such as a Non-Disclosure Agreement (NDA), which restricts what the person receiving the information can do with it. (NDA’s can also help to preserve your patent rights in foreign jurisdictions.)
Unfortunately, in some instances, the third party you wish to work with will not sign your NDA or will actually require you to sign an agreement that negates any obligation to maintain the confidentiality of your information. This most often occurs when there is a disparity of power between the two parties, such as between an individual who has invented a new tool and a national tool manufacturer. In these types of situations, you may want to take additional precautions before entering into the agreement, such as filing a patent application.
For businesses there are three basic types of intellectual property at issue: 1) intellectual property developed in the aggregate by the company (e.g., customer lists, marketing plans, sales figures); 2) intellectual property developed by an employee, vendor, or independent contractor (e.g., inventions, product formulas, engineering specs, project plans, cost estimates); and 3) unsolicited ideas from people outside your organization. In general, for either type 1) or 2), a contractual agreement such as a Vendor Agreement, Employee Agreement (EA), or Independent Contractor Agreement (ICA), that covers issues related to ownership of intellectual property or information developed by or for your business goes a long way in establishing the rights and responsibilities of each party. These agreements also should obligate the vendor, employee, or independent contractor to assign any rights they may have in the idea or work to you and to agree to complete any further steps needed to effectuate these rights.
As to unsolicited ideas, in my experience these most often occur through a website. The problem with unsolicited ideas is that the person soliciting the idea may, after the release of a product that includes the idea, assert that you do not own the intellectual property associated with the idea. Hopefully, if you have a website and allow people to contact you through it, you’ve implemented a Terms of Use (TOU) Agreement that includes a provision regarding the unsolicited submissions of ideas. In general, these provisions request that ideas not be sent thereby avoiding potential issues. However, if someone provides an unsolicited idea to your business, a common provision to include states that you have no obligation to keep the idea confidential and in some instances you may even claim ownership over that idea or information.
Conflicts regularly arise because of both tangible and intangible attributes of intellectual property, such as the possible monetary value of the idea, the pride associated with creating, inventing, writing, or developing something never seen before, and the very idea of possession which riles up a primal instinct in most people (my son’s view of possession highlights this instinct: What’s mine is mine and what’s yours is mine, but if it’s broken, it’s yours). Protecting your ownership in intellectual property is best done early—the agreements and strategies discussed above can assist you in maintaining control and reaping the benefits from your efforts and creativity.
