This is an excellent cautionary tale for anyone with an idea or invention who is thinking of approaching a corporation: Talk to an attorney first!!!
“In court documents Nicolo spelled out his prior disputes with Ethicon, noting that, in light of his previous experiences,” Dr. Nicolo adopted a heightened level of discretion and caution in approaching Ethicon and sharing any business proposals and technical developments with Ethicon.”
Nicolo said that he and another inventor jointly developed a proprietary surgical stapling system for intestinal reconstruction and resection, which was the subject of U.S. Patent issued in September 2000. While the patent was still pending in 1998, Nicolo met with representatives of Ethicon, including Federico Bilotti, to discuss the stapling technology, according to the complaint.
Just 7 months later Ethicon filed its own patent, naming Bilotti as its inventor, describing a surgical stapling instrument that included “hemorrhoidectomy device technology” that Nicolo claims was derived directly from his conversation with Ethicon.”
Now, who knows what really happened in this particular case? People file lawsuits all the time; it doesn’t mean that they are right and the other party is wrong.
For start-up novices or entrepreneurial inventors, it may seem like a good idea (and it may actually be a good idea) to talk with larger medical device companies. They have resources (= cash) and they need new products. However…I’ve heard similar stories from entrepreneurs, physicians, and inventors claiming that some big corporation stole their idea.
Here are some tips and other issues to consider. These are from my experience and perspective as an entrepreneur and medical device professional. As the saying goes, I am not a lawyer:
- If you must approach a big company, try to get them to sign an NDA (non-disclosure agreement, also known as a CDA, confidential disclosure agreement). You need a one-way NDA to document what you are disclosing to the company. Many times, the company will ask for a two-way NDA to cover anything they might disclose in the course of the discussion. Of course, many times the corporation will tell you that they will not sign an NDA as a matter of policy. In that case, you need to decide if the benefit of the discussion is worth the risk of compromising your intellectual property (IP).
- Read the NDA form very closely before signing it. If it’s your NDA form that is being used, review it carefully with your attorney beforehand. Also review any changes requested by the corporation’s attorneys. The NDA spells out very specifically what you have to do to be covered by the NDA. Usually, that means putting all disclosures in writing within a certain time period. This is especially important for anything that is disclosed orally during a meeting.
- Know in advance what you are willing to disclose in the discussion and do not waver. You can always ask for another meeting! Also know what you want. If you wait for the corporation to make a proposal, you will be negotiating from a weakened position.
- Keep in mind that the other company probably has done investigation or perhaps even R&D into the topic you are discussing. They will not tell you any of this information. Also keep in mind that the corporation’s representatives are only interested in itself and themselves, not you. Corporate employees may whisper sweet nothings in your ear, but keep your wits about you and maintain a high level of skepticism.
- If you have intellectual property, protect it. At the very least, file a provisional patent application. These are relatively inexpensive and you have one year to file a formal patent application.
- If you have trade secrets, do not reveal them. You can show the results or output from application of the trade secret but trade secrets are by definition unprotected intellectual property. Think of the trade secret as a handful of precious gems. Once they are out of your possession, how do you prove they belong to you?
- Document everything. Keep notebooks, in a secure place (or the online equivalent, with reliable backups), detailing the invention, all inventors, dates, times, circumstances. Document every interaction you have with the corporation. Note names, titles, dates and times of meetings, all attendees, take notes, and publish meeting minutes.
- Do not assume anything about your interaction with the corporation. Nothing is certain unless it is in written form – and even then, can be the subject of much legal wrangling if the parties disagree about something.
- Sure, you always have the option to file a lawsuit if things go awry, BUT the corporation has more and better lawyers and much, much more money. Consider this option your very last resort.
- It is possible for a small business to license or sell technology, IP, or a product to a larger company. Most of the risk falls on the little guy, unfortunately. As Ronald Reagan once said of his dealings with the USSR, “trust but verify.” I would modify that aphorism for this subject to “engage but document.”