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all right well i think we're going to go ahead and get started the presentation probably will not last a full hour so we'll get you out of here on time i am going to use this microphone it might look a little odd and the speakers are mic'd up as well that's for the benefit of the video it's not actually going to be amplified into the room but my name is john cervas i am the commercialization education coordinator for fast forward medical innovation for those of you unfamiliar with fast forward medical innovation or ffmi and we strive to be the front door to biomedical innovation here at the university and we kind of have a three-prong attack at doing that we have mentorship and funding excuse me through our amtrak and kickstart program we have a business development team that manages relationships between industry and existing research happening here on campus and then we have the commercialization education arm which leads us here tonight so as as part of our education portfolio we have a lot of different offerings tonight happens to be one of our cme accredited events so if you are in need of that cme credit there are further instructions in the folder on how to claim that post program and then in addition to that i'll be sending out an evaluation by email if you could just take a few minutes to complete that at the back end of that eval there's also an opportunity to give us some feedback on some upcoming educational offerings or speakers that you would like to hear about so on to uh non-disclosure agreements uh we feel very fortunate to have these two gentlemen joining us here today we owe them a lot of thanks ed pagani from the office of tech transfer and tony nielsen are generous enough to join us um and then amanda coulter also had a key role in putting this presentation together so i'd like to thank her publicly as well so without further delay and without hearing from me any further i'll turn it over to ed and tony thank you great all right thanks a lot um just uh introduction you know he obviously introduced us but um it might work better if we just keep this formal if you've got questions ask him doesn't hurt at all and won't interrupt her flow's first time doing this so it it'll be fine so and um tony and i are having choreographed our presentation so but we're going to work both work off the slides and uh talk to you about the secrets of non-disclosure agreement so i'm i assume everyone signed a non-disclosure agreement so that we can tell you those secrets right if not we're going to have to hold them back so all right what is a non-disclosure agreement it's a contract um provides for the treatment of you know confidential information um you know you could all read the slides but i think for the purposes of sort of our internal administration how we process these things something interesting about this is something that should be so simple an nda to the university of michigan is sort of a term of art and we're generally talking about things where we're going to have discussions we'll talk about potential research we'll talk about potential licensing things like that and we'll get to another slide so i'm skipping ahead a little bit here but understanding what it is will help you when you see get a contract in your hand that the sponsor has given you it'll say all sorts of things on the top and just keep in mind that doesn't necessarily mean it is or is not an nda so as long as you understand that concept then knowing what the purpose is of the transaction what you'll be discussing or what you'll be doing will help you sort it all out so just that's a guideline but it doesn't necessarily mean anything so so it's about keeping secrets right usually well in my office usually we're keeping the sponsor secrets um in ott it's a different purpose for the most part we're protecting university of michigan confidential information that may uh find its way into a patent application and under patent law there are guidelines and rules that strictly determine when when information if disclosed is not not patentable and it's for different dearest you know united states has different rulings compared to other jurisdictions around the world so it's very important that the information disclosed to ott is um is protected before any public disclosure but even even if it isn't in a patent application and unpatentable it's still important at times to protect that software we often don't patent but it's it still could be very important from a commercial perspective you know to protect that information and that can be done you know by using a non-disclosure agreement so what's important to the central offices is knowing what the secret is so you know if we're going to be exchanging something if they're going to be giving us something um you know michigan foia law requires that we have some non-confidential description of what it is just so that if somebody makes a foil request we'll know that this is actually confidential and then you know we won't release it because it'll be exempt theoretically so a lot of times we'll get these agreements and there won't be a real clear description and if you look at the agreement itself that's not super helpful most of the time because it'll be a sort of kitchen sink sort of you know everything is confidential we'll edit those as central offices yeah so the question is does everybody know what a foia request is most people are familiar with freedom of information act as a concept most states have varying versions of this including michigan we are a public entity which means most of our documents that we create generate and process are public documents there are some exceptions and i won't get into the the peculiarities of the law because michigan's is actually a little bit different than a lot of states but essentially most of the transactions we deal with are public this is one of the exceptions this is about keeping secrets and if we do it right we'll be able to do that and these won't be considered public documents which is key to our