October 2010 - Business Law & Order - Eric J. Sosenko

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IP Protection Strategies (US and Foreign)

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October 2010 - Business Law & Order - Eric J. Sosenko

  1. 1. INTELLECTUAL PROPERTY TOOLKIT Eric Sosenko October 18, 2010 1
  2. 2.  IP Agreements  IP Capture  IP Protection 2
  3. 3. What is a toolkit?  Regardless of your pursuit in life, you approach that pursuit with a toolkit  Your toolkit is  Information, documents and procedures you rely one and utilize to fulfill that pursuit 3
  4. 4. When do you use a toolkit?  Knowingly or unknowingly, you have used different toolkits in your approach to:  College  Jobs  Start-ups 4
  5. 5. Why does a Start-up need a IP toolkit?  In the beginning, IP may be all it has  Many pitfalls to IP protection  IP issues are easier to resolve when detected earlier, rather than later 5
  6. 6. What does a toolkit provide to a start-up?  A toolkit provides a way for Start-up to  Capture IP  Document IP  Protect IP 6
  7. 7. Basics of IP Toolkit  IP agreement provisions  IP capture mechanisms  IP protection mechanisms 7
  8. 8. Basics of IP Toolkit  IP Agreements  Foundation Agreements  NDA (non-disclosure agreements)  Development Agreement  Employee Agreements 8
  9. 9. Foundation Agreements  What should IP provisions detail?  Contributions of background IP  Who is contributing what to the start-up  The “what” needs to be specifically set out  Ownership of foreground IP  Created IP to be owned by start-up  Ownership of IP upon dissolution  Background and foreground 9
  10. 10. Basics of IP Toolkit  NDA (non-disclosure agreements)  Solely for the purpose of disclosing information in furtherance of business  Two general types  Unilateral disclosure agreements  Information flowing one-way  Mutual disclosure agreements  Information flowing both ways 10
  11. 11. Unilateral Agreements  Disclosing party terms  Creates no relationship between the parties  All confidential and proprietary information remains that of disclosing party  No right to use disclosed information  Treat all disclosed information as confidential  Disclosures may be in any form  Disclosures need not be marked as confidential 11
  12. 12. Unilateral Agreements  Receiving party terms  Confidentiality provisions do not apply to  Previously known information (written or unwritten)  Independently developed information  Information properly acquired through other sources  Confidential information must be in writing and marked as confidential  Sunset provisions  Agreement only applies to information disclosed during defined period  Obligations of confidentiality limited in duration 12
  13. 13. Mutual Disclosure Agreements  Confidential Information flowing both ways  Disclosing party and receiving party terms  Treat as if both parties are the receiving party in a unilateral agreement 13
  14. 14. Non-disclosure Agreements  NDAs are not development agreements  For initial sharing of information  Only relate to background IP  Do not cover foreground IP 14
  15. 15. Development Agreements  Background IP Rights  Retained by originator  Joint venture  Other party will want license to use the background IP  Non-joint venture  No license to use background IP 15
  16. 16. Development Agreements  Foreground IP  Sole ownership or joint ownership  Joint ownership - sounds right, but problematic  Other side must join in patent activities  Other side must agree to enforce  Sole ownership with license to other party  Royalty free  World wide  Cost sharing provisions for IP protections 16
  17. 17. Employee IP Agreements  Hired to innovate  Obligation to assign to start-up  Ideas, expressions of ideas and inventions  protectable or not  conceived during employment  related to business of startup  first right of refusal for non-primary business concepts  Confidentiality obligations 17 Signed by employee
  18. 18. Employee IP Agreements  Hired to innovate  Confidentiality obligations  Signed by employee 18
  19. 19. Employee IP Agreements  Exit interview  Reminder of obligations  ideas conceived during employment  assist in securing protection  trade secrets  Signed by employee 19
  20. 20. Basics of IP Toolkit  IP capture  Invention disclosure form  Purpose  Written document of created IP  Aids in future decisions (seek protection; maintain as trade secret)  Aids in securing protection (first document patent attorney will review)  Accessible to all innovators 20
  21. 21. Invention Disclosure Form  Key provisions  General description of idea  Background of the problem being solved  Detailed description of the ideas  Closest known technology 21
  22. 22. Invention Disclosure Form  Key provisions  Was outside funding used?  Has idea been disclosed outside of the start-up?  NDA in place?  Manner of disclosure  To/by whom? 22
  23. 23. Invention Disclosure Form  Key provisions  Has idea been offered for sale?  to/by whom  When  Assignment to start-up  Agreement to assist  Decision on how to protect (trade secret or patent) 23
  24. 24. Basics of IP Toolkit  IP Protection  Different types IP  Patents  Trademarks  Copyrights  Trade secret  Different types of acquisition and protection 24
  25. 25. Trademark Protection  Protects the brand  Protection gained by actual use of the trademark with the goods  Registration is optional  Federal registration has benefits  Nationwide constructive use  Enforce via federal courts 25
  26. 26. Copyright Protection  Original expression of an idea  Manuals  Videos  Ownership agreement in writing  Work-for-hire trap  Registration is optional  Access to federal courts  Statutory damages 26
  27. 27. Patent Protection  Formal application process to obtain protection  Monopoly on the idea for 20 years  Utility patents  Provisional  Non-provisional  Design patents 27
  28. 28. Patent Protection  Provisional Patent Application  Benefits  Can be inexpensive  No required format  Can be done quickly (staple and file)  “Patent Pending”  Best to use when  Impending disclosure not covered by NDA 28
  29. 29. Patent Protection  Provisional Patent Application  Limitations  Offers no enforceable right  Operates as a placeholder at Patent Office  Requires enabling disclosure and best mode to provide basis for non-provisional  False sense of security  Future developments not covered  Public disclose may impact foreign rights  Non-provisional and foreign filing deadline begin 29
  30. 30. Patent Protection  Provisional Patent Application  Staged filing procedure  Ongoing developments  Quarterly staged filings  Updated with new embodiments  Updated with new developments  All four combined into non-provisional by 1 year anniversary date 30
  31. 31. Trade Secret Protection  Business information not readily known or perceived by other companies that gives the owning company a competitive advantage  Can be almost anything  Processes  Hard to reverse engineer  Hard to police 31
  32. 32. Trade Secret Protection  Business information  Business plans  Costs structures  Supplier lists  Target Customers 32
  33. 33. Trade Secret Protection  Document trade secret information  Inventions not seeking patent protection  processes  Restrict access 33
  34. 34. Gain IP Knowledge  Understand basics of IP  An informed business partner is always beneficial and attractive  Earlier identification of issues  Brinks Hofer Gilson & Lione  Primer on Intellectual Property  Toolkit with sample forms 34
  35. 35. Basics of IP Toolkit  Questions? 35
  36. 36. Eric Sosenko 36

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