Legal Question in Intellectual Property in Indiana

I've been in talks with an marketing company from the UAE region, they've forwarded me an NDA to review information concerning a provisionally patented invention. My question, would it be safe for me to forward this information with this NDA in place?


Asked on 2/25/10, 9:46 am

2 Answers from Attorneys

Kenan Farrell KLF Legal

You'll want to have an attorney review the NDA to make sure it adequately protects any confidential information. Without reviewing the document, there's no way to properly answer your question.

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Answered on 3/02/10, 10:06 am
Bruce Burdick Burdick Law Firm

NO. It is not enough. It is a risky move, if you mean that you propose to send information to UAE with only a PPA and NDA. There are other agreements you need. Patents are notoriously disrespected in the Middle East, although UAE is somewhat of an exception. UAE did not even grant patents until just four years ago starting on March 1, 2006 and even then, worked via the Austrian Patent Office to get them examined. To get a feel for the risk, Google "AGIP UAE patent". AGIP is the most prominent Middle Eastern IP firm. You obviously need a US patent attorney versed in Middle East practice, but it is good you know enough to at least check this out on lawguru. I know about this stuff because my brother has lived in Riyadh, Saudi Arabia for nearly 15 years and things are very different there as respects patents, trademarks and copyrights. The big thing you have going for you is that generally UAE businessmen tend to buy technology rather than try to develop it themselves because they don't have the engineers (except foreigners they hire but do not usually fully trust) and do have the money to buy it and they generally want to do things now rather than wait. What you primarily have to watch out for is that they may talk to you, get your disclosure, and then hire a European (Austrian, German, Dutch, Danish, Norwegian, or other) engineer to put it into practice. Since the Austrians are hired to perform the patent examinations, this is not just a minor worry. Be careful about foreign disclosure of inventions unless you have a foreign filing license to show it is not something that might properly be the subject of a secrecy order. If you wrote this PPA (Provisional Patent Application) of which you speak yourself, then you definitely need a patent attorney's help to review it and make sure it actually provides a proper antecedent basis for the patent claims that would need to be later filed and examined and, hopefully allowed if you expect to protect this confidential information by patent. Have you discussed a Know How Agreement, a Joint Venture Agreement, or Trade Secrecy Agreement with anyone? If you do not know about the things I mention above, you need to get a registered patent attorney who does. Call if I can help.

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Answered on 3/02/10, 8:14 pm


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