functioning so there's one thing i'd like to point out it talks about this this about signing prior to exchanging information if you're ever in a situation in which confidential information was was exchanged between between the parties there is a chance under certain certain circumstances to to back date the um the nda to capture that information the risk there is that the parties don't know that the information needs to be kept confidential so during the time that it isn't protected you have no recourse the only other time we wouldn't do it is if it if it involved any aspects of patent law you know we couldn't um represent to the the uspto you know that information wasn't disclosed if it was indeed disclosed under non-confidential uh discussions but for many other instances it can be can be managed yes to add points sometimes we can save you if they've already had this exchange and by back dating the contract sometimes you can't so there's risk there yes there we could spend a lot of time discussing that point but in a disclosure for for it to be a consider a public disclosure their criteria i mean one that needs to the information needs to be enabling so that the information is disclosed whoever is taking it would be able to take that and reduce it to practice so if the information isn't enabling it still may be considered sensitive but it wouldn't prevent one from following a patent application that's one that's one part of it the other is to whom you're disclosing it to if it's someone who's very familiar with the area it could be considered a disclosure and a cda would need to be in place but if i was taking information from a let's say a nuclear physicist about a nuclear reactor i'm not an expert in that area so the information that i'm receiving wouldn't mean much to me if it was highly technical so that that also may not be considered a public disclosure but it's best to have these things signed if if it's patentable material potentially patent material before any information is disclosed and if you're not sure call ott that's that should be one of the takeaways actually if you if if you have something that you consider to be confidential that you would like to disclose to a sponsor call ott just to see if they want to do a disclosure on it it's it's real simple process you just give them a call they'll say yes or no and you know but but you really want to do that first so you know what you're dealing with you know whether that that ending needs to be in place so you know again that bottom point i sort of already made it's you know they're called cdas pias ndas there are tons of different ways you could describe it but again it all of them are or are not necessarily what we're calling an nda for our purposes so understanding the transaction is the key so here are some examples that information that may be considered confidential so data chemical structures are just an idea and that you want to be protected and for pub for publications or not if the information is meant for a journal student dissertation patent application there are different degrees if you will that your your that this information needs to be kept confidential the other one point here about unpublished patent applications that's a provisional patent application it's filed the information is not disclosed to the public for up to a year until it's converted to a non-provisional and even a non-provisional pending patent application is not published for a few months so during that time the information isn't available to the public and if you want to exchange that information with someone you may consider signing a an nda to protect the information so but of course once it's in the public domain then the information is no longer confidential and the nda doesn't govern the treatment of that of that information software code algorithms you know that's something that we wouldn't necessarily patent but it's confidential you want to protect that and there are other types of things like customer lists manufacturing process price lists that a vendor or a industrial partner may consider to be confidential to their to their business so it made on it'll be scientific information it could be things outside of customer lists and similar material so you can have a separate agreement that's a standalone agreement designed for you know these sort of transactions we're having discussions et cetera but especially when you're working with industry you will have the essence of those agreements in every single other agreement whether it be you know funded agreement or unfunded collaboration or material transfer there will be the same terms in all this agreement so once you understand it in general you'll understand exactly how it works in all these usually what happens is is the initial nda you sign will be for the early discussions but because almost every single agreement has its own terms and usually what happens is is the terms of the agreement the funding agreement or whatever the subsequent agreement is controls sometimes they're the same sometimes they're not and again it's a good lesson and read the contracts so when do you need an nda it's not always an easy question but um again the the the most common scenario is is you're going to talk to a sponsor they're going to have to give you confidential information or you're going to give them confidential information for discussions about potential research projects or potential licensing deals that is the most common scenario when will you need something else and again this goes back to regardless of what it says on the top ndacda pia if you're doing something else you even though you we may start and use that same agreement for internal processing administrative purposes it's a different transaction than an nda because again we've established that as a term of art so if we're receiving you know a data set software money all these indicates that a standard nda from our perspective may not be appropriate you know same if you're actually conducting research if you're doing testing if you're doing consulting all