DANGER AHEAD - STAY PROTECTED!

Innovation is a journey over and around many hurdles and unknown dangers. Even experienced inventors find it difficult to navigate the many pitfalls on the innovation journey.

It is a wise move to properly prepare for such a journey - protection is essential.

Formal versions of protection – patents, trademarks, registered designs, and copyright – are available but these are not always put in place early in the journey. Indeed, it is often not wise to acquire such formal protection until the invention has been finalised.

This could expose an inventor to early risks on the innovation journey, which could have disastrous consequences later on. Often these consequences only become clear after an inventor already invested a great deal of time and funds into the innovation journey, making it difficult or costly to abandon it or to correct early mistakes.

One of the most common risks inventors face comes with using outside assistance in the development of their invention. This can take many forms – from a simple informal discussion with someone in the know, to a formal engagement, and payment, of someone to assist with a design, the writing of software code, and so forth.

All of these have one critical component in common – an outsider contributes to the invention and in doing so may become a co-inventor or co-author.

Formal protection for inventions all require the applicant for such protection to own the full rights to the invention. If an outsider contributed even only a small portion to the invention, the inventor needs to obtain a transfer of the rights for that small contribution to be able to apply for formal protection for the entire invention. This is done by way of assignment of rights, which is recorded by means of a very simple document – a Deed of Assignment.

Too often a Deed of Assignment is executed only after the contribution is made, which is risky for an inventor. Up to the point that the Deed of Assignment is executed the rights transferred thereby are not owned by the inventor. This provides the outside contributor with strong leverage, which is often used by such outside contributors to secure better deals than those initially agreed upon (if at all).

Unfortunately money – or in most cases even a mere whiff thereof – has a tendency to cause many otherwise trustworthy people to act in less than honourable ways. Leaving these rights unsecured whilst allowing an outside party to contribute to an invention provides that outside contributor with leverage that is much stronger than the value of its contribution to the invention.

A simple solution is for an inventor to require any contributor to his invention to execute a Development Protection Agreement. This binds the outside contributor to confidentiality, secures the full assignment of rights to the inventor, and provides a power of attorney for the inventor to execute the forms required for formal protection on behalf of the outside contributor (the latter part is very useful if an outside contributor disappears or refuses to cooperate). The Development Protection Agreement effectively acts as a mop-up agreement which ensures that the inventor keeps owning all the rights in the invention and he has to power to act uninterrupted in his own best interest.

This is a relatively simple and very cost effective agreement, and it provides adequate protection for an inventor from when he embarks on the innovation journey to when he can secure formal protection in the form of a patent, trademark or registered design. Inventors are well advised to stay protected.