We've been speaking with a company that has asked us to slightly modify and customize our patented, branded product line to suit their needs. How do we protect ourselves and avoid the risk of having them take advantage of our efforts by possibly taking what we'll be creating, then shopping around to get it manufactured themselves -- effectively cutting us out of the equation?
Kendra Kroll, principal and founder, Portapocket by Undercorver Solutions LLC
You are right to think proactively about your intellectual property (IP). You have already taken steps to protect your inventions through patents and aspects of your goodwill in the product through trademark. Without access to your IP portfolio, it is difficult to provide an answer directed toward the specific protectable aspects of your property that will be at issue with the product modifications. However, it appears that you want to ensure that your potential new client understands the nature of your IP and to provide some level of assurance they will not infringe.
You might wish to add a layer of contract law protection before you develop the prototype. Depending upon the specific issues involved, this might be accomplished through a product development and licensing agreement or by including a covenant not to compete in your licensing agreement. In either case, you will precisely define the IP involved by identifying both the patents and the trademarks.
This puts your potential client on notice and alerts them to the nature of infringement should they find someone else to manufacture the product. The contract might also include provisions concerning the destruction of the designs or prototypes you create and an agreement to not reveal them to any third party.
This is a complex question. My best advice is to seek the opinion of a lawyer who specializes in intellectual property to help you with the particular details.