these things really it's a different sort of agreement at least the way the university perceives it because there are some other terms that are not typically in an nda that we will want to be in here once we understand that that's the nature of the transaction we'll be able to do that but without knowing that it's a lot harder and of course if you're doing something outside your role as a u of m employee the transactions don't go through our offices um you can consult your own council which is what we always recommend um and again make sure that you're reporting it to whatever you know conflict of interest committees require it but other than that that's not something that we'll handle so is an nda always always required and i think you know tony mentioned on this it's not always it's best to call ott or orsp and talk about what you what your intentions are in exchanging this information but if if the information is already in the public domain you don't need an nda if if there's no need to protect the information even if it isn't in the public domain um don't don't sign an nda often you know when you're talking to third parties the first thing they want to do is sign an nda i wouldn't advise to do that you really will understand what the nature of the of the discussion is is it really important to sign the nda because with that comes obligations there's you need to keep data in files for years um under the nda it could be three or five years so it's added it's an added burden to yourself and to the university to take this information and um it's uh it's not not advisable so understand what you're what you're getting into before you asked to put an nda in place so that's a great point and it's there's a sort of unfortunate side with working with a lot of industry sponsors because some especially some of the smaller ones ironically consider everything they own touch etc as co their confidential information and sometimes they won't even have any discussions without an nda so understanding when that scenario is there and they're insisting upon it of course we'll do it but ed's got an excellent point you know you can oftentimes have great deal of discussion without actually getting to that level so yes so just choose wisely okay question in the absence of an nda is marking something confidential so the question is in an absence of an nda marking it confidential is there protection the answer is no and the reason is is that there the parties don't understand the um the treatment of that information and um under what what what are exceptions you know for for releasing the information all that is discussed in an nda there's also a remedy you know if the contract is breached in any way what's what's the remedy to the party that's damaged and so many mda's ndas contain information so you can't rely on stamping it in fact um at times you know we receive information stamp confidential from a third party in the absence of an nda and i usually will not look at it in detail i'll just notice it stamped i'll call them up and let them know that we do not have a non-disclosure agreement in place so i'm i'm not going to read this information if you want me to read it either unmark it or let's sign an nda if it's necessary yeah there's this is a very in-depth legal answer that goes into when you can form a contract but something we're going to get to is there's a good chance that unless and if you know specifically to the contrary none of you can sign an agreement on behalf of u of m that being the case somebody giving you uh something labeled confidential you can't even argue that there was you know there was an oral agreement because you're not able to bind u of m so that's exactly ted's point so yeah when do you need one um again this goes to when you really have confidential information to exchange either you personally u of m or the sponsor um you know you get to the point of discussions where really now you need to know some chemical formula or some sort of you know proprietary piece of data before you can actually determine if you want to work with this company if you're able to do what you think you want to do etc and that's the point in which it's most appropriate again you know we have some flexibility so yeah there are so some companies their entire commercial activity is based on trade secret and confidential information so it's the only way uh to protect um to protect the company it's not a it's not a good position to be in but if it's not patentable um because they choose not to patent it or if it's unpatentable material based on prior art but it's still valuable to the business they'll require an nda i mean one one that's example of confidential information for business is the recipe to coca-cola it is not uh it is not uh patented but the recipe is secret so they they've done a pretty good made a pretty good business out of that recipe by just keeping it keeping it confidential and of course one of the advantages of doing something like that even if you could patent it is that the protection lasts forever as long as you follow all the rules of trade secrets so that's why some of these companies are very serious about the obligations of these agreements because especially if it's only a trade secret and it's something that's not patentable that's their bread and butter that's that's their existence and so if you if you were to you know release that somehow that's that's that's a real bad news for them so you know obviously you guys didn't go into law so but what's sometimes useful is just understanding the different sections so you can know at a glance what what you can pay you know more attention to and what you don't need to pay attention to you know some of the sections about the obligations you know do you have to return it can they request that you return or destroy it that's something pretty common in these and you'll definitely want to know you know the ownership should be obvious and most of the time it is you know if they're giving it to us they own it we give it to them we own it um you know we'll we'll spend a