Patent

A patent is a right granted to an inventor that permits the inventor to exclude others from making, selling or using the invention for a period of time. The patent system is designed to encourage inventions that are unique and useful to society.

In Tanzania, request for grant of a patent must be made in English, in triplicate and in a prescribed form comprising:

• request for the grant of a patent;
• the full name and address of the applicant(s) including their nationalities and country principal place of business (if there are several applicants, the proportion of their entitlement must be mentioned if it is not equal);
• title of the invention, that is, a short and precise indication of the subject matter of the invention;
• statement that the applicant is the inventor (if applicant is not the inventor, a sworn statement must be provided to justify the applicant’s right to file a patent application);
• In the case of a divisional application, declaration to that effect, with indication of reference number and the filing and priority dates of the parent application; and
• claim to priority rights, if appropriate, indicating number, country, and filing date of the application which priority is claimed and a statement as to whether the certified copy of the earlier application is accompanied to the application (if not the date when will be furnished must be indicated). The request must be signed by the patent agent.

For startups, knowing where to start with patents is the hard part. Once you have an IP strategy in place, implementing and tweaking that plan is not as difficult. This is a practical nuts-and-bolts guide for startups thinking of patenting their innovation.

Utility patents take a long time and a lot of money. Patent litigation in court increases those factors exponentially. So why should startups bother with patenting? Smart startups know that patent applications help with funding and provide defensive measures against other patent owners. Here’s a detailed post on why startups should consider patenting their technology.There is one thing a patent cannot do. A patent will not protect your startup from infringing other patents. Patents will give your startup the right to exclude others from practicing your patented invention. Your company might still be liable for infringement even if you own a patent on your technology.Keep your concepts confidentialOne of the most common pitfalls of startups is the failure to keep otherwise patentable concepts confidential until after applying for a patent. Many entrepreneurs do not realize that Tanzania patent laws provide inventors with a 1-year grace period. This means you have only one year from the earliest date of public disclosure to file a patent application. Most foreign countries do not provide any grace periods, so you would need to secure a patent filing date prior to any public disclosures. Patent rights may significantly boost the value of your startup. A few simple measure can help prevent you from forfeiting these rights.Even if you decide to launch your product first and file a patent application within a year, the timing is less than optimal since others could beat you to the Patent Office with a patent application for a similar concept.First steps for startups in obtaining patents

Before spending any money, it is critical for entrepreneurs to understand how getting a patent is different from infringing a patent. Getting a patent does not mean you automatically have the right to make/sell your product.

It is equally important to understand the differences between utility patents and design patents. Design patents protect how an invention looks while utility patents protect how an invention works. Ask yourself whether you want to protect how your concept looks or how it works, or both. Utility patents cost significantly more than design patents, and involve a much longer prosecution process.

Pick the right patent search

For startups on a tighter budget, I generally recommend the patentability search so as to determine if it would be worthwhile to file a utility patent application. While an infringement search may provide some peace of mind, a search may be cost prohibitive depending upon the technology and number of features included in your product.

File patent applications early to beat other startups

Once you’ve decided to patent your product, don’t delay. It’s a race to the Patent Office under the first-to-file rule. Nobody cares about how long ago you came up with an idea. You need to secure an earlier patent filing date before others beat you to it.

Provisional patent applications can be helpful in securing earlier filing dates without spending too much money upfront. But, you’ll have only one year to convert your provisional applications to non provisional applications.

Flat rate patent fees for startups

Costs for the initial preparation and filing of a utility patent application vary widely, depending upon the law firm and patent practitioner. ABC Attorneys offers fixed fees for the drafting and filing of a utility nonprovisional patent application. ABC Attorneys estimate process involves a free preliminary review of your invention disclosures which allows Tanzania to provide a flat rate estimate for drafting and filing the utility application.

ABC Attorneys does not sign NDA prior to reviewing invention disclosures to the high number of estimate requests from potential clients. Accordingly, we recommend that any potential client send only a general description of the invention so that we can provide a ballpark quote for the initial filing. Estimates will only increase if the client changes the scope of the application (e.g., adding new features of the invention). In any event, we will always advise of any additional increases in the estimates and seek preapproval before commencing work on the new features.

