Safe Patent Filing
ABG Intellectual Property provides a service named "Safe Patent Filing”.
· Description: the service consists of:
(i) the implementation of a protocol for keeping the company’s laboratory notebook and a notification system regarding the inventions made by inventors-employees in the framework of their work relationship to the employer. This guarantees the quick and effective identification of the invention and the employer’s full exercise of the rights on the invention conferred by the law.
(ii) the revision and/or drafting of the clauses of the contracts with inventors used to guarantee the confidentiality of the information that culminates in the invention, the assignment of the inventor’s rights to the employer and their mutual collaboration in the accreditation of the assignment and its scope.
· Covered necessity: within organizations who actively develop inventions, the lack of internal procedures for notification of inventions by employees-inventors to employers is frequent. These procedures are essential in order to exercise the right, if appropriate, to protect the invention under the patent system, or to maintain its protection as a trade secret. Additionally, it is common for researchers – both internal and external to the company – that participate in the research project leading to an invention not to have effective clauses in their contracts regarding the confidentiality of information, the transfer of rights to the employer and the consequences of its non-observance.
· Covered risks: the service is intended to cover the following risks:
(i) the loss of the ability by the employer to protect inventions made by employees through patent and trade secrets systems,
(ii) evidentiary difficulties regarding the identity of the inventors,
(iii) evidentiary hurdles regarding the ownership of the invention,
(iv) disclosure of the invention and, as a result, the impossibility of protection under the patent – for breach of the novelty requirement – or trade secrets systems – for breach of the secrecy of the information requirement – .
(v) evidentiary problems regarding the plausibility of the invention (insufficiency of description and ability to resolve the technical problem it seeks to resolve) if protection under the patent system is chosen.