lot of time in our offices arguing about oral scope closures but you know generally what michigan law requires is that you in advance tell them that it's going to be confidential give it to them and follow it up in writing you know within 20 business days the term is how long we have to treat this confidential um generally speaking we want some limited time period it's supposed to be reasonable in relation to the nature of the material which when sponsors giving us their confidential information we have to take their word on it because we don't really know the miscellaneous legal provisions is we're spending an awful lot of our life so the question was is if it's a trade secret the time period is immaterial what do you do that's an excellent question and trade secret law still applies so there are times when the sponsor requires that the confidential period be indefinite for that very reason and we can accommodate that michigan law can accommodate that so that's something that we do yeah i don't think there would be any instances that the university has trade secrets that's would you agree tony i mean as opposed to confidential information that's a good question you know what i used to think that there wasn't any but i think u of m does have some particularly with stuff um you know that we can't patent um well that i don't know that theoretically maybe an example would be a proprietary database so let's say you've been doing research should be collecting data right the data itself is not hipaa data there's no rules related to that and theoretically all that data is publicly available because it had been published over time but you've been aggregating it into a database and that database is very valuable but it's not patentable it's really not copyrightable for any practical purposes but we want to keep it confidential in many instances so that might be one of u of m's few trade secrets it's it's it's probably it's a very it's it's a great exception even if it does it something that we need in this room not worry about it's basically confidential yes yes u of m can agree to it if if that's the scenario and and yes you'll want to tell the central offices because we'll want to evaluate that so this we've tried to um demystify one one aspect of of of the terminology of you'll hear a one-way nda in a two-way nda so there are two types of one-way uh non-disclosure agreements um same document but it's it it differentiates between the receiving party and the um the party that's revealing the confidential information so a one-way outgoing nda would be if someone at the university of michigan or a company was exchanging their information to to a recipient so that would be one way going out from the company or one way going out from the university of michigan um a two-way both parties are are exchanging confidential information so that's important to know because often you know you'll request a one-way nda or a company will request a one and one-way nda we need to determine is what party is uh disclosing and what what which of the parties are is receiving uh the the information yeah that's that's an excellent point especially when you're dealing with one of our offices knowing that yes in fact we are both disclosing and receiving and the reason this is sort of important and knowing when we're not because so for example my office orsp will handle in you know incoming sponsored confidential information but a lot of times a sponsor will want to give us a two-way nda so when we receive that we say oh well what are we disclosing but if you let us know like when you process you know go through the youth system or process this you know say it's a 2a nda but we're not disclosing anything that's all we need to know and then we'll just process it like that and in the sometimes the sponsors are just trying to be helpful and in a way that doesn't necessarily help us so of course yeah i had already covered this two-way you've got disclosures going both ways so um the notes we have down here um you know so if you think you have confidential information go to ott see if you want to make a disclosure if not again just let us know because if if we're disclosing something that's really not something that um considers confidential not something that we would do a disclosure on or us people still handle the nda but just let us know that say you know it's a two-way we're gonna be disclosing talk to or you know ott and they don't want to make a disclosure at this point this is great information for us in how we review these and negotiate these so it's really good information it also helps our offices figure out who handles these and it's it's unfortunately less clear than we'd all like it to be sometimes all right so sometimes the especially when you're dealing with smaller companies they'll want uh they'll even ask if we can send them our nda and we have uh we have links that have our template ndas if they're willing to sign our template nda without edits beautiful it's it's the smoothest transaction possible you know you have them sign it give it to us process it as ufo we'll get it unedited and signed by them we'll sign it and literally the transaction it goes super smoothly when you're dealing with bigger companies they'll almost never ask for this they've got their own template agreements and frankly that's where they want to start but ask um it never hurts and or they'll tell you a lot of times they'll just give it to you and say hey i think we need to go and get an nda in place so it's much easier for the university of michigan if we use our template often at times we'll we'll get a an nda from a third party and it requires a lot of negotiation and a lot of time so if our preference is is try to use our template if they absolutely refuse um then we'll um we'll we'll attempt to negotiate the terms and conditions of their nda but it's time consuming yeah and yeah i'm sorry what kind of time is like approximately so the question right for sure so the question is is how long does it take u of m to process these and the answer is it depends and