The Non-convention, convention and PCT national phase applications are filed with the office of the Registrar of Patents.
Examination of patent in Tanzania
Applications are subjected to formal examination which takes place
automatically. The Act provides that applications relating to specified technical fields will be subjected to substantive examination.
Opposition of patent in Tanzania
The Act does not provide for opposition by third parties to the grant of a patent.Publication of patent in Tanzania
After examination, if the Registrar is satisfied that the necessary requirements have been met, he shall grant and publish the patent.

Timeframe of patent in Tanzania

From filing to registration is 3 years, approximately.

Duration of patent in Tanzania

The duration of a patent is 10 years, extendible for further two terms of five years each, provided the owner or licensee can show that the patent was being worked in the United Republic, or that there were legitimate reasons for non-working.

Annuities of patent in Tanzania

Maintenance fees are payable annually from the filing date for both pending applications and granted patents. A six months grace period is provided, subject to surcharges. Failure to pay the annual maintenance fees before the deadline or within the six month grace period leads to lapsing of the application/patent.

Priority of patent in Tanzania
Tanganyika is a member of the Paris Convention. An application may contain a declaration claiming priority of one or more earlier national, regional or international applications filed by the applicant or his predecessor in title in any state party to a Convention to which Tanganyika is a party. A certified copy of the priority application has to be filed within three months of the filing date or the claim to priority will be lost.

Filing of patent in Zanzibar
The Non-convention, convention and PCT national phase applications are filed with the office of the Registrar of Patents.

Examination of patent in Zanzibar
Applications are subjected to formal examination, which takes place automatically.

Publication of patent in Zanzibar
After examination, if the Registrar is satisfied that the necessary requirements have been met, he shall publish the patent. The Registrar will also publish granted patents.

Opposition of patent in Zanzibar
Any interested person may after the application is published, but before grant, lodge a notice of opposition with the Registrar’s office. The notice of opposition must set out the grounds on which the opponent relies for opposing the grant of the patent, as well as all relevant evidence. The patent applicant has a prescribed period after the notice of opposition to file a counter-statement. The Registrar will grant a hearing and decide the matter.

Timeframe of patent in Zanzibar
From filing to registration is 2 years, approximately.

Duration of patent in Zanzibar
The term of a patent is 20 years from the filing date.

Annuities of patent in Zanzibar

The patent are subject to payment of the annual maintenance fees. A grace period of six months is provided, subject to payment of surcharges.

As part of Tanzania, Zanzibar is a member of the Paris Convention. An application may contain a declaration claiming priority of one or more earlier national, regional or international applications filed by an applicant or his predecessor in title in any state party to the Paris Convention or to a convention to which Zanzibar is a party.

The required documents are:

(i) power of attorney; (ii) description; (iii) claim(s); (iv) abstract; (v) drawing(s); (vi) statement justifying that certain disclosures be disregarded; (vii) priority documents (if available at the time of filing); (ix) English translation (if available at the time of filing); and (x) application fee and any other documents, if any. The description, claim(s), abstract, drawing(s), statement justifying that certain disclosures be disregarded, priority and any other documents must be filed in triplicate (fourth copy for agent’s file).

Point to note:

The description must disclose the invention in such manner and with such details so that the invention can be established by a person skilled in the art on the basis of the specification and drawings. The specification and claims must be made on sheets of strong white paper of international size A4 (29.7 cm ×21 cm), which may be used on one side only. All sheets must be connected in such a manner that they can easily be separated and joined again. The margins to be observed are: left side 2.5; top 2; right side and bottom 2. The description and other documents (other than drawing) must be typewritten in a dark, indelible color, at least 1½ line spacing and in characters of which the capital letters are not less than 0.21 cm high. Graphic symbols and chemical and mathematical formulae may, when necessary, be written by hand or drawn, in a dark indelible color. Only minor erasures, corrections or insertions not affecting the authenticity of the text may be made. The request for grant of a patent, the description, the claims and the abstract may contain chemical or mathematical formulae. The claims may contain tables if use of tables is desirable. In all documents, including drawings, units of weight and measures must be expressed in terms of the metric system. If a different system is used, the units must also be expressed in metric system. Temperatures must be expressed in degrees Celsius. For the other physical values, the units recognized in international practice must be used, for mathematical formulae the symbols, atomic weights and molecular formulae in general use must be employed. In general, use must be made of technical terms, signs and symbols generally accepted in the field in question. If a formulae or symbols is used in the description a copy thereof, prepared in the same manner as drawings, must be furnished if the Patent Office so directs. The terminology and the signs must be consistent throughout the application. The description must contain:

