Author: Eric Waltmire

Each patent application generally must name the inventor(s) of the subject matter of the patent application. Therefore, one way to find your competitor’s patents or patent applications is to know the inventor name(s) on the patent or patent application.

But, unlike inventors, patent owners do not necessarily have to be identified on or in a patent application. So searching for patents or patent applications by inventor name may give you a better chance of finding relevant results than does searching for a patent owner or assignee.

The challenge is to identify the name or names of the possible inventor(s) at a competitor, assuming that the competitor is a business entity, such as a corporation or LLC. Below are a few places to look.

Secretary of State Corporate Records

It is possible that the inventor is the owner or officer of the company, particularly if the company is small or medium sized. To discover the officers of a company, you can look at the corporate filing with the secretary of state (or equivalent) in the state where the company is incorporated. Corporate officers or members/managers of an LLC may be named in the articles of incorporation or formation or in annual reports filed by the corporation or LLC. Many times, these documents may be downloaded from the secretary of state website for free or for a small fee.

Trademark Filings at the USPTO

If the company has filed to register a trademark with the United States Patent and Trademark Office (USPTO), it is possible that an officer has signed documents filed in connection with that application. Therefore, you can search the USPTO for your competitor’s trademark applications or registrations. Then you can look at the file history of those applications/registrations to see who signed the relevant filed documents. Sometimes this doesn’t work because an attorney can sign the required documents on behalf of the applicant. So it could be that no officers are identified in the file history of a trademark application.

Websites

You can check the competitor’s website to see if it identifies persons that could be inventors.

These are some ways to identify possible inventors. For more ways to find competitor patents read my prior post on this topic: How do I find my competitor’s patents or patent applications?

You want to pitch your invention to a company. Sure, its possible they won’t sign your Nondisclosure Agreement (NDA) because they want to steal your invention. But, how could they want to steal your invention if they know little or nothing about it?

Even if they know a little about the general subject area and are interested in learning more, there may be a less nefarious reason they won’t sign the NDA. And that reason arises from the old saying “the left hand doesn’t know what the right hand is doing.”

If you approach a larger company, the person or department you are talking to might not know what another person or department in the company is doing or has done in a particular technology space.

The left-hand-right-hand-saying above is generally a criticism (except in the biblical sense), but its not necessarily that the corporation is disorganized. It may simply be that the corporation does not want to deal with the administrative hassle of surveying the whole company every time an invention is submitted to determine whether someone or some part within the company is already working on this invention or has in the past.

Some companies will require that you have a patent application filed or a patent issued before they will talk to you. Why should the company take on the surveying hassle, particularly when they don’t even know enough about your idea to know whether they will like it? Some won’t and its not necessarily because they want to steal your idea. It is because they want to protect themselves from you accusing them of stealing the invention when they actually had it before they talked to you or received it independent of you.

Consider the case of Penalty Kick Management v. Coca-Cola Company, 318 F.3d 1284 (11th Cir. 2003). Penalty Kick Management (PKM) developed a beverage label marketing and production process known as “Magic Windows.” Magic Windows consisted of “a scrambled message on the inside of a beverage container label which could be decoded and read only after the beverage container was emptied. The message would be read through a colored filter printed on a label on the opposite side of the container, directly across from the coded message.”

PKM wanted to license Magic Windows to Coca-Cola. The parties entered into a Non-Disclosure Agreement and PKM disclosed Magic Windows to Coca-Cola. Coca-Cola proposed to pay PKM $1 million plus a per label royalty for an exclusive global license. But, Coca-Cola did not enter into a license with PKM because Coca-Cola undertook an intellectual property review (a patent search) of the Magic Windows invention and determined that the Magic Windows invention was in the public domain.

Coca-Cola subsequently used the label in an Argentinian marketing promotion. And PKM sued for breach of the NDA, among other things.

However, Coca-Cola was able to show that in the same month it was talking to PKM, it asked another company, BrightHouse, to create a promotion for the upcoming 1996 NFL season. There was no indication that Coca-Cola gave Brighthouse PKM’s information. One of the ideas that BrightHouse subsequently presented was a Magic-Windows-like concept. Therefore, Coca-Cola received the invention independently from Brighthouse. Later, it received a magic-windows-like concept from ITW, Coca-Cola’s regular label printer, without the use of any of PKM’s information.

The NDA excluded information that was (1) “is rightfully received from a third party” or (2) Coca-Cola could “establish was subsequently developed independently by [Coca-Cola or its subsidiaries or affiliates] independently of any disclosure” by PKM, or (3) in the public domain. The court concluded that all three of these exceptions applied so that the NDA did not cover PKM’s Magic Window invention.

One can see how PKM–from the outside in the beginning–might think that Coca-Cola stole PKM’s invention. And companies that refuse to sign an NDA might simply not want to deal with such claims.

“If the orally disclosed confidential information is important, then the disclosing party probably should confirm it in writing to protect itself from the hell of trying to prove a solely oral disclosure.”