the core reason of why it depends is so we get a ufo with an nda attached to it to our office right we can get to it relatively quickly but what we can't promise is how long it's going to sit over the sponsor there are companies who are extraordinarily responsive they'll be on this and they'll get it back to us it and it's a really smooth transaction you'll have other companies and i have a couple in mind which i'm not going to name names which you know they may have you know combination of things they have overworked legal staff um also to get into the nuts and bolts a lot of times the person we're sending the contract to is not an attorney and so what happens is is they're not authorized to accept a lot of the changes that we're requesting especially when we start with their template which means they kick it back to us we can tell right away that they're not authorized then we have to escalate it to the next level so all this takes time if that's required again ndas don't tend to take that long but they can depending on the sponsor so you know basically saying you know hey we got an nda and uh it's got to be signed for a meeting tomorrow we'll do the best we can the nda yeah the end the nda does not have to go through a lot of units and department approvals like an actual funded research like a path so it does not need to re yeah it does not require that level of approval but if it's a time sensitive request um you should make that known let us know let us know and and what we what we can do is in the course of the negotiation we can let you know if we feel what's going to be done in a week two weeks or two years okay we'll have we'll have a feel for it how quickly we can get it done thank you so again just a link to uh the template ndas that we have ours are very simple very to the point and really all you really need for protection of confidential information um sponsors don't always agree so that's where some of the fun comes in so how does ott and orsp manage requests for ndas it's a little different um but i think the first point is about what's the underlying purpose and we discussed this earlier and the characteristics of the information to be disclosed so we need we need that to determine whether it's something that orsp will take take on or ott so in general if u of m information is going out or if there's a two-way in which information is going out and coming in that would be ott if the information is coming in confidential orsp just in general yeah but make sure you're sharing the purpose of the transaction just in case we're going outside of the zone which we would actually consider to be an nda because you had mentioned earlier about the approvals things that are outside of the standard nda the way u of m views it do require often require more approvals and that's part of the reason why it's a different transaction for administrative purposes so we also you know just read the nda to ensure it's in compliance with our policies those are published i believe tony and state and federal laws negotiate acceptable language and then signs the nda so there are sign there's signing authority within ott and orsp for signing ndas outside of those groups for this purpose no one else has signing authority chairman of departments don't have signing authority professors in the departments don't have signing authority and that's um per university of michigan i have a letter from tim salado that says i can sign unfunded agreements under their purview of my office it's very specific i can't sign anything that has money attached to it so if any of you do have that authority you would know it you would have some sort of authorization which to the point so yeah there's actually a standard practice guide on this as there are most things so the processes for our two offices are slightly different um uh orsp because almost everything we do goes through erpm you know we've got the ufa system in erpm you'll want to work with your research admin or your you know your departmental research amen they'll help you get this started and process this it does not require a lot of approvals but the better information you can get us the easier it's going to be for all because a lot of times i'd see more than half of these that we receive at our office we have to respond back saying hey can you please give me more information on x and y and that takes everybody an additional transaction so um but we of course want to get it right so we'll keep doing that so better information get us the better off we'll all be and then ed can tell you a little bit more about their process yeah in the next slide please so we don't ott does not require uh the use of um e-research to submit a request for an nda you can call us called the representative for your group the ott license specialist if you don't know who that is if you go to the webpage it lists the licensing specialists in their areas of responsibility in the absence of that just call the office and just speak with someone and let them know what you're interested in and they will assign someone to that nda they'll get back in touch with you very quickly and start the process so an email or a phone call we'll get it we'll get it started and that's both for that's for confidential information again that's going out in a one-way or a two-way non-disclosure agreement in which the parties are exchanging information confidential information so and i just spoke briefly today the two-way nda is oftentimes going to be ott particularly what you're looking for is whether or not there's a disclosure number and again this goes back to if you think you've got something confidential call ott to see if you need a disclosure number if you don't have a disclosure number even a two-way will go through orsp otherwise it would go through ott so obviously this is outside the scope of this presentation but it's just a a prompt to contact your research administrator because that's what they do they help you put these through the system of course we have additional resources links that i believe everyone's going to have a