Saturday, October 5, 2013
Hackathons offer a quick and efficient way to program new application but let me offer few words of IP-related caution.
First, since most participants approach these events with collaboration in mind (a good thing) it seems likely that some joint-invention might occur. In which case, you (as the owner of an original idea) might come out of the hackathon with a joint inventor. That condition allows your coinventor to independently use any jointly created idea. Where the line between joint and original lies can be hard to identify. Moreover, the results can be catastrophic should the two of have a falling out.
Additionally, whether discussing a potentially patentable idea crosses the line and becomes a public disclosure can be unclear. The lack of a written non-disclosure agreement (NDA) and the sheer number of participants who might learn of the idea raise issues too. The consequences here include triggering the beginning of the one-year grace period for filing a U.S. patent application. Rights to file many foreign patent applications vanish immediately. Plus, someone might innocently (or not) “derive” their own patent application from your disclosure.
Accordingly, this author suggests not bringing your potentially patentable ideas to a hackathon until you at least have a provisional application on file. You should also document your idea in writing with the signatures of at least two witnesses to corroborate that your (emphasis in the original) invention occurred prior to the hackathon (i.e., prepare an “Inventor’s Notebook"). Obtaining NDAs from those you want to collaborate with and limiting their numbers would also be good ideas. Of course, every situation will be unique and running your plans by a competent IP Attorney would go a long way to protecting you from these and other adverse consequences.