Monday, March 14, 2011

Signed NDA; Lost Patent Rights

Dear Rich: In 1995, Company A signed an NDA with me that enabled a presentation to their executives concerning my ideas and vision in the implementation of bar code reading applications using cordless telephone technologies. Following the presentation, and after leaving the documentation with the company, they wrote to me rejecting participating in the proposals presented. In 2001 Company B, which is wholly owned by Company A entered into a joint venture funded by Company A with Company C. Company C has been awarded patents in this area of technology that I proposed in 1995 to Company A. All the major players in the mobile phone market now licence from Company C to enable cordless phones to read and transact operations over the air. In 2003, I wrote to Company A concerning these facts that Company C may not have good title to these patents due to the history of circumstances inter alia myself. They responded with a letter stating that they (Company A) were a strategic supplier to Company C and that the executive who signed the NDA was employed by the business network division at that time and as there was no longer a business network division that position no longer existed. Are there any statute of limitations that would prevent me taking further action legally? Would it be more productive to start addressing these issues directly with Company C in the USA? The short answer is that you've probably waited too long to pursue your trade secret claims. 10 or 15 years may not seem like a long time when considering human history or geophysical activity, but it's eons within the legal system. (You should consult with an intellectual property lawyer to be positive).
The clock started ticking ... As a general rule, you have a certain number of years (typically 3 to 5) to take legal action after your problem developed. For example, most states have adopted the Uniform Trade Secrets Act which has limit of "3 years after the misappropriation is discovered or by the exercise of reasonable diligence should have been discovered." In addition, there's a legal theory known as laches that could limit any damages you may have suffered because you waited too long to bring the suit.  (Here are some of the other defenses that Companies A, B, and C could make to a claim of trade secret misappropriation.) Although it's not the same as a lawsuit for damages, you may be able to argue that the issued patents are invalid by having the patents reexamined.

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