copy of this questions so one thing i will say is before in my experience and i've been doing this for about 20 years managing contracts and ndas and research collaborations not here at the university of michigan but in industry it's really important to know who you're dealing with and i mean who you're dealing with there the integrity you know of the of the individual or the company their track record for working in in relationships in which confidential information is the starting point for a discussion and and why that's important because to monitor comp the disclosure of breaching confidential disclosures nearly impossible you may you may never find out you may find out when it's too late so you can't really depend upon a legal contract uh in its on itself to to protect the confidential information it's basically uh you know it's a warning you know to the parties that if the information is disclosed there are legal um potential legal ramifications for doing it but short of that it's very difficult so if you know who you're dealing with it it goes a long way in making the decision when and what to disclose under a cda you also nda you also don't need to tell everything about your your project or your confidential information you can do it in stages give a little bit decide whether the parties are interested and then can continue to disclose the information and likewise if you're sitting receiving information you don't have to take information if you choose not to take it you could just simply say that i feel uncomfortable taking the information the information's out of the scope of the description of this of the nda so if you're talking about a new braking mechanism for an automobile and the parties to start discussing braking mechanisms for airplanes it's clearly out of the scope and you don't need to take the information you'd probably choose not to do it so there's some there are ways of managing the flow of confidence or information and that's that's really very very important don't depend upon the legal contract to protect the confidential information alone you have to use common sense and uh in good judgment no that's an excellent point and again outside the scope of this in general but something to consider is if you're in these discussions and someone's giving you confidential information which becomes clear to you and this is not going to be obvious but sometimes they will actually tell you when they tell you this is important that something is export controlled we can still do the transaction it's just very important for you more which is now holds the export control compliance arm to know about this and for our office to know about this so if that comes up because we have a lot of what the export control regs consider for nationals you know so just you know just be on guard for it so we had um we just put together a few case studies you know just to discuss and you know maybe we can just work through these and can offer your your ideas so the first one is a grant agency informs you that your grant application will not be published but the reviewers are not required to sign an nda so in your in your grant application you have a lot of confidential information that's going to go into it could go into a patent application so is that information protected under any confidentiality arrangement implied or otherwise would you be able to declare that the information wasn't wasn't a public disclosure and that you could put that in a patent application and it can be uh considered patentable do you have any thoughts about that well it is but you know a lot of times i think it's lost you know on our faculty and and inventors and researchers they're you know they put an r01 in um they they submit grants to foundations that is um that is technically a public disclosure so um what does that mean well let's say 10 years later it's a it's a farm it's a comp structure for a pharmaceutical and someone out there in a generic company or someone else is interested in that compound they could do due diligence and look back and and maybe find some record of that a structure being disclosed prior to the filing of a patent application so technically they could they could move to have that patent invalidated due to a public disclosure now someone is not going to do that for if the if if it's um no not a commercial product or someone's making a thousand dollars a year selling this stuff but if it's a billion dollar drug and someone's interested in invalidating a patent they could do that so it's just it's just something to consider yeah that's that's a great point and this is a scenario much more common in sort of you're dealing with federal grants uh if you're dealing with industry sponsored research what is what is almost always a requirement is that before you publish you let them review and comment which means they're looking to see if they think anything's patentable so usually the patent protection aspect is covered more routinely in the industry funded agreements that's not always the case in the federal side because you just don't have the same considerations so to be safe before put into grant applications or submit manuscripts even that manuscript won't appear in print you know for months uh contact ott and discuss the information that's going to be disclosed and you know we could if it's uh potentially patentable we could see a a patent application could be filed within days just to protect the information okay the other the another is about a third party wants to copy your provisional patent application but isn't willing to sign an nda so as i mentioned earlier a provisional patent application is is a placeholder for a priority date it gives you a date that you're first to file the application is not reviewed or examined by the united states pto it sits there for a year that allows the inventor to make improvements or further research to define the invention but it's not the application is not published so during that time while you have your patentable material potentially patent material the priority date established