It's no secret that inventors need to protect their secrets. If you present an invention to a prospective buyer or licensee, it can be stolen. The best way to protect yourself is with a nondisclosure agreement.

But it's not enough to hand a company a one-size-fits-all nondisclosure agreement and expect a signature. The company may request modifications to the inventor's agreement, supply its own agreement or actually require an inventor to give up claims of confidentiality.

This plain-English eFormKit helps inventors create, modify and understand nondisclosure agreements. In addition to providing sample agreements, it explains:

• the laws concerning trade secrets and their limitations
  
• the risks of proceeding without a nondisclosure agreement
  
• the dangers posed by waiver agreements
  
• what to do if a company won't sign an agreement
  
• which modifications help the inventor and which modifications can hurt
  
• the perils of disclosing to employees, contractors and attorneys
  
• the meaning of each of the legalese "boilerplate" provisions in nondisclosure agreements

Disclosing your invention requires a balancing act: Presenting the best aspects of your invention while protecting the confidential aspects of your work. With this eFormKit an inventor can effectively maintain the necessary balance and minimize the risks of disclosure. Download it now.

• Agreement Worksheet
• Assignment of Rights: Patent
• Assignment of Rights: Patent Application
• Assignment of Rights: No Patent Issued or Application Filed
• Letter Confirming Employee's Ownership of Intellectual Property Rights
• Joint Ownership Agreement
• Agent Letter Agreement
• One-Way Nondisclosure Agreement
• Mutual Nondisclosure Agreement
• Contract Worksheet
• Letter of Intent
• Option Agreement
• Terms Sheet
• License Agreement
• Escrow Agreement
• Checklist for Reviewing a License Agreement
• License Dates Chart
• Audit Request Letter

Your Legal Companion

1. Gearing Up to License Your Invention

• Licenses
• Assignments
• The Licensing Process
• Avoiding Conflicts Among Multiple Agreements
• Challenges to Your Ownership
• Transferring Ownership of Your Invention to Your Business
• Disclosing Information About Your Invention
• Keeping Your Records
• No False Hopes! Reviewing Your Invention’s Commercial Potential

2. Intellectual Property Protection

• General Rules for Legal Protection of Inventions
• Utility Patents
• Trade Secrets
• Trademarks
• Design Patents
• Copyright Law
• Sorting Out Nonfunctional Features: Design Patents, Product Configurations, and Copyright

3. Ownership Issues for Inventor Employees

• What Type of Intellectual Property Is Involved?
• Employer/Employee: Patent and Trade Secret Ownership
• Inventions Covered by Copyright
• Special Employment Situations
• Working Out Ownership Issues With Your Employer

4. Invention Financing and Joint Ownership

• How Much Money Do You Need to License Your Idea?
• Sources of Funding
• Joint Ownership
• How Payments, Loans, or Investments Can Create Joint Ownership
• The Joint Ownership Agreement

5. Licensing Agents and Representatives

• Agents
• Completing the Agent Agreement
• Attorneys as Agents
• Invention Marketing Scams

6. Soliciting Potential Licenses

• Before You Begin Your Search
• How to Find Potential Licensees
• How to Overcome a Licensee’s Bias Against Submissions
• What’s the Best Way to Solicit a Potential Licensee?
• Product Presentations
• Should You Solicit Foreign Licensees?

7. Protecting Confidential Information

• Confidential Information and Nondisclosure Agreements
• Proceeding Without an Agreement
• Waiver Agreements
• When You Have Sufficient Bargaining Power
• Disclosing to Employees and Contractors
• Disclosing to an Attorney

8. The Key Elements of Your Agreement

• From Handshake to License
• Identifying the Parties
• Describing Your Invention and the Licensed Products
• Specifying Which Rights Are Granted
• Defining the Territory
• Setting the Length (Term) of the Agreement

9. Money: It Matters

• Some Basic Royalty Definitions
• Ways to Get Paid
• The Mysteries of Net Sales and Deductions
• How Much Do You Get?
• Royalty Provisions

10. Negotiating Your Agreement

• What, Me Negotiate?
• Documenting the Important Contract Elements
• Letter of Intent
• Option Agreements
• What If the Licensee Wants to Proceed Without a Written License Agreement?

11. Sample Agreement

• License Agreement
• Optional License Agreement Provisions
• Modifying the Sample Agreement for Your Needs

12. Warranties, Indemnification, and Proprietary Rights Provisions

• Promises, Promises…Warranties, Representations, and Covenants
• Indemnity: the “Hold Harmless” Provision
• Licensee Warranties and Indemnity
• Proprietary Rights
• Commercialization and Exploitation
• Samples and Quality Control
• Insurance

13. Termination and Posttermination

• Termination and Posttermination
• Termination Based Upon a Fixed Term
• Termination at Will
• Termination Based On Contract Problems
• Termination and Bankruptcy
• Posttermination: What Happens Afterwards?
• Survival of the Fittest

14. Boilerplate and Standard Provisions

• Paying the Lawyer’s Bills
• Dispute Resolution
• Governing Law
• Jurisdiction
• Waiver
• Severability
• Entire Understanding
• Attachments and Exhibits
• Notices
• No Joint Venture
• Assignments
• Force Majeure
• Headings
• Establishing Escrow Accounts

15. Service Provisions

• Service Provisions Versus Separate Service Agreements
• Training the Licensee’s Personnel
• Installation of Equipment
• Technical Support for the Licensee or for End Users
• Improving, Modifying, and Delivering the Invention

16. Handling the Licensee’s Agreement

• Dealing With Suggested Changes
• Evaluating an Agreement Presented to You
• Evaluating the Provisions and Suggesting Changes

17. After You Sign the Agreement

• Create Your Contract Calendar
• Dealing With Royalty Statements
• Resolving Licensing Disputes
• Avoiding Patent Misuse and Illegal Agreements
• The Taxman Cometh
• Quality Control

18. Help Beyond This Book

• Licensing and Intellectual Property Resources
• Working With an Attorney

Appendix A: How to Use the Cd-Rom

• Installing the Form Files Onto Your Computer
• Using the Word Processing Files to Create Documents
• Listening to the Audio Files
• Listening to Audio Files You’ve Installed On Your Computer
• List of Forms Included On the Cd-Rom

Index

Here are summaries of important legal or procedural changes that affect the latest edition of this product.

Whats New in the 6th Edition of Profit From Your Idea

Overview of What''s New

The 6th edition contains updated patent law rules (for example, termination of the USPTO's document disclosure program) and recent cases that affect patent licensing, including MedImmune v. Genentech, eBay v. MercExchange, KSR v. Teleflex, and Microsoft v. AT&T.

Who Needs the New Edition?

You Need the New Edition If:

you're interested in the effect of recent cases on licensing, such as the Microsoft case (which addressed issues about foreign licensing), the eBay case (which prohibited "automatic injunctions"), the Medimmune case (which permitted licensees to invalidate licensed patents), and the KSR decision (which changed the obviousness standard in patent law).

Chapters Most Affected

Chapters 1 and 2 include information about the changes in patent rules and case law.

Forms That Have Changed

There are no substantive changes to the forms.