Nondisclosure Agreements (NDAs) sometimes specify that the confidentiality obligations cover disclosures in any form, whether that be oral or written. On one level this make some sense. Why should it matter how I disclose it to you? If its confidential, you need to keep it secret.

However, practically, enforcing or defending an alleged breach of an NDA in connection with a solely oral disclosure can be difficult and expensive. Therefore, solely oral disclosures may be completely excluded from NDA coverage. However, it is more common to allow coverage of oral disclosures, but only if they are confirmed in writing to the receiving party within a certain amount of time after the oral disclosure. For example an NDA may provide:

“For an oral disclosure to be within the scope of the NDA, it must be designated confidential at the time of disclosure and followed by a written memorandum to the receiving party within twenty days of the oral disclosure clearly providing notice of what specific information was confidential.”

Why should coverage for oral disclosures be limited in this way?

Receiving Party’s Concerns

The receiving party should want the disclosing party to clearly explain what is confidential in writing. Memories are feeble. Can you remember exactly what was said in a meeting one year ago? Will everyone agree with your memory of what happened, particularly if there are financial incentives for the other party to remember something else?

The cost of defending disputes involving oral disclosures is likely to be high. Each person who was there when the oral disclosure occurred will likely have to be deposed and questioned about what happened. Such factual disputes will not be resolved quickly. Instead of all that, why not just create a written document which explains what was disclosed?

You might ask: Can’t we just rely on someone’s meeting notes? If they are not circulated to the other side close after the time of disclosure, the other side may question when they were created and whether they are accurate.

The requirement that the oral disclosures be documented and sent to the other side quickly, is likely to prompt early identification and, possibly, resolution of disagreements regarding what was disclosed. It allows the receiving party the opportunity to object that the written memorialization of the oral disclosure is inaccurate. Therefore, the receiving party should review such confirmatory memos closely to ensure they accurately reflect what was disclosed orally.

Allowing an NDA to cover solely oral disclosures increases the chance of disputes regarding what was disclosed. It also is likely to drive up the cost of defending a claim of NDA breach.

Disclosing Party’s Concerns

Doesn’t the disclosing party want to avoid providing limitations on what oral disclosures will be covered by an NDA? In theory, yes. But practically proving breach of an NDA based on an oral disclosure will probably be expensive and difficult.

If there were only two people in the room when the disclosure occurred, you and the other party. It will be your word against his or her. The classic he said vs. she said. And unless you are able to show some defect in the other party’s credibility related to the NDA, you will likely loose because you have the burden to show a breach.

If there were multiple people in the room and you get a lot of agreement from them on what happened, then you might have a better chance. However, you are still going to spend a lot of money in deposing and gathering evidence from each of them to prove your case.

Therefore, if the orally disclosed confidential information is important, then the disclosing party probably should confirm it in writing to protect itself from the hell of trying to prove a solely oral disclosure.

Couldn’t we keep solely oral disclosures covered by the NDA as a fall back and just plan to never rely on it? Yes, this might work if the other side will agree (i.e. they didn’t read this post) and you are only going to be the disclosing party and not the receiving party–that is, if the NDA is not a Mutual NDA.

Conclusion

Limiting solely oral disclosures from coverage by an NDA is generally beneficial to the receiving party. This is riskier for the disclosing party, but documenting confidential disclosures in writing is likely to help the disclosing party avoid disputes about what was disclosed and protect its confidential information.

The US Government proposed, and the Apple v. Samsung trial court adopted, a four factor test to determine the “article of manufacture” for calculating total profit damages for design patent infringement. But, Professor Sarah Burstein says the four factor approach “is built on a legally and logically flawed foundation and … [the] proposed test–like any other multi-factor, factual inquiry–will increase the cost and complexity of design patent litigation without being likely to produce more just or more predictable outcomes.”

Instead, Burstein proposes an alternative method of determining the relevant article in her paper titled, The “Article of Manufacture” Today. There she makes the case that courts should adopt a historical definition of “article of manufacture.” After reviewing the history of the term she concludes:

…for a design patent claiming a design for surface ornamentation, the relevant article should be deemed to be whatever article the design was printed, painted, cast, or otherwise placed on or worked into. For a design patent that claims a design for a configuration or a combination of both configuration and surface ornamentation, the relevant article should be deemed to be the article whose shape is dictated by the claimed design.

She explains an article of manufacture should be “interpreted to refer to a tangible item made by humans that has a unitary structure and is complete in itself for use or for sale….” She also asserts that, historically, machines and compositions of matter should excluded from “articles of manufacture.”

She further says that if courts feel “compelled to include machines in the category of ‘articles of manufacture,’ they should treat the exterior housings or shells of the machines as the relevant article because it is manufactured and could be sold separately.”

Burstein’s approach will be easier and cheaper to apply than the four factor test. And, Burstein argues the awards will “better reflect the designer’s actual contribution without providing too much of a windfall to the most design patentees.”