What should I consider when talking to others before protecting my intellectual property?


So you’ve got a great new product and now you want to move to the next stage.

Whether your product involves a great new brand name, a technical innovation or a brilliant new design, moving to the next stage inevitably involves bringing in outside help or talking to people outside your organisation. This may be in the form of an investor, a commercial partner, another company with whom you’d like to develop your product or a potential customer.

What do all of these entities have in common? They’re going to want to know about your product and what makes it special.

But what if you’re not quite ready to move forward on protecting your idea? This could be because you don’t have the funds yet or because you want to develop your idea further first, for example.

Well, there are steps you can take to protect your idea when speaking to others outside of your organisation before getting any registered intellectual property (IP) rights.

The risks

If you start openly talking to people about your business or new idea before getting any protection for your IP, you risk not being able to get any protection for at least some of your IP in the future. This could have a multitude of knock-on effects for your business.

Let’s say you’ve developed a new product that includes some great new technological advancements. If you disclose how your product works, perhaps to an investor when looking for funding to take the new product to market, then you probably won’t then be able to get patent protection for the new technological advancements in most countries around the world.

Some countries have a grace period for filing patent applications after disclosing your idea. For example, there is a 12 month grace period in the US, Canada and Australia and a 6 month grace period in Japan. In many countries and region, such as the UK, there is no such grace period. It is therefore generally not worth risking disclosing how your invention works because you could lose protection throughout Europe.

Similar grace periods exist for designs too, the US and Europe both providing a 12 month grace period for filing registered designs after disclosing the idea. However, ensuring that you monitor the date of first disclosure and file within the grace period is difficult.

Registered trade marks effectively work on a first-to-file system. Let’s say you come up with an exciting new brand name which you are hoping to obtain a registered trade mark for further down the line. If someone else goes ahead and registers that name you could be prevented from using it even if you came up with the name first.

Preventing those risks

So what can you do? There a number of things you can do in order to help preserve the IP in your idea or product.

The first of these is getting the other person to sign a Non-Disclosure Agreement (NDA). In short, by signing such an agreement, the other person or organisation is agreeing not to tell anyone else about your idea or to use the product or idea you’ve told them about. This means you can talk freely with them.

Whilst this, unfortunately, does not necessarily mean that they will keep your idea to themselves (or won’t use it themselves), what it does mean is that you may be able to take steps against them if they did.

NDAs are quite common and, in general, investors and companies probably won’t be surprised by you asking them to sign one. However, in some circles, for example in the Venture Capital (VC) community, they can be seen as a drain on time and VCs may refuse to sign them.

So what if they won’t sign a non-disclosure agreement? This can be tricky. If you decide that you still want them on board and are willing to take the risk, there are still some things you can do to help safeguard the IP in your idea or product.

Firstly, you can still make it clear that the information you’re giving them (i.e. your idea or details of your product) is confidential. Ideally, this would be in writing. For example, marking any slides or documents as ‘confidential’ would be a good start.

Secondly, you can limit the information you that give to them. This is generally a good idea whether you have an NDA in place or not.

For example, whilst you might need to provide an investor with an overview of your idea and its many advantages, you may not need to set out in detail how your new product works and how they might make their own one, without your help. Holding back the key information about how the idea works could mean that you can then obtain patent protection for the idea.

Thirdly, register some IP rights. It’s always best to have your ducks in a row. File for a patent, and register a design or trade mark before you need to start discussing your new business venture with others. This is always the safest way to proceed.

In summary, it’s really important to take as many steps as possible to safeguard your idea. Whilst you may need to talk to that important investor about your idea or product before you are able to register any IP rights, there is a chance that doing so could prevent you from being able to obtain certain protection in the future. At the very least make sure you have some safeguards in place, but ideally get your IP rights registered first and talk later.

If the above has come too late and someone has stolen your idea or told others about it (or if you yourself have already told others about it), all may not be lost.

Answer last updated: 17 Jan 2018