Why Startups should be filing i-DEPOT's
Technical startups are very careful about the information they share with others, and with good reason - they have a lot to lose if someone else copies their latest innovations or trade secrets.
But it is not practical to keep everything secret - ideas only become valuable when they have been discussed, debated, tested, evaluated and improved through interactions with others.
i-DEPOT's can help with the balance, allowing more control over how you distribute confidential information, both internally and externally.
IP law is very complex, so it is only possible to give very general instructions here. Consult Fireball Patents if in doubt about a particular case, or if you need more information.
The Benelux IP Office (BOIP) provides a confidential register, where up to 100MB of documents, images, drawings, videos & audio can be deposited online for €40. For frequent users, the price drops to €12 per i-DEPOT.
The certificate is officially recognised as an electronic signature by judges in all 27 EU countries.
Anyone WORLDWIDE can file i-DEPOT's without using an agent. The information is confidentially stored for at least 5 years, and may be renewed for additional periods of 5 years as often as required.. The BOIP acts as an independent repository, and submitted i-DEPOT's (as well as the individual files) can be viewed by logging into your account. You can also download a copy for your own records.
Internal ideas have value
In the food industry, such concepts are well-known: e.g. Coca-Cola® and KFC® secret recipes, but they are just as important for technology pioneers. For example, source code, ways of working, predictive or analytical models, production processes, selection of combinations of raw materials, diagnostic processes, and process finishing steps can provide a competitive advantage.
Most countries provide some form of legal protection under Unfair Competition law, Contract law etc. for such secrets, but legal actions may be difficult to initiate.
Both the US and EU recently passed comprehensive & dedicated laws to improve protections for Trade Secrets holders:
A Trade Secret is internal know-how, unknown to the public, which gives an advantage over competitors - they are not visible or detectable in the finished products or services.
In any dispute, you must be able to prove you possessed that know-how on a particular date, and that you made reasonable efforts to keep it secret.
Recently, the Waymo-Uber case showed how it was possible to:
Create proof against Patent infringement
Patent rights go to the first-to-file for an invention: if you choose to keep your invention secret, and someone else independently develops & patents it, you can be sued for infringement
Most countries recognise the “Prior Use” or “Right of Continued Use” defense, but you will need to prove that you were already using the invention (or seriously preparing to use the invention) before the filing date of the Patent Application.
If successful, this defense will allow you to continue what you are doing, but you may be restricted in volume, exports, and improvements to the invention may not be permitted. This is determined by each national court in the countries where you wish to operate.
Most entrepreneurs don't want to think about it, but is very common for key inventors and developers to leave the company. They may go to work for a rival company or even start their own company, which is likely to be located in the same country as yours.
The Waymo vs Uber case showed how appropriate precautions and access logs can stop an ex-employee (and his/her new employer) from benefiting from your "Trade Secrets".
Other precautions should also be taken such as including secrecy clauses in employment contracts, identifying "CONFIDENTIAL" information as such and limiting access to secrets.
Copyright protects literary and artistic works, and comes into existence automatically on creation. It also protects things like software programs, instruction manuals, user interfaces, external appearance of products and instruction manuals from being copied exactly.
No registration is required. However, in the event of a dispute, you need to show that you created it first.
Note that having proof does not mean in itself that the work is protected under Copyright - you may have to show that it has original character compared to similar earlier works. For products, you will have to show that the external appearance is the result of creative choices, and not just technical considerations.
A chain of i-DEPOT's and registrations is more convincing in any dispute than just a single one, as the development can be followed from its inception all the way to final production..
So file an i-DEPOT at each major milestone, such as brainstorming, completion of prototype design, testing and evaluation,.finalisation of the design and appearance, product launch, major updates.
In addition, any IP registrations, such as Industrial Designs and Patent Applications, and contracts, such as NDA's and licence agrements, will further prove the know-how you possessed on a particular date.
Simplify NDA's and licencing agreements
If the agreement refers to the i-DEPOT registration number, the confidential part is clearly indicated, and that part does not need to supplied to all the reviewers of the contract.
Also for an NDA:
It is important for the parties involved to understand their responsibilities, and the i-DEPOT acts as evidence of what fell under the NDA.
If the other party breaches the NDA, you may need to show that the information was not public when the other party received it, the moment they first came into possession of it and that you were in possession of it before that moment.
Also for a licence agreement:
It should include an NDA specifying that the licensee keep the information in the i-DEPOT secret, even after the end of the licensing agreement
The i-DEPOT should be written to the same level of depth as a patent application, including description and drawings. Please contact Fireball Patents if you need assistence.
Quick and easy to use
Uploading the files for the i-DEPOT is as easy as uploading to any cloud storage system.
Each filing max not contain more than 100MB, and is limited to following types of files: pdf, jpg, jpeg, png, txt, doc, docx, tif, tiff, xlsx, xls, pptx, ppt, png, gif, bmp, mov, mp3, mp4, m4v, avi, wmv, mpg, psd, wav, m4a, wma, aac, zip
It is not possible to submit folder structures – all the files end up in a single list, and the folder information such as last modification date, size, creation date that Windows displays appears to be lost.
Note that any meta data that each file retains itself can be viewed after the files are opened.
The order of the files is the order that you selected them.
only upload one folder per i-DEPOT, or
use an application like Treesize to make a snapshot of the folder details before the upload – these snapshots can be saved and uploaded as part of the i-DEPOT.
But remember ....
An i-DEPOT or Trade Secret does not directly provide protection - for that, you should file a Patent Application and/or Registered Design.
If your secret becomes public, you can only take actions against anyone who was involved in the breach of confidentiality. Everyone else who learns about it is free to exploit it.
It is not possible to claim priority of an i-DEPOT for a subsequent Patent or Registered Design application. So if you are planning to file a subsequent Application, a formal IP registration is recommended.
A Patent Application may also be used in a similar way to an i-DEPOT - it receives an official number, the patent office can supply certified copies which indicate who filed it, when and the complete contents filed. If no fees are paid, then a Patent Application is not published. A subsequent Application may claim priority if filed less than 12 months after the first one.
Always insist on potential suppliers, clients and partners signing an NDA before discussing confidential information.
Limit the information given to what the third-party needs to know - for example, use more than one manufacturer and do the final assembly yourself.
Be careful when using crowd-funding websites because you must explain your product quite extensively to get the backing, but a third-party can copy it and have it on the market within a few weeks based on this information.