To be hit around the ears with your own invention. That hurts. But does it really happen? You bet it does!
Unfortunately we had to deal with a case like this recently. The company in question (let's say a company by the name of Jones) had asked an external party to carry out some tests on a prototype of their invention. The invention had not been patented and no non-disclosure agreement had been signed. Nobody had paid any attention to this at that stage of the development.
Own idea patented by someone else
Although the test results were positive, the invention was initially shelved. Years later, Mr Jones was shocked to come across his own idea when searching a patent database. Patented. I can tell you that this caused quite a stir at this man's firm.
A former employee of the party that carried out the tests on their invention, had filed the patent application and had been granted the patent. Was this a coincidence? Did this person subconsciously remember the idea and did he later think it was his own? Or did he think it was an inventive idea and see his opportunity?
Being called to account for infringement
Questions that are difficult to answer. We are currently looking into whether we have sufficient legally valid evidence to be able to sue the other party for derivation. In the unlikely event of us not being able to find enough evidence, a situation could arise where, if Jones were still to commercialise its own invention, it could end up being convicted for committing a patent infringement.
How can you ensure that you do not end up in a situation like this?
- Apply for a patent yourself before you start discussing it with others;
- Have every party you show your invention to sign a non-disclosure agreement;
- Publish the invention, for example on your website. By doing so the invention will have become public knowledge. Although you will then no longer be able to apply for a patent on it, your competitor will not be able to do so either.
This is of no help to Jones now. However, you should take heed of this story to ensure you are not going to find your invention in the shops under your competitor's name.