• the title of the invention;
• specification of the technical field or fields to which the invention relates;
• indication of the background art which, as far as known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention, and, preferably, cite the documents reflecting such background art;
• disclosure of the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state the advantageous effects, if any, of the invention with reference to the background art;
• brief description of the figures in the drawings, if any;
• statement on the best mode known to the applicant for establishing the invention known to the inventor at the filing date or, where priority is claimed, priority date of the application. This is done by way of giving examples and where appropriate, and with reference to the drawings, if any;
• explicit indication on when it is not otherwise obvious from the description or nature of the invention, the way or ways in which the invention is capable of industrial application or of other use; and
• applications comprising the disclosure of nucleotide or amino acid sequences must also comprise a sequence listing filed in a computer readable form produced in accordance with the rules and regulations of the PCT.

The contents of the description must be presented in the order in which such contents are listed in patents regulations, unless, because of the nature of the invention, a different order affords a better understanding and a more economical presentation.

If the contents of an application for a patent or of a patent discloses an invention which requires for its performance the use of a micro-organism which is not available to the public at its date of filing, these contents are treated as disclosing the invention in a manner which is clear and complete enough for the invention to be performed by a person skilled in the art if the following conditions are satisfied:

• a culture of the micro-organism has been deposited in a culture collection not later than the date of filing the application;
• the application as filed gives such relevant information as is available to the applicant on the characteristics of the microorganism; and
• the name of the culture collection, the date when the culture was deposited and the accession number of the deposit are given in the description of the application.

The claim must be defined unambiguously, and in accordance with the description. Depending on the nature of the invention, claims may be for a product, an apparatus, a process or a use. The claims must be numbered consecutively in Arabic numerals. Claims must be written either: (i) in two parts, the first part consisting of a statement indicating those technical features of the invention which are necessary in connection with the definition of the claimed subject matter and which, in combination, appear to be part of the prior art, the second part (“the characterizing portion”), introduced by the words “characterized in that,” “characterized by, “wherein the improvement comprises”, or other words to the same effect, consisting of a statement concisely indicating those technical features which in combination with the features stated in the first part, define the subject matter for which protection is sought; or (ii) in a single statement containing a recitation of a combination of several elements or steps, or single element or step, which defines the matter for which protection is sought.

A claim must not contain, in respect of the technical features of the invention, references to the description or any drawings, for example, such references as: “as described in part ……………………………of the description, ” or ” as illustrated in figure. ……………………….of the drawings”, unless such a reference is necessary for the understanding of the claim or enhances the clarity or the conciseness of the claim. A claim also must not contain any drawing or graph. A claim may contain tables and chemical or mathematical formulas. Further, where the application contains any drawing, any technical feature mentioned in any claim may, if the intelligibility of that claim can be enhanced, include a reference sign to that drawing or to the applicable part of that drawing. Such a reference sign must be placed between square brackets or parentheses and must not be construed as limiting the claim.

Any claim which includes all the features of one or more other claims of the same category (“dependent claim” or “multiple dependent claim,” respectively) it must preferably first refer to the other claim or claims by indicating the serial number of the other claim or the serial numbers of the other claims and then state those features claimed that are additional to the features claimed in the other claim or claims. Dependent claims or multiple dependent Claims may depend on dependent claims or multiple dependent claims, multiple dependent claims may refer in the alternative or in the cumulative to the claims on which they depend. All dependent claims referring to the same other claim and all multiple dependent claims referring to the same other claims, must be grouped together in the most practical way possible.

