Protecting Your Ip With Agreements

Protecting your ideas when working with other people
Jennifer S Warren
JS Warren PLLC
January 23, 2010

WHO: Potential points of loss

WHO:
Eighty percent (80%) of IP losses are due to employees and contractors
Suppliers are a frequent source of industrial intelligence gathering
Big customers often try to work around you
LESS PROBLEM: Professionals who need your trust to avoid their own ethical issues: accountants, attorneys

WHAT : Decide what to protect

WHAT :
Protect your secrets and proprietary information
Protect your right to use your intellectual property
Protect your right to license your intellectual property in the future.
Remember to protect information that belongs to others, as well

When
Before disclosing information to outside parties
Follow up with a reminder after disclosure
When hiring new employees, consultants or contractors
Follow up with a reminder when they leave or when job is completed

WHEN: POTENTIAL PATENTS
In the US, you cannot disclose or use your patent more than one year before the filing date.
PROCESSES cannot be patented, if used more than one year before filing EVEN IF you cannot tell what process was used
Outside the US, most countries do not allow ANY disclosure before the filing date.
PROCESSES may or may not be patented if used before a patent application is filed.
TALK TO YOUR ATTORNEY

WHERE
Know where your information is
Computer?
On factory floor?
In a proposal?
In someone’s head?
Control where it goes

WHY
Protect from copycats!
Protect ability to patent or register trademarks and copyrights
Stay ahead of the competition
Protect future value of any licenses

HOW:
Work with people you can trust
Get confidentiality in writing
Review any agreement that the other side drafts very carefully
Be specific in describing the type of information that needs to be protected
TALK TO YOUR ATTORNEY

Confidentiality agreement
Also called “Secrecy” or “non-disclosure” agreements
Consider WHO, WHAT and WHEN
Do not use a standard form without reading it.
Insist on getting the agreement signed by someone who have the right authority to represent each side.

WHO: Decide who is involved
Check all agreements to see who the parties are
Look to see who the other side wants to share information or license rights with
Be careful of nonspecific “subsidiaries” or “related parties”
DO YOU KNOW WHO MIGHT GET THE INFORMATION?

WHAT: Decide what to cover
Define the project or reason for disclosing
Non-public information
Ways of combining public information
Prohibit USE as well as DISCLOSURE
If necessary, include penalty for use
Make certain that any confidentiality agreements are specific about what will be disclosed
(not “any and all information”)
Do you need to prevent reverse-engineering or analyisis?

WHEN: IN the Agreement
When will you be disclosing information?
When will it be okay for each side to disclose or use the information?
Until it is disclosed by a third party?
Until it is published by the owner?
When the owner gives permission?
For 2 years? 5 years? 10 years? From when? The end of the project?
Can information really be protected forever?

PROTECTING YOUR RIGHT TO USE and LICENSE your IP
Protect your confidential information
Look out for agreements that take away your rights
Contractor agreements
Joint development agreements
Government funding
Look out for agreements that allow others to use your rights for free
Internet user agreements
Marketing or promotion agreements

PROTECTING YOUR RIGHTS to YOUR IP
CONTRACTORS and CONSULTANTS: BEWARE
You do not necessarily own all the IP rights to work they do for you.
(Very big companies have made mistakes on this)
You and the contractor/consultant do not always have the same rights in every state or country where you operate.
A GOOD TIME TO FIND AN ATTORNEY

PROTECTING YOUR RIGHTS TO YOUR IP
JOINT DEVELOPMENT AGREEMENTS
Usually involves existing IP on each side and new IP that the project will create.
Protect your existing IP
Negotiate future IP
Avoid assigning future IP based on inventorship
Think in terms of lead times rather than exclusivity

UNIVERSITY INVENTIONS: BEWARE
Who owns the patents?
Many grad students are, or should be, listed on patents
Funding a professor will not necessarily get you rights to the patents
Many professors have negotiated new spin-off companies
Many state universities have legal limits on selling or licensing patents
State universities may be protected from Federal IP laws by the 11th amendment

GOVERNMENT FUNDING
If you decide to seek government funding, read the regulations and laws that apply. Ask the funding agency questions.
Generally, US governments funding requires you to commercialize first in the US, and allows the US to use it without royalty
Check with the entity you want to work with to understand its obligation to protect your confidential information

IP rights can show up anywhere and may not be labeled in a special heading
Sales and purchasing agreements, warranties
Contract manufacturing
Material transfer (sampling or demonstration s)
Analytical services
Employment (your former employers)

Make certain any marketing or promotion agreements have limited times for using your trademarks or copyrighted materials
READ any click-through or click-wrap licenses. They are generally enforceable.
See what the internet service provider, software company, etc. thinks they own.
Determine if that will be acceptable for you.

Key points to remember
Understand which information is critical to keep confidential or secret.
Do not just sign the other sides’ agreement form to get it out of the way. Read it and ask questions. (
Look for IP and confidentiality clauses in all agreements
Make friends with one or more IP attorneys

Protecting Your Ip With Agreements

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