Intellectual Property: Patents and Inventions
NDA
Table of Contents:
Reservation of Patent Rights
Application Prohibition
Assignment of Patent Rights
Notice and Knowledge
Miscellaneous
Intellectual Property: Patents and Inventions
The owner of information disclosed under an NDA may require the receiving party to agree to terms that obviate any misunderstanding regarding the disposition of patent rights applicable to the disclosed information, including ownership, assignment, disclosure, and notice thereof.
Reservation of Patent Rights
The following exemplar sets forth the basic predicate regarding the discloser’s ownership of patent rights applicable to disclosed information:
Exemplar N14A-1
All Confidential Information and Confidential Material shall remain the sole and exclusive property of the Disclosing Party or its Affiliate, including all intellectual property rights therein. The Receiving Party shall not remove any proprietary, copyright, trade secret or other legend from any form of the Confidential Information or the Confidential Material.
Application Prohibition
The following exemplar prevents the receiving party from applying for a patent on any invention derived from information disclosed from the owner:
Exemplar N14A-2
Neither party shall have the right to apply for and obtain patents on any invention, which is conceived or developed out of the other party’s Confidential Information. The Recipient is only allowed to use the Confidential Information disclosed under this agreement for the Project and the Purpose. In no event is the Recipient allowed to file any patent applications on inventions making use of or derived from any Confidential Information (including Samples) received under this Agreement.
Assignment of Patent Rights
The owner/discloser may desire to go one step further and require the receiving party to assign all intellectual property rights derived from information disclosed by the owner/discloser. Part and parcel with this assignment obligation is a duty to disclose any such derived inventions:
Exemplar N14A-3
Discloser, throughout this Agreement and after its termination, will be and will remain holder of all intellectual property rights and interests related to the Inventions, including the right to economically exploit the Inventions in all their forms and for all purposes permitted by law, and the right to make any changes that are considered appropriate or useful. To the extent required for the above purpose, the Receiver shall: (i) transfer and procure the transfer of the Inventions to Discloser, and (ii) provide all assistance and execute all documents that may be necessary for Discloser to obtain and secure its intellectual property rights. The Receiver shall regularly and promptly inform Discloser in writing of any information concerning the Inventions. Furthermore, the Receiver shall provide the above information and assistance free of charge; with the sole exception that Discloser shall refund the Receiver any reasonable and previously approved out-of- pocket expenses it incurred in connection with providing the above information and assistance.
Exemplar N14A-4
Consultant acknowledges that any writing, sketch, drawings, invention, improvement, know-how, innovation, copyright, patent, design, utility model, study regarding and / or containing, or deriving from, any Confidential Information of Confidential Materials (the “Inventions”) that Consultant develops in performing the Purpose have to be immediately communicated to Client with any possible detail and will be considered full property of Client.
On the other hand, the receiving party should be precluded from assigning its rights to any party other than the owner/discloser:
Exemplar N14A-5
The Company will not assign the Inventions or anything used to develop the Inventions to third parties.
Notice and Knowledge
The following exemplar prevents the owner from relying on disclosure under an NDA for the purpose of establishing notice or knowledge of a patent by the receiving party, which could be relevant to establishing the scope of infringement damages:
Exemplar N14A-6
Notwithstanding any provision in this Agreement to the contrary, none of the information disclosed during discussions between the Parties, including without limitation any Confidential Information, shall be deemed to constitute notice or knowledge of a patent for purposes of indirect or willful patent infringement or damages for patent infringement.
On the other hand, the receiving party may acknowledge the rights of the owner/discloser embodied in the disclosed information:
Exemplar N14A-7
The Parties acknowledge that the use of Confidential Material for certain purposes may be subject to a patent or patent application filed by the Disclosing Party or third parties and the Confidential Material is under continuous further development.
Miscellaneous
Finally, the owner/discloser may require the receiving party to return all tangible materials relating to any concepts or inventions derived by the receiving party from the disclosed information, at NDA termination/expiration or upon request:
Exemplar N14A-8
The Consultant must, on termination of the Agreement for whatsoever reason, immediately return to Client any medium or material that is connected to the Inventions (regardless of whether the Inventions are complete or not), and the Consultant undertakes not to keep or make any copies of the Inventions.