Drawings must be submitted in three identical sets (fourth set for agent’s file). Drawings must be on sheets the usable surface area of which must not exceed 26.2 cm by 17 cm. The sheets must not contain frames round the usable or used surface. The minimum margins shall be as follows:

top ……………………………………. .2.5 cm

left side ………………………………. .2.5 cm

right side ……………………………. 1.5 cm

bottom ……………………………….. 1 .o cm

Drawings must be executed as follows:

1. without coloring in durable, black sufficiently dense and dark, uniformly thick and well defined lines and strokes to permit satisfactory reproduction;
2. cross-sections must be indicated by hatching which does not impede the clear reading of the reference signs and leading lines;
3. the scale of the drawings and the distinctness of their graphical execution must be such that a photographic reproduction with linear reduction in size to two-thirds would enable all details to be distinguished without difficulty. If, as and exception, the scale is given on a drawing it must be represented graphically;
4. all numbers, letters and reference signs appearing in the drawings must be simple and clear and brackets, circles and inverted commas must not be used in association with numbers and letters;
5. elements of the same figures must be in proportion to each other, unless a difference in proportion is indispensable for the clarity of the figure;
6. the height of the numbers and letter must not be less than 0.32 cm and for the lettering of drawings, the Latin and, where customary, the Greek alphabets must be used;
7. the same sheet of drawings may contain several figures. Where figures drawn on two or more sheets are intended to form one whole figure, the figures on the several sheets must be so arranged that the whole figure can be assembled without concealing any part of the partial figures. The different figures must be arranged without wasting space, clearly separated from one another. The different figures must be numbered consecutively in Arabic numerals independently of the numbering of the sheets;
8. reference signs not mentioned in the description or claims must not appear in the drawings, and vice versa.. The same features, when denoted by reference signs, must, throughout the application, be denoted by the same signs;
9. the drawings must not contain textual matter, except, when required for the understanding of the drawings. a single word or words such as “water”, “steam”, “open”, “closed”, “section on AA” and in the case of electric circuits and block schematic or flow sheet diagrams, short catchwords; and
10. the sheets of the drawings must be numbered in accordance with patent regulation 14(9).

Abstract must be filed in three copies (fourth copy for agent’s file), in English language. The abstract must commence with the title of the invention. The abstract must contain a concise summary of the matter contained in the description of the invention. The summary must indicate the technical field to which the invention belongs and be drafted in a manner which allows a clear understanding of the technical problem to which the invention relates the gist of the solution to that problem through the invention and the principal use or uses of the invention.

Where appropriate, the abstract must also contain the chemical formula which, among those contained in the specification, best characterizes the invention. It must not contain statements on the alleged merits or value of the invention or on its speculative application. The abstract must normally not contain more than 150 words. If the description of the invention contains any drawings, the applicant must indicate the figure or, exceptionally, the figures of the drawings which he suggests should accompany the abstract when published. The Patents Office may decide to publish one or more other figures if it considers that they best characterize the invention. The abstract must be such that it constitutes an efficient instrument for the purposes of searching in a particulars technical field, in particular by making it possible to assess whether there is a need to consult the description of the invention itself. At the end of the abstract the number of the figure in the drawings which best characterizes the invention must be indicated. The abstract must serve for the purpose of extracting technical information only. The abstract may not in particular serve for the interpretation of the extent of the protection claimed, and may not be taken into consideration when determining the state of the art.

Convention priority must be made at the time of filing the application and must generally indicate:

1. The date(s) of the earlier application(s);
2. The number(s) of the earlier application(s). If at the time of filing the number of the earlier application is not known, that number shall be furnished within three months from the date of filing of the application for a patent;
3. The symbol of the International Patent Classification which has been allocated to the priority application(s); Where a symbol of the International Patent Classification has not been allocated or had not yet been allocated at the time of filing the declaration, the applicant must state this fact and must communicate the symbol as soon as it has been allocated;
4. The state(s) in which the earlier(s) application(s) was filed or, where the earlier application is a regional or an international application, the state (s) for which it was designated; and
5. Where the earlier application is a regional or an international application, the office with which it was filed.

If the Patent Office requests for a certified copy of the earlier application, the copy must be furnished within one month from the date of request. Where an earlier application is not in English language, the applicant must, within three months from the date of request by the Patent Office, furnish English translation of the earlier application. Unless it is indicated otherwise by the Patent Office, the earlier application and any translation thereof must be filed in one copy. If the application is made in the name of someone other than the applicant in the basic case, the evidence of an assignment of priority rights is required. Under Tanzanian patent law, internal priority may be claimed from an earlier application for utility model. If an applicant has filed an earlier utility model application relating to the same subject matter, he may on filing a patent application claim the filing date and priority date of the earlier utility model application provided that such claim is made before the notification of rejection of the application for utility model and after payment of prescribed fees.

