How A Patent Lawyer Can Protect Your Invention

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How A Patent Lawyer Can Protect Your InventionA good patent lawyer will be able to help you determine whether your invention can be protected by registration with the U.S. Patent & Trademark Office (USPTO). As part of the process, you’ll learn the type of patent you’ll want to get to for your intellectual property.

What Is A U.S. Patent?

If the USPTO ultimately determines your invention a “new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof,” then the federal government will grant you the exclusive right to make, use or sell your intellectual property for 14 to 20 years, depending upon the type of patent. If others want to legally use your invention during that time, they have to pay you for the privilege (license) of doing so.

What About A U.S. Provisional Patent?

Like a unicorn, that really doesn’t exist. However, there are some circumstances justifying the need to file a provisional patent application (PPA) for your invention with the USPTO first, especially as the U.S. has now adopted a “First to File” (and no longer a “First to Invent”) patent system, in order to establish priority.

Note that if one files a PPA, it must be “converted” to a regular, non-provisional application within 12 months of filing the PPA, else the PPA is automatically deemed abandoned, i.e. you’ll lose the benefits of filing the provisional app and be statutorily barred from filing the non-provisional application thereafter.

Nondisclosure Agreement: Oculus Rift and Virtual Reality

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oculus rift

Did Oculus Rift founder Palmer Luckey violate a nondisclosure agreement?

A federal judge in California is letting a civil lawsuit proceed against Oculus founder Palmer Luckey for alleged breach of a nondisclosure agreement (NDA).

Total Recall Technologies (a Hawaiian partnership) claims that Luckey agreed to build 3D virtual reality glasses for the company pursuant to a written “non-disclosure, exclusivity, and payments agreement.”

According to Total Recall, Palmer Luckey’s work was to be performed based upon the company’s pending patent for a “[s]ystem and method for creating a navigable, three-dimensional virtual reality environment having ultra-wide field of view.”

However, the company alleges that Luckey breached this confidentiality agreement and launched a Kickstarter crowdfunding campaign to build “a highly immersive, wide field of view, stereoscopic headmounted display at an affordable price – a device that Luckey named the Oculus Rift.”

Whether there was an enforceable nondisclosure agreement between Total Recall and Luckey that was breached remains to be seen if there’s no settlement reached before trial.

Millions of dollars are at stake. Total Recall is seeking compensatory, exemplary, and punitive damages in addition to other remedies.

There are two important lessons you can learn from this breach of nondisclosure agreement lawsuit.

  1. Whether you’re paying a hardware developer or a software developer, a professionally written contract (employment contract or independent contractor agreement) that contains confidentiality provisions is important to protect your intellectual property rights.
  2. Any contract (including a confidentiality agreement) is only as good as the parties who sign it. If both parties are honest and acting in good faith, it’s unlikely you’ll end up in an expensive courtroom fight over whether misconduct occurred during performance of the agreement.

See Total Recall Technologies v. Palmer Luckey et al. (N.D. Cal. Docket No. 15-cv-02281)

Protecting Your Intellectual Property With Technology Contracts

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Are you using technology contracts to protect your intellectual property?

Today’s ecommerce heavily depends upon intellectual property (IP) primarily consisting of patents, trademarks, and copyrights.

Whether you’re buying, selling, or licensing technology, it makes sense to protect your IP rights with a professionally prepared technology contract that’s designed to achieve your goals.

Internet Lawyer Mike Young helps clients get what they want by drafting technology contracts customized for their unique needs. Here are few examples of the types of tech agreements he can prepare for you.

Software Licensing Agreements

Whether you need an end user license agreement (EULA) for your software or a software distributor license, Mike can create one designed to protect your IP and provide you with legal remedies in case someone attempts to steal your intellectual property or a licensee quits paying for it.

Note that your tech license needs will be different depending upon how your software is being used. For example, the terms of a EULA for a mobile app will be different from those of a browser-based software as a service (Saas).

Work-for-Hire Tech Development Contracts

It’s common these days for software and other technology to be created for your business by others on an independent contractor basis.

When doing so, it’s important to put into place at the beginning a binding contract that ensures you own the intellectual property you’re paying to have created. This can included a written assignment of IP rights from your independent contractor.

The failure to put the right software development contract or other tech agreement in place beforehand can be costly after the fact.

For example, if you pay for a mobile app to be developed but don’t secure the IP rights as part of the deal, you may find that your app developer is demanding a cut of your app revenues or selling a competing version of the app you paid the developer to create for you.

It’s also important to include a comprehensive scope of work with technical specifications so that it’s clear exactly what you’re paying to be created for you. Incorporating this statement of work with tech specs into your outsourcing contract creates a blueprint that’s easy for you and your developer to follow, including milestones, payment schedules, and other key terms.

Tech Consulting and Maintenance Agreements

Information Technology (IT) consulting contracts and tech maintenance agreements are frequently needed in order to successfully grow and operate a business.

Whether you’re an IT consultant, a tech maintenance provider, or run a business that pays for such services, it’s important to put into place a professionally prepared contract that protects your rights and helps reduce the risk of misunderstandings that lead to lawsuits.

Tech Confidentiality – Nondisclosure Agreements (NDAs)

Whether you’re dealing with independent contractors, employees, prospective software distributors, or even potential buyers of your business, it’s important to prevent IP theft by using a confidentiality agreement that’s designed to reduce the risk your intellectual property will be misused.

A good written NDA can make it clear to those that you do business with that you’re serious about protecting your IP while at the same time including provisions that make it unlikely the party you’re dealing with will misappropriate your technology.

