So, how do you work with a third-party engineer to bring your idea to life? Here’s a breakdown.
I’m JD Houvener, a patent attorney and founder of Bold Patents Law Firm. Over the past decade, I’ve helped thousands of inventors and entrepreneurs get their patents—more than 500, in fact. Today, I’m excited to share some advice on working with engineers, manufacturers, or prototypers, especially when you’re just starting out with an idea.
You might be wondering, “I have this concept, but I can’t build it myself. I don’t have the technical know-how, and I need someone who does. How can I protect my idea before I go to market? What if the engineer takes my idea or leaks it to a competitor?” These are important questions, and it’s crucial to approach this carefully.
First, you need a contract to protect yourself. At the heart of this is confidentiality and inventorship. You’ve probably heard of NDAs (non-disclosure agreements), and yes, these are essential. An NDA ensures that the engineer or any third party you work with keeps your idea confidential. The information you share stays between you two (or however many parties are involved). But, it’s not as simple as just downloading a template.
You’ll want a solid NDA that’s enforceable. If someone breaks the agreement, you need to know that you have a way to seek justice, possibly in court. This is where having a local attorney who understands the laws in your state becomes critical. If you’re in California, you should consult a California-based lawyer. They’ll know the specifics of local law and ensure the contract is done right.
Sometimes, it’s better to fold the confidentiality clause into a larger agreement rather than having a standalone NDA. This could be a contract you negotiate for the work itself—whether you’re working with a prototyper, an engineer, or even a university. Having everything in one agreement can streamline the process.
Another big thing to cover is inventorship. You, the inventor, are bringing the idea to life. But as the project develops, it’s possible that the engineer could help tweak or improve the design—creating new inventions in the process. You want to make sure that any improvements or inventions related to your original idea are clearly defined in the contract as yours. This is often done through a “work for hire” clause. It’s important to specify that any inventions developed during the project belong to you. After all, you’re the one who brought the initial idea to the table.
Once the prototype is ready and you’ve validated that your idea works, it’s time to take the next step. At this point, you should hire a patent attorney to conduct a thorough patent search and file a patent application—whether it’s a provisional patent or a non-provisional utility patent.
In short, working with a third-party engineer is all about protecting your ideas legally. Start with a solid contract, cover confidentiality, and make sure you own any inventions made along the way. Once the prototype is set, patent your work to secure your rights.