Allows for a single patent application to be effective across its designated members states

The African Regional Intellectual Property Organization (ARIPO) is an intergovernmental organization for cooperation in Intellectual Property matters, founded in 1976 with the Lusaka Agreement. Its main objective is the development and protection of Intellectual Property rights in its member-states. ARIPO has 4 working protocols, one of which is the Harare Protocol, which regulates patent and industrial design applications.

ARIPO patent applications are formally and substantively reviewed by ARIPO examiners and are granted and effective in the designated member-states with the legal enforceability of national law. While the term of patents is 20 years, Lesotho, Malawi, Namibia, Tanzania, Uganda and Zambia have shorter terms.

To patent an invention, an applicant must complete and file a patent application with the  Patent and Trademark Office (BRELA) . BRELA examines applications, and administers and keeps a record patents and trademarks it has issued.

Before filing for a patent, the applicant should conduct a preliminary patent search to determine whether “prior art” — similar developments related to the invention — will disqualify the claim. Because patent applications are complex, the assistance of a patent attorney may be necessary.

In the Tanzania there are five elements of patent eligibility.:

1. In order for your invention to qualify for patent eligibility, it must cover subject matter that Congress has defined as patentable. patentable subject matter means any “new and useful” process, machine, manufacture or composition of matter. Machines or processes are patentable subject matter, but the laws of nature are not. So, you can patent a machine for sorting packages, but you can’t get a patent for sunlight.
2. The invention must have a “utility,” or in other words, be useful. Note that this requirement is only for utility patents (see next question, below).
3. The invention must be “novel,” or new.
4. The invention must be “non-obvious,” meaning its use or function can’t be something that is simply the next logical step of an already patented invention.
5. The invention must not have been “disclosed” to the public prior to the application for the patent. For example, if you’ve written an article describing the invention before you apply for the patent, the registry may deny the application because you’ve already disclosed the patent and therefore it’s public knowledge.

There are three general categories of patents. They are:

1. Utility patents
2. Design patents
3. Plant patents

Utility patents are what most people associated with patents and are the type most frequently granted. Utility patents cover:

• Processes – business processes, computer software, engineering methods, etc.
• Machines – anything that performs a function
• Articles of manufacture – a catchall category that covers anything manufactured
• Composition of matter – pharmaceuticals, chemical compounds, artificial genetic creations

A utility patent is the most powerful form of protection, but also the most difficult to attain.

Think of the patent process as stepping through three doors. The first is the largest door and the easiest to step through, the second is a smaller door that’s more difficult, and the third is a tiny door that is extremely difficult to squeeze through.

In this analogy, door #1 is having patentable subject matter; door #2 is novelty (or “newness” of the invention); and door #3 is “non-obviousness” (whether the invention is enough of a departure from previously awarded patents). If your invention can fit through each door, the patent will be granted.

Patentable subject matter is any new and useful process, machine, article of manufacture or composition of matter. Following is a non-exhaustive sample of patentable subject matter:

• Business processes
• Machines and electronics
• Fabrics and fabric designs
• Sporting equipment
• Medicines
• Computer hardware
• Computer software programs that have a “useful, concrete and tangible” result
• Man-made bacteria (by contrast, naturally occurring organisms are not patentable)
• Human genes that are identified and isolated are patentable because they are not naturally occurring when isolated.
• Business methods (e.g., FedEx’s method of delivering packages overnight)

To be novel, an invention must not be known or used by anyone else in Tanzania and must not be patented or described in a printed publication in this or a foreign country before the date of the patent application. Basically, if there’s another invention out there before your patent application that incorporates all the same elements as your invention, then your invention is not novel and the patent will be denied.

The non-obviousness test is the most difficult obstacle in the patent review process. The question the REGISTRY asks is: knowing what’s out there, is the invention an obvious step? If the invention is simply a combination of several different prior patents, it may be deemed an obvious next step, and therefore denied.

The REGISTRY will look at “prior art” (a term meaning the state of technological knowledge before the patent application to determine whether the invention is “obvious to a person having ordinary skill in the art.” There must be an inventive leap. In other words, the invention must have a distance between it and the prior art.

