IP Protection Strategies (US and Foreign)

1. INTELLECTUAL PROPERTY
TOOLKIT
Eric Sosenko
October 18, 2010
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2.  IP Agreements
 IP Capture
 IP Protection
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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
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4. When do you use a toolkit?
 Knowingly or unknowingly, you have
used different toolkits in your approach
to:
 College
 Jobs
 Start-ups
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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
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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
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7. Basics of IP Toolkit
 IP agreement provisions
 IP capture mechanisms
 IP protection mechanisms
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8. Basics of IP Toolkit
 IP Agreements
 Foundation Agreements
 NDA (non-disclosure agreements)
 Development Agreement
 Employee Agreements
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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
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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
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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
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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
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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
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14. Non-disclosure Agreements
 NDAs are not development agreements
 For initial sharing of information
 Only relate to background IP
 Do not cover foreground IP
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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
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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
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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. Employee IP Agreements
 Hired to innovate
 Confidentiality obligations
 Signed by employee
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19. Employee IP Agreements
 Exit interview
 Reminder of obligations
 ideas conceived during employment
 assist in securing protection
 trade secrets
 Signed by employee
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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
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21. Invention Disclosure Form
 Key provisions
 General description of idea
 Background of the problem being solved
 Detailed description of the ideas
 Closest known technology
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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?
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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)
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24. Basics of IP Toolkit
 IP Protection
 Different types IP
 Patents
 Trademarks
 Copyrights
 Trade secret
 Different types of acquisition and protection
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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
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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
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27. Patent Protection
 Formal application process to obtain
protection
 Monopoly on the idea for 20 years
 Utility patents
 Provisional
 Non-provisional
 Design patents
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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
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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
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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
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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
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32. Trade Secret Protection
 Business information
 Business plans
 Costs structures
 Supplier lists
 Target Customers
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33. Trade Secret Protection
 Document trade secret information
 Inventions not seeking patent protection
 processes
 Restrict access
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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
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35. Basics of IP Toolkit
 Questions?
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36. Eric Sosenko
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