The helpful employee

Let us have a look at four examples to show what could go wrong. The first concerns a fictional biotech firm with 40 employees and an open culture built on trust. A client calls the receptionist and asks for the technical drawings of one of the company's products. However, these drawings are a trade secret. There is no policy in place. The receptionist has access to the drawings and, wanting to be helpful, shares them without requesting a signed non-disclosure agreement (NDA). The client uses the drawings to develop their own version of the product and markets it aggressively. The result? In court, the company faces an uphill battle and may not be able to prove it treated the drawings as a trade secret at all.

When collaboration goes sour

The second example concerns an early-stage start-up that aims to collaborate with a contract research organization (CRO). They have clear agreements in place on foreground IP (the IP that results from the collaboration). All other details are covered by the CRO's standard collaboration contract. The start-up brings forward many new ideas and suggestions during the collaboration. However, none of these are in writing. At one of their meetings, the CRO informs the start-up that it will file for a patent. The start-up claims that the patent is inspired by their ideas and suggestions. According to the CRO, it further developed the ideas that were brought into the collaboration. As far as the CRO is concerned, the invention is its own. Without written evidence of the start-up's contributions, the CRO's position is difficult to challenge. The start-up has lost any claim to inventorship, as well as any share of what may become a valuable patent.

Freedom to operate

In the third example, a biotech company has multiple lines of research and expects to enter the market soon with a new innovation. The company has already announced its new product and the techniques used in production at two high-profile conferences. Shortly afterwards, a letter arrives from a competitor's lawyer: the new product infringes on a patent application filed by the competitor. The company is forced to postpone the product release until it can negotiate a licence fee with the competitor – assuming the competitor is willing to grant one. By announcing the product and technology publicly, the company alerted a rival who might otherwise not have noticed the overlap. The underlying failure is that the company thought of a freedom-to-operate analysis before investing in the launch.

Going public and the novelty requirement

In the final example, a university spin-off developed a novel medical product. There is a lot of interest in the start-up, prompting it to give interviews and product presentations. The company is explicitly asked to demonstrate its new product, so the audience can appreciate its innovative qualities. At the same time, the company is looking for investors to help bring the product to the market. As IP is a key concern for potential investors, the company wants to file a patent. One of the core requirements for a patent is novelty. But the company already disclosed its product publicly. Now it is wrestling with the novelty requirement: only parts of the invention that were not shown, if any, can still form the basis of a patent filing. The result is a narrower patent at best, no patent at all at worst. For a company built on investor confidence, that is a serious problem: weak IP weakens the pitch, and no IP can end the conversation entirely.

Take IP seriously

The above examples share a common thread: overlooking IP during product development can be costly. Seemingly small omissions like an undocumented conversation or a presentation given too soon can lead to loss of IP, or lost investors. None of these failures are difficult to prevent. It starts with taking IP seriously from day one.

The Netherlands Patent Office is happy to help you. We offer free 1-on-1 consult with a patent advisor: a useful starting point for building an IP strategy.

https://www.octrooicentrum.nl/diensten/gesprek-octrooiadviseur-aanvragen

About the Netherlands Patent Office

The Netherlands Patent Office helps entrepreneurs who want to protect their innovation, find collaboration partners, or secure funding. Whether you are a start-up, scale-up or SME, our support is confidential, independent and free of charge. From walk-in advice sessions at tech hubs to tailored patent search advice: our advisors work across the country to support you.