A Confidential Disclosure Agreement
CONFIDENTIAL DISCLOSURE AGREEMENT
This Agreement is made and entered into as of _____________, 200_ (the Effective Date) by and between:
Jerry R. Potts, a registered patent attorney with the United States Patent and Trademark Office, hereinafter "Attorney" and
_______________________________________________________, hereinafter "Inventor".
BACKGROUND:
WHEREAS, Inventor desires Attorney to evaluate, discuss, and prepare a preliminary patentability report on a certain invention (the "Invention") as described in Exhibit "A" attached hereto;
WHEREAS, Inventor desire the Invention to be treated as Confidential Information as defined below; and
WHEREAS, Attorney and Inventor have agreed that disclosure and use of the Confidential Information shall be made on the terms and conditions of this Agreement;
NOW THEREFORE, Attorney and Inventor agree as follows:
1. DEFINITIONS:
1.1 Wherever used in this Agreement the following terms shall have the meanings set forth below:
"Confidential Information" means any information disclosed in any form whatsoever (including, but limited to, disclosure made in writing, orally or in the form of samples, models, computer programs or otherwise) made by Inventor to Attorney under this Agreement, provided that (i) such information is at the time of disclosure designated as "confidential", or (ii) the nature of the information makes it obvious that it is confidential. However, the term Confidential Information shall not include any information disclosed by Inventor to Attorney which a) is on the Effective Date, or thereafter becomes, publicly known without violation of this Agreement, b) is legitimately obtained at any time by Attorney from a third party without restrictions in respect of disclosure or use; c) rightfully in the public domain other than by a breach of a duty to the Inventor; and d) rightfully known by Attorney without any limitation on use or disclosure prior to its receipt from the Inventor.
Disclosure Period means that period of time that the parties shall disclose confidential information; such period of time shall be between the Effective Date of this Agreement and ____________, 200_.
2. USE OF CONFIDENTIAL INFORMATION. Attorney shall not use or disclose the Confidential Information for any purpose other than providing Inventor with a fixed price quote for conducting a preliminary patentability search and for preparing and filing a patent application with the United States Patent and Trademark Office describing and claiming the subject matter of the Confidential Information.
3. MAINTENANCE OF CONFIDENTIALITY. Attorney from the Effective Date of this Agreement and for a period of two (2) years thereafter, ending on _________, 200_, shall be obligated to protect the disclosed Confidential Information by using the same degree of care, but no less than a reasonable degree of care, to prevent the unauthorized use, dissemination, or publication of the Confidential Information as Attorney uses to protect his own Confidential Information of a like nature.
(a) Attorney shall have no duty to hold Confidential Information in confidence after the date of _________, 200_ (hereinafter the Expiration Date); and
(b) Attorney during the Disclosure Period and for a period of one year thereafter, shall be further obligated to:
(i) keep said Confidential Information confidential and prevent disclosure of said Confidential Information to any third party;
(ii) make use of said Confidential Information only for the Purpose; except the cases where said Confidential Information
(a) has already been lawfully known to Attorney before its receipt from the Inventor,
(b) is publicly available without any breach of this Agreement by Attorney,
(c) is disclosed by Inventor to any third party without restricting said third partys disclosure,
(d) is lawfully received by Attorney from any third party without any breach of this Agreement by Attorney,
(e) is independently developed by Attorney,
(f) is disclosed under operation of law, or
(g) is disclosed by Attorney with the prior written approval of Inventor.
4. LIMITATIONS.
4.1 The obligation of Attorney hereunder shall only extend to Confidential Information that is described in Exhibit "A", and that: (a) comprises specific materials listed in Exhibit "A"; or (b) is marked as confidential at the time of disclosure; or (c) is unmarked (e.g. orally disclosed) but treated as confidential at the time of the disclosure, and is designated as confidential in a written memorandum sent to the Attorney within thirty days of disclosure, summarizing the Confidential Information sufficiently for identification.
4.2 This Agreement shall continue to be effective for two (2) years from the Effective Date first written above, except that Articles 2, 3, and 4 hereto shall survive any termination or expiration of this Agreement, and also except that the obligations of nondisclosure, confidentiality and limited us of any Confidential Information set forth in Exhibit "A" shall remain effective until the Expiration Date set forth in Article 3 hereof.
5. REPORTS. Any data, reports, or other writing or items, which result from the use of the Confidential Information by Attorney, shall be treated as Confidential Information under the terms of this Agreement.
6. OWNERSHIP AND RETURN OF MATERIALS. Any Confidential Information shall remain the property of the Inventor disclosing said Information. Upon request by said Inventor, the Attorney receiving said Information shall return to said Inventor all of said Information and copies thereof, or, if approved by said Inventor shall destroy the same.
7. NO ASSIGNMENTS. Attorney shall not assign or transfer this Agreement, and any prohibited assignment shall be null and void. This Agreement shall not be construed as granting any rights to Attorney by license or otherwise in any of the Confidential Information. Inventor makes no warranties or representations to Attorney regarding the Confidential Information.
8. GOVERNING LAW. The terms and conditions of this Agreement shall be subject to and construed in accordance with the laws of the State of California, United States of America.
9. ENTIRE AGREEMENT. This Agreement constitutes the entire understanding between the parties concerning the treatment of information to which this Agreement relates. This Agreement may not be changed, amended, modified or canceled except by a written instrument signed by the respective parties hereto.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be signed by the parties on the days specified below respectively.
INVENTOR: ATTORNEY:
By: _______________________ By: _______________________
Date: ______________________ Date: ______________________
EXHIBIT "A"
The Invention disclosed under this Agreement by Inventor is described as:
1. TITLE OF INVENTION:
2. NAME AND ADDRESS OF EACH INVENTOR: (Use additional sheets if necessary)
First Inventor Full Legal Name:
Street Address:
City, State and Zip Code
Telephone Number:
Fax Number:
E-mail Address:
Citizenship:
State Primary Contribution to the Invention:
Second Inventor:
Street Address:
City, State and Zip Code
Telephone Number:
Fax Number:
E-mail Address:
Citizenship:
State Primary Contribution to the Invention:
3. DATE INVENTION WAS CONCEIVED:
4. DATE INVENTION WAS REDUCED TO FIRST REDUCED TO PRACTICE:
5. DESCRIPTION OF INVENTION: (Include sketch, block diagrams, flow charts, pictures, etc. (Use additional sheets to make disclosure as complete as possible)
6. LIST THE FOUR MOST IMPORTANT FEATURES OF THE INVENTION:
A.
B.
C.
D.
7. WHAT IS THE MAJOR ADVANTAGE OF THE INVENTION OVER THE PRIOR ART?
8. LIST ANY PRIOR ART THAT IS RELEVANT TO THE INVENTION AND THAT SHOULD BE DISCLOSED TO THE UNITED STATES PATENT AND TRADEMARK OFFICE.
9. HAS THE INVENTION BEEN DISCLOSED TO ANY THIRD PARTY?
_____ Yes _____ No
If yes, provide date and name of third party and a brief description of what was disclosed and the purpose of the disclosure:
10. HAS THE INVENTION BEEN DESCRIBED IN ANY PRINTED PUBLICATION?
_____ Yes _____ No
If yes, provide date and name of each publication:
11. HAS THE INVENTION BEEN IN PUBLIC USE, SOLD OR OFFERED FOR SALE?
______ Yes _____ No
If yes, provide the date of first use in public, or the date of first sale, or the date the invention was first offered for sale, whichever the case:
