Fundamental Intellectual Property Strategies

  • 113 views
Uploaded on

What Every Small Business Needs to Know About Intellectual Property …

What Every Small Business Needs to Know About Intellectual Property

  • Full Name Full Name Comment goes here.
    Are you sure you want to
    Your message goes here
    Be the first to comment
    Be the first to like this
No Downloads

Views

Total Views
113
On Slideshare
0
From Embeds
0
Number of Embeds
0

Actions

Shares
Downloads
3
Comments
0
Likes
0

Embeds 0

No embeds

Report content

Flagged as inappropriate Flag as inappropriate
Flag as inappropriate

Select your reason for flagging this presentation as inappropriate.

Cancel
    No notes for slide

Transcript

  • 1. Fundamental Intellectual Property Strategies: What every small business needs to know about Intellectual Property October 16, 2013 Jessica M. Mendez Samir R. Mehta © 2013 Armstrong Teasdale Teasdale © 2013 Armstrong LLP LLP
  • 2. Plan of Action Maximizing the value of IP requires protection: • Patents • Copyright • Trademarks • Trade Secrets • Contractual Agreements 2 © 2013 Armstrong Teasdale LLP
  • 3. Patents 3 © 2013 Armstrong Teasdale Teasdale © 2013 Armstrong LLP LLP
  • 4. Patents - What They Protect  Processes  Machines  Manufacture or composition of matter  Any new and useful improvement in these areas  More recently, business methods • Patentable In The U.S. • Not Yet Adopted Broadly Internationally 4 © 2013 Armstrong Teasdale LLP
  • 5. Patents - What They Give  Right To Exclude Others from: • Making • Using • Offering For Sale • Selling  Market Exclusivity  Bargaining Tool  Royalties 5 © 2013 Armstrong Teasdale LLP
  • 6. Patents – The Process General Application Process Varies >1 Year Patent Clock 6 © 2013 Armstrong Teasdale LLP
  • 7. Patents – What can they do for you?  Patents are 3-way tools for companies, especially small businesses  Patents have been heavily used to protect inventions • Significantly used in litigation by large companies, small companies, and non-practicing entities (NPEs)  What does your industry’s landscape like? 7 © 2013 Armstrong Teasdale LLP
  • 8. Patents and Small Businesses - AIA  America Invents Act in effect since March 16, 2013 • Most sweeping change to the patent system in 60 8 years  First-to-file replaces first-to-invent • Prior art is more global in scope • Grace period for one year after public disclosure and certain actions  Micro entity status • No more than four previous non-provisional patent applications • > three times U.S. median household income • 75% reduction in fees © 2013 Armstrong Teasdale LLP
  • 9. Patents – How to Live in a Changing World  Apply the rules where they exist  Think broadly  Think about the future  Be as specific as possible  Don’t paint yourself in 9 © 2013 Armstrong Teasdale LLP
  • 10. Patents and Small Businesses  Be aware of existing patents, whether you’re filing or 10 not • Proactively search for patents in your space  Receiving a demand letter • Read the demand carefully and be mindful of timelines • Consider contacting an attorney  Pay attention to rules on public disclosure • Many actions which you may not regard as disclosures qualify • Competitors cannot benefit directly from your disclosures  Provisional patents versus non-provisionals © 2013 Armstrong Teasdale LLP
  • 11. Patents - Why Small Businesses Need Them  Patents can be tremendously valuable for a small business • A good patent can add $1M to your valuation • A good patent can give you an M&A strategy • A good patent can let you redirect your focus via licensing • A good patent can hold back competitors 11  But you need a good patent! • Patents can be expensive • The landscape is rocky • Technology changes rapidly © 2013 Armstrong Teasdale • International protection is complicated LLP
  • 12. Patents – How to Avoid Workaround Traps!  Workarounds are always a problem in patents… workarounds can diminish the value of your investment  Consider what you want to protect  Business today often involves many players to consider • Your competition • Your partners • Your customers  Software patents do not protect code • Code is for copyright – it’s a different ballgame 12 © 2013 Armstrong Teasdale LLP
  • 13. Patents – Strategies for Small Businesses  Consider where your edge is • Is your business about the product, the execution, or 13 both? • Non-software companies routinely get software patents now  Consider the IP in your industry carefully • Innovation ≠ novelty • Some industries are crowded from an IP perspective, others are blue sky  If you have novel tech, a patent may help your valuation  Alternative path: Trade secrets © 2013 Armstrong Teasdale LLP
  • 14. Copyrights 14 © 2013 Armstrong Teasdale Teasdale © 2013 Armstrong LLP LLP
  • 15. Copyright - What it Protects  “Original” works of authorship “fixed” in a tangible medium of “expression” • Originality: originates with the author • Fixation: recorded in a medium that can be reproduced • Expression: does not include ideas  Examples: • Written Materials, Graphic Works, Audiovisual Works, Musical Works, Software 15 © 2013 Armstrong Teasdale LLP
  • 16. Copyright - What It Gives  Protects Works By Giving Exclusive Right To: • Reproduce • Make Derivative Works • Distribute • Perform • Publicly Display 16 © 2013 Armstrong Teasdale LLP
  • 17. Copyright - What To Do  Consider copyright registration • Simple, fast, and cheap • Not required to “own” your work, but required for a lawsuit − Provides statutory damages and attorney’s fees when timely  Add copyright notice on materials • © or “Copyright” + year of first publication + owner  Consider protection when entering into contractual agreements • Use Work-for-hire agreements when appropriate 17  Avoid infringement of others’ copyrights © 2013 Armstrong Teasdale LLP
  • 18. Trademarks 18 © 2013 Armstrong Teasdale Teasdale © 2013 Armstrong LLP LLP
  • 19. Trademarks - What They Protect A trademark is a word, name, symbol, and/or device used to indicate the source of the goods or services  A trademark owner has the: • Exclusive right to use the mark on specified good/services • Right to stop other uses of identical or similar marks which are likely to cause confusion  But the trademark must be used 19 © 2013 Armstrong Teasdale LLP
  • 20. Trademarks - Examples  Forms of Trademarks  NIKE A Design  A Slogan  A Sound  The NBC Chimes A Number  7-ELEVEN A Color  Pink of Owens Corning Insulation A Shape  Vehicle Grill Trade Dress Product Package, Restaurant Décor • A Word • • • • • • • 20 © 2013 Armstrong Teasdale LLP
  • 21. Trademarks – What To Do  Select A Strong Trademark  Inherently Distinctive • Strong marks have no inherent meaning or relation to the goods and services you offer • Weak marks include words that describe the goods and services you offer • Generic terms for the goods and services you offer cannot be protected  After Selecting a New Mark: • Do a trademark search to avoid infringing other marks  Register and Maintain your Mark 21 © 2013 Armstrong Teasdale LLP
  • 22. Trademarks – How to Maintain your Mark  Maintain Registration  Trademark Use  Trademark Notice • ® Symbol for a registered mark • ™ For an unregistered mark on a product • SM for an unregistered service mark  Trademark Enforcement 22 © 2013 Armstrong Teasdale LLP
  • 23. Trademarks – Domain Names  Trademark infringement through domain names is often used to divert internet traffic from your business to a competitor • Periodically search to see if competitors are using your trademarks through a domain name  Be sure your own domains are not too similar to your competitor’s trademarks or you may be accused of infringement 23 © 2013 Armstrong Teasdale LLP
  • 24. Trade Secrets 24 © 2013 Armstrong Teasdale Teasdale © 2013 Armstrong LLP LLP
  • 25. Trade Secrets  Protection extended to secret, competitive information • Once a secret is made public, the trade secret is lost forever  Maintained by substantial precautions: • Employee awareness • Contracts • Limited Access on a need-to-know basis 25  Examples: • Customer lists, supplier lists, secret recipes, financials, unique business techniques, or plans © 2013 Armstrong Teasdale LLP
  • 26. Trade Secrets- Strategies and Tips     Take the time to identify what needs protection Label materials confidential Limit access on a need-to-know basis Educate your employees • Employment Handbook or Employment Contract • Set up and maintain policies to protect your trade secrets then make sure your employees follow those policies − password protection, secure networks, etc.  Use contractual agreements to protect your trade 26 secrets • Employment agreements, Confidentiality agreements, Non-disclosure agreements, Non-compete agreements © 2013 Armstrong Teasdale LLP
  • 27. Contractual Agreements 27 © 2013 Armstrong Teasdale Teasdale © 2013 Armstrong LLP LLP
  • 28. Contractual Agreements  Confidentiality Agreements  Non-Disclosure Agreements • Especially important for meetings with investors  Development Agreements  Assignments  Licenses 28 © 2013 Armstrong Teasdale LLP
  • 29. Employment Agreements  Maintain your confidentiality, ownership, and client- base  Always remember that new hires may be subject to the same agreements • Non-competes • Confidentiality agreement • Assignments of rights 29 © 2013 Armstrong Teasdale LLP
  • 30. Corporate Concerns  Ownership of Intellectual Property within the Company • Contractual Interests vs. Shares  Corporate Formalities • Document meetings by taking minutes, individual responsibilities, expenses… otherwise you may be personally liable  Financing • Buy/Sell provisions • Outside Investors 30  Selling your Company • Drag Along and Tag Along Provisions © 2013 Armstrong Teasdale LLP
  • 31. Final Thoughts  Consider your Intellectual Property protection early  Intellectual Property enhances the value of your     31 company • Investors almost always ask about IP Protection Budget for Intellectual Property Protection Avoid Infringement In all business dealings (employment, investment, even basic corporate formalities), make sure you know who owns, or has rights to use, your intellectual property Consider having an attorney function as part of your team to make sure you are protected throughout the course of your business dealings © 2013 Armstrong Teasdale LLP
  • 32. Thank you! Jessica M. Mendez JMendez@ArmstrongTeasdale.com 314.342.4188 Samir R. Mehta SMehta@ArmstrongTeasdale.com 314.342.4125 http://www.armstrongteasdale.com 32 © 2013 Armstrong Teasdale Teasdale © 2013 Armstrong LLP LLP