and you could make a disclosure and it doesn't it doesn't cause any problems with the review of the application nevertheless it's still confidential so if it was to be revealed to someone while that provisional is pending they could begin working on that idea up until the time that your your public your patent publishes which everyone could work on to it in fact they could work on it until the day that it's um it's actually the claims are actually issued so you don't want may not want to give someone a head start in competing in the area by providing a provisional application without a non-disclosure agreement so i'll take this one okay so u of m an engineering firm signed a two nda for the parties to discuss a braking system for a subway train conversation switches to braking system for an airplane so the answer is what did the agreement say well did it say subway training or did it say we're going to have discussions for the purpose of looking at future research proposals so some of these are in very broadly some of them written very narrowly and usually that's on purpose but not always so sometimes the companies are actually they want to sort of very specifically specify the nature of the transaction they don't want it to cover everything but there are exceptions there are companies who are interested in maybe multi-disciplinary areas in which case you're going to talk to multiple faculty about multiple things and so they want a much broader sort of description of purpose so knowing what the nda the scope the purpose of what it's covering can help you in the situation knowing whether you should you know just keep talking or stop talking okay yeah that's a good question so the question the the question is once the invention disclosure is made and the patent application is filed is there any protection uh during that period of time is that is that the question well under patent law there is no protection there is no protection until the claims are reviewed and allowed by the the patent jurisdiction then that could take up to three years but what it does do it often discourages others from working in that area so if it's an area that would require you know a lot of money to develop and um in a in a commercial entity industrial if a corporation is looking and seeing that these three or four published pending applications are there they may not be inclined to work in that area thinking that those those claims will be allowed so it's um you can see on some products it has patent pending so that that's basically a warning letting people know while it isn't patent has an issue we filed patents on it so you better be sure that you want to try to reproduce this article this device or whatever because once the patent issues we'll defend we'll defend the claims but you're not you're not protected patents are you know serve a few purposes and uh you know one is it gives an individual a monopoly you know to practice over a period of 20 years the the obligation in return is for teaching so the application uh patent application and the patent application has to be written in a way that someone who's familiar with that area could reproduce and and test whether or not those those claims uh can be reduced to practice it has to be written in that that that precisely and so that's the um that's the if you will um you know in return for the monopoly you have to teach so during that so that those applications are pending people can read them they can do what they want with them until those claims and then it's up to you to enforce the claims or not but it's a good question i often have faculty think that they're protected because their application is is submitted um the only thing is protected is the filing date that you have a priority over someone so if someone would defile an application a day later on the exactly the same material you would have a priority date years ago it was on first to invent people would go back to lab books and look to see when someone wrote that idea down in in a lab book and it could go back years but no longer those that's changed in the last this one this one's interesting it's under a one-way nda you disclose information to a third party on the design of an electronic part for a mobile phone three years later you discover that your design claimed in a um university of michigan pending patent application was disclosed in a poster presentation by a former employee of the third party to the nda so you signed this contract with a small small company five six people see the design two years later one of the scientists engineers leave goes to another company they show up at a meeting and your design is up on a board what do you do so one thing is you need to notify someone to take a look at that nda and also take a look at the material that was stamped confidential to make sure that the design was stamped and and also you know when when that information was disclosed by the university of michigan once that information is disclosed the individual is free um to um to use that information in the public so there are exceptions to confidentiality that we won't review now but one is if it's in the public domain the obligations are no longer in effect so it could be that the individual was um was free to use that information or it could mean that they um they stole it and they used it for their own purpose for the new company but the challenge is is once an individual leaves a company that has signed the nda they don't know what what the individual is doing somewhere else so it's hard to for them to monitor and force the agreement that they signed with you so it's just something to keep in mind u of m has the same problem with incoming information because a lot of times sponsors will want us to make sure that our employees are bound even after they leave their employment and of course we can't do that once you leave u of m employment you're no longer an agent and we're not responsible for you and we can't obligate you necessarily to these so we just get rid of those provisions typically so i think that's it yep you