How to Work with an Engineer Before Filing a Patent?

How to Safely Bring Your Invention to Life with a Third-Party Engineer

By JD Houvener, Patent Attorney and Founder of Bold Patents Law Firm

Turning an innovative concept into a tangible product is no small feat—especially when specialized skills are needed to build it. Whether you’re an inventor exploring new territory or an entrepreneur moving an idea toward market readiness, collaborating with third-party engineers, manufacturers, or prototype designers is often a key step. However, bringing others into your project introduces challenges, particularly in protecting your intellectual property (IP). Here, we’ll walk through the essential steps to successfully and securely collaborate with third-party professionals to bring your invention to life.

Key Steps to Safeguard Your Idea with Third-Party Professionals

1. Protecting Your IP with Contracts

The first step to safely working with a third party is a strong contract. Two essential components for IP security are confidentiality and ownership, often detailed in a Non-Disclosure Agreement (NDA).

Non-Disclosure Agreements (NDA): An NDA is a powerful legal tool that restricts the disclosure of sensitive information. In an NDA, you and the other party agree that any information shared between you will remain confidential. This agreement can be tailored to fit various business relationships—whether between individuals, entities, or a mix of both. Learn more about the importance of NDAs in IP protection on our NDA Information Page.

For an NDA to be effective, it must be enforceable in the jurisdiction where a breach may be pursued. Collaborating with an attorney licensed in your state, whether in California, Texas, or Florida, ensures your NDA is crafted to align with local laws and will hold up in court.

Working Agreements and Confidentiality Clauses: Beyond NDAs, integrating confidentiality clauses within broader working agreements can streamline the relationship between you and your engineer, prototype designer, or manufacturer. Working agreements typically include clauses on ownership of inventions and specify that any innovations created during the project are owned by you. Explore how to build effective IP contracts on our Contract Law Page.

2. Clear Inventorship and Ownership Provisions

As your invention takes shape, improvements or additional innovations may arise, creating a version 2.0. It’s essential to define inventorship from the beginning. Work-for-hire agreements or assignments specify that any IP resulting from the collaboration belongs to the hiring party—you. This approach keeps the rights to subsequent inventions or adaptations within your control, regardless of who contributes new elements during the development process. Check out more on our IP Ownership Guide for insights on ensuring your inventions stay yours.

3. Validating Your Idea Before Filing a Patent

Once your prototype is developed and refined, it’s time to validate the idea and move forward with a patent search. This step is crucial in confirming your invention’s uniqueness and patentability. At Bold Patents, we recommend a two-tiered approach to patent searching: a high-level overview followed by a detailed examination of existing patents. This comprehensive process uncovers any potential conflicts and highlights unique aspects of your invention that merit patent protection. Learn about our Patent Search Services for guidance in your patent filing journey.

4. Filing Your Patent Application

When you’re ready to file, you can choose between a provisional patent or a non-provisional (utility) patent. A provisional patent provides an early filing date and is an excellent option if you’re still refining your invention. It offers a year to continue developing your idea while “patent pending” status protects it from competitors. When your invention is complete, the utility patent locks in full protection of your idea for up to 20 years. Visit our Patent Application Overview to understand which type suits your invention best.

Takeaways: Making Your Collaboration Secure and Effective

Working with a third-party engineer can be a transformative step in moving from idea to reality. However, ensuring the security of your IP is crucial. Here are a few key takeaways:

• Secure Confidentiality: Use NDAs and confidentiality clauses to prevent unauthorized sharing of your invention.
• Clarify Ownership: Define inventorship and ownership early with work-for-hire or assignment clauses in your contracts.
• Validate with a Patent Search: Confirm the uniqueness of your invention before proceeding with patent filing.
• Choose the Right Patent: Whether provisional or utility, choose the right patent type based on your development stage.

Navigating the IP process can be complex, but at Bold Patents, we’re here to help every step of the way. Book a free discovery call with one of our IP attorneys today to discuss your invention and how we can support your journey from idea to product. Get started by booking your consultation here.

With Bold Patents by your side, protect your vision and secure the innovation you’ve worked so hard to bring to life.