IMPORTANT CONSIDERATIONS FOR THE SMALL INVENTOR LOOKING FOR FUNDING
As a small business with some good ideas, you are looking for funding to take you to the next step. Before you approach the granting agency or large business, consider the points presented herein.
DO NOT DISCLOSURE YOUR IDEA TO ANYONE THAT IS NOT A PRACTICING ATTORNEY OR WITH WHOM YOU HAVE SIGNED A NONDISCLOSURE AGREEMENT (NDA) .
BEWARE OF SITES THAT SAY THEY WILL HELP YOU FILE A PATENT APPLICATION AND MARKET YOUR IDEA. MANY PEOPLE ON THESE SITES ARE NOT PRACTICING ATTORNEYS.
It is a good idea to file your provisional patent application, trademark, or copyright before you start signing NDAs.
The first step is to look at the United States Patent and Trademark website (USPTO.gov). You will find tabs for Patents and Trademarks. Copyrights have another site, although there are proposals in Congress for a single Intellectual Property (IP) web page.
From the dropdown menu on USPTO site read:
- Patent Basics;
- Independent Inventors;
- Trademark Basics; and
- Protect Against Scams.
APPROACHING A LARGE COMPANY WITH YOUR IDEA
Some large companies have a section on their web page for small inventors to submit their idea. You do not want to do this without your IP protected. Below are some examples,
- Pepsi Open Innovation Submission Portal (pepsico.yet2.com) – “no obligations whatsoever shall be created relating to your submission to PepsiCo…PepsiCo may, among other things, publish or disclose publicly any submission in any way it sees fit.”
- Tesla Ideas (teslaideas.com) – “Make a task or question that will need creative answer. If we think it is OK, we will publish it.
- L’ Oreal Open Innovation Program (loreal.com/en/beauty-science-and-technology/l-oreal-open-innovation-program) – Is silent on what might happen to your idea.
WORST CASE IS A COSTLY ONE
Liqwd, Inc and Olaplex (collectively “Olaplex”) filed a complaint against L’Oreal USA (“L’Oreal”) alleging infringement of US Patent No, 9,498,419 (“’419”) and mis appropriation of trade secrets, breach of contract, unjust enrichment, and breach of implied covenant of good faith and fair dealing.(2017 U.S. Dist. Lexis 104123).
Under an NDA Olaplex financial information and pending unpublished patent applications were disclosed to L’Oreal. L’Oreal indicated they were not interested in the Olaplex technology. L’Oreal proceeded to introduce product lines using the Olaplex technology.
Many appeals and motions later a March 4, 2021, decision in the United States Court of Appeals for the Federal Circuit has granted a stay of the injunction against L’Oreal using, making, causing to be made, selling, offering to sell, causing to be sold, importing, exporting subject products (2021 USPQ 2D (BNA) 258, 2021 US App. LEXIS 6367). At this date, the injunction was vacated and remanded for further proceedings.
On June 30, 2017, University of Massachusetts Medical School and Carmel Labs alleged infringement of US patents 6,423,327 and 6,645,513.
In fall of 2003 an agent of L’Oreal contacted the cosmetic developer who licensed these patents (Carmel Labs). L’Oreal failed to take a license. L’Oréal did begin creating, marketing, and selling a line of skin care containing an active ingredient named in the patents (adenosine technology).
As of June 13, 2022, the case is still in court having been remanded for further proceedings.
WHAT YOU SHOULD DO
Hire a patent attorney. You can find a list of patent attorneys in your area on the USPTO website.
Check me out on my webpage, joygoudie.tech.