How to get Internet Lawyer Mike Young to help you protect your technology

Your first step in getting help from Mike is to set up a confidential telephone consultation with him using the law firm’s online booking system.

11 Provisions for B2B Contracts to Protect Your Business Online

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b2b contracts

Do your B2B contracts contains these provisions?

When your Internet business lawyer is drafting business-to-business (B2B) ecommerce agreements and technology contracts, each deal will have unique clauses discussing such things as the product/service sold, and terms of payment.

However, there will be common provisions you will see repeatedly in your contracts because they’re designed to make the deal easier and/or protect you from legal liability if things go wrong during performance of the contract.

Here are 11 topics that are frequently covered in ecommerce contracts and tech agreements.

1. Multiple Counterparts.

Because the parties to ecommerce B2B contracts are often located in different parts of the world, econtracts can authorize different copies of the same agreement to be signed by the parties. The clause will typically permit electronic signatures.

2. Independent Contractor Status.

To avoid the risk of being held liable for employment taxes, workers compensation, and unemployment compensation, a clause is often used that makes it clear that any services performed by a party is on an independent contractor (freelancer) basis rather than as an employee.

3. Confidentiality.

Because of the competitive nature of ecommerce and technology, Internet business owners will usually insist on a provision where the parties agree to keep the terms of the agreement confidential, i.e. not disclose trade secrets, details of the contract, and other information that could be used by competitors.

4. Non-Disparagement.

With it so easy to smear a business in social media these days, entrepreneurs often insist that their business-to-business contracts include provisions that prevent negative statements being made by any party (or their employees) during and after performance of the agreement.

5. Disclaimers.

To limit potential liability, disclaimers are typically included in ecommerce and technology agreements to prevent one party from making claims for damages beyond the scope of risk the other party is willing to assume. For example, it’s common for an ecommerce entrepreneur to disclaim any warranty that a particular product covered by the agreement (e.g. software) is fit for a particular purpose.

6. Liquidated Damages.

Internet entrepreneurs frequently include paragraphs in their B2B contracts that provide for a certain amount of damages in the event that there is a breach of the agreement during performance. Such clauses will encourage the other party to perform to avoid paying such damages.

7. Intellectual Property Ownership.

It’s common to include paragraphs that address which parties own what intellectual property (IP), such as ownership of copyrights, trademarks, and patents. This is important to cover any IP sold/licensed as well as ownership of IP created under a services agreement.

8. Applicable Law.

Because online businesses are frequently headquartered in different cities, states/provinces, and even countries, it is important to include a contract clause that decides which law governs any disputes between the parties.

9. Dispute Resolution.

With an exception for masochistic entrepreneurs who enjoy spending their time in court and money on trial lawyers, most entrepreneurs want to handle any serious disputes without a lawsuit. This means that the agreement will usually include one or more paragraphs that provide for alternative dispute resolution through mediation and/or arbitration.

10. Indemnification and Defense.

As an online business owner, if the other party to an ecommerce contract or technology agreement does something really stupid that results in your becoming a defendant in a lawsuit, you’re probably going to want to include contract clauses that require the other party to indemnify and defend you in the lawsuit.

11. Assignments and Subcontracting.

Most ecommerce B2B contracts and technology agreements will address situations where a party wants to assign or subcontract out some or all of its performance responsibilities. In some cases, there is a complete prohibition on delegating out the work to others. In others, B2B contract provisions can permit subcontracting or assignment under limited circumstances, such as with prior written consent of the other party.

Now, naturally, there are other contract clauses that your Internet lawyer will use to help you make a business deal go smoothly and protect you from liability in the process. However, the 11 areas discussed above are very common topics that you will want to consider addressing in most of your B2B technology and ecommerce business contracts.

To get help with your B2B contracts, set up a telephone consultation with Internet Lawyer Mike Young.

Confidentiality Agreements: How to Use Them in Your Online Business

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confidentiality agreements

Are you using confidentiality agreements to protect your business?

There are many online activities where it is a good idea to get a signed confidentiality agreement in place. These include:

  • outsourcing work to a bookkeeper
  • software development
  • ghost writing
  • negotiating the purchase or sale of an Internet business

You will want to protect your trade secrets and other intellectual property at a minimum.

One of the important things to remember about confidentiality agreements is that they are designed to be a reminder to the parties who sign it. Equally important is to recognize that a dishonest person will sign a confidentiality agreement in a heartbeat without thinking twice about violating it.

In other words, choose who you do business with wisely.

“Three can keep a secret, if two of them are dead.” – Benjamin Franklin

Important Confidentiality Agreement Provisions

The scope of your confidentiality agreement can be custom-tailored by your Internet lawyer to meet your business needs.

Key issues to include in your agreement are…

1. What information must be kept confidential?
2. What information should not be treated as confidential?
3. Should the relationship between the parties be kept confidential?
4. Who must sign the confidentiality agreement?
5. Should copies of the confidentiality agreement be signed by employees and others who have access to the information?
6. What types of legal and equitable remedies do you want available if the confidentiality agreement is breached?
7. How will your confidential information be handled once your relationship with the other party terminates?

Is there a difference between a confidentiality agreement and a nondisclosure agreement (NDA)?

As a practical matter these days, both confidentiality agreement and non-disclosure agreement are used interchangeably to describe the same type of legal document. No matter which way the contract is titled, the purpose remains the same.

If you have business information you need to protect, set up a telephone consultation with Internet Lawyer Mike Young to discuss the creation of a confidentiality agreement that’s right for you.