In addition to examining prior art, the REGISTRY also looks to secondary considerations to shed light on the level of obviousness at the time of the invention. For example, if your invention is a commercial success, that may indicate that there was nothing else in the market like your invention and that others failed to achieve the same result. Or if there was a long period of time between the relevant prior art and the patent at issue, it may indicate that the patent is not obvious, otherwise there would have been other similar products that tried to fill the void.

Non-obviousness is the most hotly contested portion of the patent review process because it’s the most subjective. One patent examiner may look at an invention and think it’s merely the next logical step up from prior art whereas another examiner may look at the same prior art and think that the invention shows an inventive leap and is therefore not obvious.

All utility patents must demonstrate that they are useful now, not just potentially useful, or at least have a sound theoretical basis for being useful. For example, you may be issued a patent for a process that speeds a manufacturing line based on past processes that have proven successful, but may not be awarded a patent for a drug the effectiveness of which has no scientific backing. Remember that only utility patent applicants are required to prove the usefulness of the invention.

Application Documents

Non-provisional patent applications include the following documents:

Specification

The specification is a full, clear, concise, and exact written description of the invention and the process of creating and using it. The description should enable a skilled person in the field of the invention to make and use the invention without the need to conduct extensive experimentation. A specification should not be vague or keep certain aspects of the invention a secret. If the invention improves upon an existing invention, the specification should only describe the specific improvement to the invention, unless a certain aspect of the previous invention relates to the improvement.

The specification section includes the following parts:

• Title of the Invention: The title of the invention should be short, specific, and accurate.
• Background of the Invention: This section should include a description of the field in which the invention is part of and references to prior inventions and any problems with the other inventions.
• Brief Summary of the Invention: This summary should include a descriptive overview of the invention, advantages of the invention, and a description of how the invention solves a previous problem.
• Brief Description of the Several Views of the Drawing: This section should list the figures by number and should include a very brief description of each. Common terms used to describe the view of the drawing include perspective, sectional, cut-away, detail, exploded, and elevation.
• Detailed Description of the Invention: The detailed description should be concise and complete, and should describe how to use and distinguish it from other inventions. The “best mode” of how to create the invention must be part of the description. A description of each of the drawings is also included in this section.

Claim or Claims

The claim or claims section identifies the scope of protection the patent will receive. Ultimately, the claim or claims will define a patent holder’s right to exclude others from using, making, or selling the item. Therefore, the wording in the claim or claims should be distinct and clear enough to define the extent of protection.

Drawings

An application must include drawings if they are necessary to explain the invention. Drawings will provide a detailed understanding of the invention and must illustrate each feature of the invention as specified in the claims. The failure to include drawings may result in an incomplete application.

Filing Patent Applications in Tanzania

Communicating with Patent Examiners

After the REGISTRY receives a patent application, an examiner will evaluate the application. The examiner will determine whether the invention is patentable and whether the application uses the proper format and language. In most cases, a patent application is not approved based on its initial filings. More commonly, the patent examiner and the applicant will engage in written and verbal communication about the scope of the patent. If the examiner rejects the patent application, the applicant can amend and resubmit the application. A final rejection, however, will limit the applicants reply. The process takes between one to three years

A: If two people share ideas to form the invention, they are joint inventors. The patent will issue to them jointly, provided the patent application is otherwise proper. If one person provided all of the ideas of the invention, and the other only followed instruction in making it, the person who provided all of the ideas is the sole inventor.

Assigning Your Invention to Another Entity

In some situations, you may choose to “assign” your rights in the patent to another party — giving over all rights to the invention — for a lump sum payment. A patent application also may be assigned to another company or individual, giving the recipient full control of the invention once it receives full patent protection.

Licensing: The Most Common Way to Profit From Your Patent

The license is most often in the form of a contract that gives the licensee the right to make, use, and sell the invention in exchange for giving the inventor a license fee and royalty payments. Royalty payments are normally calculated as a percentage of the net revenues from the invention, or they can be payments for each unit sold.

When an inventor licenses his invention to another party, he generally gives the other party the authorization to utilize and exploit the invention. The precise terms of the license are contained in language such as “Inventor X gives Company Y a license to make, use and sell invention Z in exchange for royalty payments set out below.”

