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By J.D. Houvener
Patent Attorney and Founder

Oh before I get started would you mind signing this it’s a nondisclosure agreement no big deal right [Music] hello everyone my name is JD who Vener registered USPTO patent attorney and I’m the managing partner and CEO here at bold patents law firm and today I want to dive in and help you better understand non-disclosure agreements and when inventors should use them and before we get started I want you to know the timestamps are down below in the details you can jump ahead in the video to the section that you want to and there’s even a blog article I wrote on our website so what is a nondisclosure agreement and what is it used for well a non-disclosure agreement is the same thing as a confidentiality agreement they mean the same thing the secret here is that their contracts don’t forget it’s not just a handshake this is a legally binding contract and it’s what’s gonna help you have a foundation for confidentiality moving forward when you’re starting your business or you have an invention this is the Homer this is the foundation of what you set your company on you’ve got to make sure that you protect it now I want to take a quick mention of our blog article go visit our website at bold IT comm forward slash blog I wrote an in-depth article about what a nondisclosure agreement is what aspects of the contract itself you need to be concerned about so visit the blog if you want more detailed information something else I want to mention too about non-disclosure agreements is because their contracts they are governed by state specific law every state has their own laws about contracts and so you must make sure that you’re working with a local attorney license in the state that you’re resident residing in and the other party is residing in if you want it to be binding on all parties so this is a major reason why investors typically won’t sign non-disclosure agreements they see so many ideas pitched at them they don’t want to get stuck being liable having known information and sharing it with others the other issue is that they likely are very difficult to enforce you’re again dealing with a contract that’s likely between parties that reside in different states and also I’ve seen this quite often inventors talking with parties over in different countries could you imagine trying to go let’s say China to enforce your non-disclosure agreement in a Chinese tribunal good luck so when do you use a non-disclosure agreement this is the heart of I wanted to get two inventors oftentimes come to me as patent attorney they confide in me in their invention and it’s wonderful but even before they talk to me they’ve usually talked with other people and you know that happens right you know you got a brother a relative a close friend you want to go to bounce the idea off of someone in confidence this is the tool to use now even if it’s like I said a friend or family member it may seem awkward to shove a contract in front of them but it’s a great way to practice because you need to have that level of seriousness with your invention now certainly you may not need that with family and I said like I would encourage you to practice it but you will need it with third parties so that someone is helping you develop the product prototype it or help me be a co inventor someday now that’s all pre-filing so we do recommend that you work with an attorney to structure that non-disclosure agreement to get the written language down correctly for the state that you’re in once you file your patent application there actually are reasons to still use a nondisclosure agreement a provisional or a non-provisional patent application will actually lock in your invention but know that it’s only locked in so far as what was disclosed in that provisional okay so as soon as that’s filed yes your patent pending on that subject matter but let’s say you and you like the will see improvements in your invention down the road those bells and whistles that you add or you get feedback from customers on that needs to be kept confidential because likely you will be able to seek second patent application or an improvement application on that core invention so keep all those extra learnings and improvements confidential and if you needed to disclose them with a third party treat them just like a brand new invention so I want to tell you a quick story about one of our clients that we worked with just last year they came to us when we first got to meet and they said oh yeah you know JD I really need help with this this new partner of mine he’s gonna be manufacturing this product for us it’s a quick confidentiality agreement that’s what I need as well well you know has he or she or this company sent you any documents and he said yeah here it is here it is and I start to look at the contract that he sent in it of course it a little bit more murky and it turns out that this contract was really taking ownership of this inventors product so they’re not only just manufacturing it but they wanted the rice to be able to sell it to third parties yikes right so make sure of course you’re looking at your contract but no to ask about confidentiality and then third talk with an attorney because they’re gonna build a spot issues well beyond confidentiality and in this case patent ownership all right so I want to summarize all six areas I just talked about again what a nondisclosure agreement similar to a confidentiality just a nomenclature thing there’s state-specific don’t try to get investors to sign them you need to use them pre filing and post-filing and don’t forget to work with an attorney to help you spot issues that may not be so apparent last but not least I want to give you a copy of our book bold ideas the inventors guide to patents it’s available right now online at bold IP com or slash free


About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at