CONFIDENTIALITY AGREEMENT

 

THIS CONFIDENTIALITY AGREEMENT (the "Agreement"), dated as of ___________________, by and between [company or inventor], a [state] corporation (["company short name or inventor name"]) and L. Tim Pearson, United States Patent and Trademark Office registered patent agent number 53,446  ("Patent Agent"), regarding the disclosure of information from [company] to Patent Agent.

 

WHEREAS, [company] possesses certain information that is non-public and proprietary in nature relating to products, development, construction, and use of processes and equipment used in the course of its business ("Confidential Information"); and

 

WHEREAS, Patent Agent desires to receive and [company] is willing to disclose Confidential Information for the purpose of preparation and prosecution of patent applications (“Permitted Use”).

 

NOW, THEREFORE, in consideration of the mutual promises contained herein, [company] and Patent Agent hereby agree as follows:

 

1)     [Company] will disclose to Patent Agent Confidential Information and Patent Agent will accept and hold Confidential Information in confidence in accordance with the provisions hereof.  The parties hereto agree that Confidential Information may be in oral, written, observable, graphic, pictorial, physical, computer-readable or any other form or medium.

 

2)     Patent Agent will keep Confidential Information confidential, and without the prior written consent of [company], Patent Agent will not:

 

a)   Distribute or disclose to any other person, firm or corporation any Confidential Information disclosed to it by [company];

b)   Permit any such third party to have access to the Confidential Information; or

c)   Use the Confidential Information disclosed for any purpose other than for the Permitted Use; provided, however, that as to this section 2, Patent Agent agrees to transmit Confidential Infor­mation only his agents and employees who need to know such Confidential Information for the sole purpose of the Permitted Use and who have agreed to be bound by the terms of this Agreement.

 

3)     In the event that Patent Agent is required in any judicial or governmental proceeding other than during the prosecution of a patent within the United States Patent and Trademark Office, to disclose any of the Confidential Information, Patent Agent will give [company] prompt notice of such request so that [company] may seek a protective order. If, in the absence of a protective order, Patent Agent determines that it is required to disclose such Confidential I­nformation, he may disclose such Confidential Information without liability hereunder; provided, however, that Patent Agent gives [company] written notice of the portion of Confidential Informat­ion to be disclosed as far in advance of the disclosure as is practicable.

 

4)     Confidential Information does not include information that Patent Agent can clearly demonstrate falls within any of the following:

 

a)   Information that either is legally in Patent Agent 's possession or publicly available to Patent Agent prior to the disclosure of such information hereunder;

b)     Information that, subsequent to its disclosure hereunder, becomes publicly available to Patent Agent without any violation of this Agreement by Patent Agent; or

c)   Information that becomes legally available to Patent Agent on a non-confidential basis from any third party, the disclosure of which to Patent Agent does not violate any contractual or legal obligation such third party has to [company] with respect to such information.

           

5)                                         For purposes of complying with the obligations set forth herein, Patent Agent shall use efforts fully commensurate with those that he employs for the pro­tection of his own privileged and confidential information.

 

6)                                         Upon the request of [company], Patent Agent will return all of the Confidential Information and any notes, correspondence, analyses, documents or other records prepared in connection with a review of Confidential Information, including all copies thereof, then in the possession of Patent Agent or his agents or employees, either furnished by [company] hereunder or prepared by Patent Agent.  Such return, however, does not abrogate the continuing obligations of Patent Agent under this Agreement.

 

7)                                         Patent Agent understands and agrees that the value of Confidential Information survives the expiration of this Agreement, and agrees to refrain from publishing or publicizing such Confidential Information.

 

8)                                         This agreement shall promptly and automatically terminate upon the lapse of a period of five (5) years commencing upon the date hereof. However, the commitments set forth in 1-7 above shall, with respect to any particular disclosure, continue indefinitely beyond the expiration of the agreement.

 

9)                                         Patent Agent agrees that, except as expressly stated herein, Patent Agent has no right or license of any kind regarding Confidential Information received hereunder.

 

10)                                      This Agreement shall be governed by and construed in accordance with the laws of the State of Indiana.

 

11)                                      It is understood that this Agreement does not obligate [company] or Patent Agent to enter into any further agreement.

 

12)                                      This Agreement may be executed in counterparts, each of which when taken together shall constitute one and the same instrument.

 

IN WITNESS WHEREOF, each of the parties hereto has caused this Agreement to be executed by its duly authorized officer as of the date first written above.

 

                                                            [company]

 

                                                                                                           

                                                                                                                                                            _______________________________________

                                                            [Company Representative]

                                                                                                           

 

                                                            Patent Agent

 

                                                                                                                                                            _______________________________________

                                                            L. Tim Pearson

                                                            Patent Agent