Comment by dctoedt
6 years ago
But different companies use different forms of visitor NDA — and lawyers purely love to load up contract forms with "protective" language to show how knowledgeable they are. This can be dangerous to counterparties; Stanford, in effect, lost part-ownership of a patent for HIV diagnostic testing because a Stanford investigator signed a visitor NDA that included IP-assignment language [0]. The case went all the way to the (U.S.) Supreme Court (about a tangential statutory issue).
The lesson: Always RTFA before signing it (where the A stands for the agreement), because sadly there's no such thing as an accepted, named standard.
[0] https://en.wikipedia.org/wiki/Stanford_University_v._Roche_M...
Your comment is incredibly misleading. This wasn't the "you came by our office for lunch" NDA. This was the "you worked here for a while, and we trained you and taught you our techniques, which you later used in an invention" NDA.
> This wasn't the "you came by our office for lunch" NDA. This was the "you worked here for a while, and we trained you and taught you our techniques, which you later used in an invention" NDA.
Citation for the first assertion? Here's an excerpt from the Supreme Court's summary of the facts: One Dr. Mark Holodniy [0], who had recently joined a Stanford lab as a fellow, "signed a Visitor's Confidentiality Agreement (VCA). That agreement stated that Holodniy "will assign and do[es] hereby assign" to Cetus [predecessor to Roche] his "right, title and interest in each of the ideas, inventions and improvements" made "as a consequence of [his] access" to Cetus." [1] The trial court's opinion [2] states that Holodniy signed the VCA "[a]t the time he began working at Cetus"; it wouldn't be the least bit surprising if he did so without first getting the VCA reviewed by the Stanford legal department, because after all it's just an NDA, right?
Yes, the Stanford fellow worked at Cetus for nine months learning various techniques — which were published — and, months later, used (at least some of) the techniques when working with his Stanford colleagues.
The point is that a relatively-junior Stanford employee — as a result of having signed another organization's "Visitor Confidentiality Agreement" — in effect gave the other organization a get-out-of-jail-free card: The other organization was allowed to infringe Stanford's patent on a later invention by other Stanford investigators because the junior employee's own contribution to that invention qualified as a "consequence" of the employee's previous training at the other organization.
> Your comment is incredibly misleading.
You're entitled to your opinion, of course. The lesson is still valid: RTFA before you sign it — because otherwise you might be giving away valuable rights months or years down the road.
[0] https://profiles.stanford.edu/mark-holodniy
[1] https://scholar.google.com/scholar_case?case=145195436028699....
[2] https://scholar.google.com/scholar_case?case=776650368736548...
Citation for the first assertion?
You're making it sound like he just popped in one day and had a sandwich and a chat with the people working there. Your own citation, though, is to "the time he began working at Cetus". The "visitor" NDA there is more like "visit" in the sense of "visiting professor" -- someone who will be there for an extended time, working alongside the other people there.
And your original link to Wikipedia's summary says:
The Stanford lab in which Holodniy worked had been working on developing better HIV tests, and wanted to try the new PCR method, so Holodniy's supervisor had arranged for him to work at Cetus to learn the technique ... [a]fter completing his training at Cetus, Holodniy then returned to Stanford where he and other Stanford employees tested the HIV measurement technique.
If you work somewhere for a while and they give you training in the stuff they do, they're going to want you to keep that confidential and probably want to make claims on anything you develop as a result of what they taught you. You are heavily misrepresenting the word "visitor" to make it sound like he was only there for an office tour or something.
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