US Federal Law 35 102 (E)

[racheltspoon]

Two Questions

If an NDA does not have any mention as regards term of expiration, can we assume that that non-disclosure agreement if properly signed and dated is valid in perpetuity?


Given that the Canadian Patent Pending (see dates below) was assumedly published 18 months after being on file in the Canadian Patent Office, can we thereby assume that this public disclosure is legally binding and capable of invalidating any subsequent patents on the same broad and narrow claims?



US Patent 1 Filed 4/87 (rebutted twice)/
Canadian Patent Filed in 4/88
NDA Signed with Company X 10/88 (there is no term of expiration date on the NDA…
Company X filed patent in 7/1991
American Patent 1 Abandoned 11/88
Canadian Patent Abandoned 4/93
Company X received U.S. patent 3/94

 

[divgradcurl]

You'll need to talk with a lawyer to review the specific language of your NDA, but as a general rule contracts are not perpetually enforceable, even if they don't have an expiration date. Without an expiration date, the court would most likely enforce a "reasonable" term for the NDA to be in effect.

Abandoned applications generally cannot be used as prior art, except in specific circumstances, such as where the abandoned application has been "disclosed" in another application. See MPEP 2127 for more information. The MPEP does not specifically discuss abandoned foreign applications, but the wording of that section suggests that abandoned foreign apps would not be usable as prior art references to invalidate a US patent.

You are now really getting in to fact-specific and detailed stuff. You really ought to consult a lawyer experienced in this sorta work to get a more definitive answer.

 

[divgradcurl]

BTW, what do you mean by "candaian patent pending" -- according to your dates, you abandoned the Canadian application as well...

 

[racheltspoon]

An Attorny

Are you an attorny who specializes in this type of thing?

 

[divgradcurl]

No. I'm a third-year law student and a patent agent. I work at a firm doing patent work, but I am not an attorney, just an agent.