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.
We at the Villhard Patent Group would be happy to discuss
your upcoming (and past) hackathon activities with you. You can find more information at www.villhardpatents.com. You can contact us at contact@villhardpatents.com or
512-897-0399. We look forward to hearing
from you.