Use Nondisclosure Agreements when Possible

Many inventions and ideas are simply not patentable, so the best course of action is to use NDAs when dealing with potential customers. NDAs also go by other names, such as disclosure agreements or confidentiality agreements. Upon signing a NDA, if a customer breaks any provision of the NDA, you can sue them to recover any damages caused by their breach of the agreement.

The critical portions of a NDA set forth:

1. Exactly what is and isn’t confidential:NDAs define what is considered confidential and may include a section on what is considered a trade secret. NDAs also expressly exclude certain items from the definition of confidential so that parties aren’t burdened with unnecessary obligations.
2. Obligations each party has to keep the information a secret:it isn’t enough to simply say that something is to be kept confidential. NDAs specify the standard of care in keeping the item secret, and list out the obligations that each party must fulfill in order to maintain the confidentiality of the underlying information. Common examples of these duties include how information will be handled with third parties who aren’t a part of the agreement, as well as setting forth how information should be handled and stored.
3. How long the obligations last:the party that wants the information to be protected will want a longer period of time, while the party encumbered by the NDA will want a shorter period of time. This is often one of the largest points of contention between parties and is usually resolved in negotiations. Common time periods within the are anywhere from 2 to 5 years. As an inventor, how flexible you can be is determined by how long you think it will take others to figure out your invention once people have access to it. If you think that others will begin duplicating your invention quickly, then a longer period of protection may not be necessary.
4. What happens if one party breaches the agreement:pay extremely close attention to what the agreement says happens in the event that one party breaches the agreement. Consider whether arbitration or alternative forms of resolution make sense, and whether the court of jurisdiction specified in the agreement makes sense for you. Large companies will often try to put in terms that are favorable to them, so always consider the worst case scenario and decide if it’s ok for you to be forced into court across the country years down the road.

The general rule is that, in the absence of an agreement to the contrary, an employer is entitled to a nonexclusive license to use an invention devised by an employee while he or she was working for the employer.

Patents are made up of “claims,” which are different elements that make the invention unique. “Prior art” is a term that refers to any document, or article that was available to public before the date of priority of the application.

• Literal Infringement. If you take all of the claims of a prior art and add elements, you are still infringing. On the other hand, if you take some, or even most, elements of a prior art, then you are not infringing.
• Doctrine of Equivalents. Courts found that limiting infringement to only literal infringement was very restrictive (and often unfair) and came up with this doctrine to combat substantially similar inventions. The basic rule is that patent holders can claim infringement if:
  • the accused device performs substantially the same function,
  • in substantially the same way,
  • to obtain the same result.

Courts prevent patent owners from going back and claiming protection for claims that they had to give up during the application stage. If the patent owner can prove, however, that the amendment was made for a reason other than avoiding prior art and it was not meant to be surrendered, then the owner can a still argue infringement under the Doctrine of Equivalents.

After a patent owner brings an infringement case, the accused infringer has a number of defenses. They can argue that the patent was “disclosed” over a year prior to the patent application, that the accused device doesn’t actually infringe, or that the patent is invalid.

The most common defense to a patent infringement lawsuit is that the patent was wrongly approved by the REGISTRY and is therefore invalid. Accused infringers will attack each of the 5 requirements for a patent (patentable subject matter, utility, novelty, non-obviousness, and prior disclosure).

If a patent is determined by a court to be invalid, the patent holder loses all exclusive rights to the invention.

A patent is basically a government awarded monopoly for an invention. The patent grants what’s known as a negative right (or right to exclude): no one else can create, use, sell, or import your invention for any purpose without your consent.

If anyone violates the patent, you can bring an enforcement action and a court can issue an injunction preventing the other party from continuing their actions and award damages.

1. Checklist for Utility Patents
2. Is the utility invention:

• a process or method?
• a machine?
• an article of manufacture?
• a composition of matter? or
• an improvement of an invention that fits within one of the first four categories?

1. Is the utility invention:

• useful? (even some trivial usefulness satisfies the utility requirement)
• novel? (that is, different from all previous inventions in some important way)
• nonobvious? (is it a surprising and significant development to somebody who understands the technical field of the invention?)

1. Checklist for Design Patents
2. Is the design invention:

• novel? (that is, different from all previous inventions in some important way)
• nonobvious? (is it a surprising and significant development to somebody who understands the technical field of the invention?)
• nonfunctional? (as distinguished from a utility patent)