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Intellectual Property in an Hour (Series: One Hour Law School)

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Intellectual Property in an Hour (Series: One Hour Law School)

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Intellectual property (“IP”) rights are at the center of 21st Century business. Copyrights protect the books we read and the movies we watch. Patent protection is what enables drug companies to spend billions of dollars every year in search of cures for our worst diseases. And without trademarks, we might not have the iconic brands we have come to enjoy and trust across a spectrum of industries. But what is a trademark? You cannot touch it, taste it, or smell it. And what is a copyright, a trade secret, and a patent? When does a business need one? How can a business avoid violating the intellectual property rights of a third party? And how do traditional IP rights related to things like internet domain names? This webinar is designed to teach the basics of intellectual property.

To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/intellectual-property-2019/

Transcript

  1. 1. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe Insert the cover image for this webinar on this slide entirely 1
  2. 2. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe Practical and entertaining education for attorneys, accountants, business owners and executives, and investors. 2
  3. 3. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe DISCLAIMER The material in this webinar is for informational purposes only. It should not be considered legal, financial or other professional advice. You should consult with an attorney or other appropriate professional to determine what may be best for your individual needs. While Financial Poise™ takes reasonable steps to ensure the information it publishes is accurate, Financial Poise™ makes no guaranty in this regard. 3
  4. 4. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe MEET THE FACULTY Moderator: Jack O'Connor – Sugar Felsenthal Grais & Helsinger Panelists: Darren Spielman – Kain Spielman, P.A. Eugene Goryunov – Kirkland & Ellis William Cory Spence – Spence PC 4
  5. 5. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe ABOUT THIS WEBINAR: Intellectual Property in an Hour Intellectual property (“IP”) rights are at the center of 21st Century business. Copyrights protect the books we read and the movies we watch. Patent protection is what enables drug companies to spend billions of dollars every year in search of cures to our worst diseases. And without trademarks, we might not have the iconic brands we have come to enjoy and trust across a spectrum of industries. But what is a trademark? You cannot touch it, taste it, or smell it. And what is a copyright, a trade secret, and a patent? When does a business need one? How can a business avoid violating the intellectual property rights of a third party?   And how do traditional IP rights related to things like internet domain names? This webinar is designed to teach the basics of intellectual property. 5
  6. 6. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe ABOUT THIS SERIES: One Hour Law School Looking for a bird’s eye understanding of the rudimentary principles of a complex area of law? Interested in a much needed refresher on an issue that has rapidly evolved in recent years? Short on time? This series explores the essential building blocks of important legal concepts facing business people. 6
  7. 7. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe EPISODES IN THIS SERIES 1/22/19 Episode #1: Estate Planning & Asset Protection-101 2/19/19 Episode #2: Intellectual Property in an Hour 3/19/19 Episode #3: Labor & Employment Law in an Hour 4/16/19 Episode #4: Environmental Law In an Hour 5/14/19 Episode #5: Business Tax Law-101 7 Dates shown are premiere dates. All webinars will be available On Demand approximately 4 weeks after they premiere.
  8. 8. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe EPISODE #2: INTELLECTUAL PROPERTY IN AN HOUR 8
  9. 9. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe WHAT IS INTELLECTUAL PROPERTY? ● Creations of the mind, including: inventions; literary & artistic works; symbols; names & images used in commerce. ● IP allows creators (or owners) of patents, trademarks, or copyrighted works to benefit from their own work or investment in a creation.
  10. 10. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe TYPES OF INTELLECTUAL PROPERTY Trade Secret – any confidential business information which provides an enterprise a competitive edge may be considered a trade secret Copyright - form of protection grounded in the U.S. Constitution and granted by law for original works of authorship fixed in a tangible medium of expression Trademark - word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others Patent - a right granted to the owner of an invention that prevents others from making, using, importing or selling the invention without his permission
  11. 11. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe WHAT IS A TRADEMARK? “generally a word, phrase, symbol, or design . . . that identifies & distinguishes the source of the goods of one party from those of others. ” - United States Trademark Office All trademarks identified with: ®; ™; ℠ are marks of their respective owners.
  12. 12. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe TRADEMARKS: SIGNIFICANCE OF SYMBOLS A brand that someone has started using to sell services, but hasn’t registered. A trademark or servicemark that has been registered with the U.S. Trademark Office or some other country’s or region’s trademark office.
  13. 13. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe TRADEMARK PROTECTIONS ● Allows owner to prevent others from using “confusingly similar” mark to sell goods or services. ● Does not prevent others from selling the same goods or services. ● Does not prevent others from using the word(s) in owner’s trademark in other, permissible, contexts.
  14. 14. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe TRADEMARKS: OBTAINING RIGHTS Owner must start using word, symbol, or something else to sell goods or services. Once created, trademark must be used commercially before registration.
  15. 15. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe TRADEMARK REGISTRATION File - After 3-5 months your application will be assigned to an examiner. Examiner may approve application for publication or issue an office action if there’s a problem. If you can address the problem to the examiner’s satisfaction, you move on. Otherwise, you can appeal or allow your application to die. About 35% of applications die at some point. If examiner approves application (either immediately or after an acceptable response to office action), application will be published in the Official Gazette. Others have 30 days to oppose application (or ask for more time to oppose). If someone successfully opposes application, it will die. If no one opposes, application moves on.
  16. 16. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe TRADEMARKS: WHAT ARE COMMON MISTAKES? ● Trying to register a word or phrase that’s “generic” or “merely descriptive.” ● Trying to register a trademark that’s “confusingly similar” to someone else’s trademark. Mistakes on trademark application: ● “Use” vs. “Intent-to-Use” ● Choosing wrong international class(es) ● Improper description of goods and services ● Not submitting acceptable evidence of use ● Registering word mark and design together
  17. 17. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe TRADEMARK DURATION Trademark registrations last forever, if: ● Owner keeps using trademark; ● Mark doesn’t become generic (like zipper or linoleum); and ● Owner renews registration The oldest living registered U.S. trademark is Samson® for rope, registered in 1884. Many others go back almost as long: CocaCola® and Tiffany® were each registered in 1893. Budweiser® and General Mills® were registered in 1886.
  18. 18. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe COPYRIGHT ● A form of protection grounded in U.S. Constitution & granted by law for original works of authorship fixed in tangible medium of expression. ● Covers both published & unpublished works. ● Protects original works of authorship including literary, dramatic, musical, & artistic works, such as poetry, novels, movies, songs, computer software, and architecture. Source: Copyright.gov
  19. 19. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe COPYRIGHT FUNCTION Author of work alone has right to: ● Make copies of work ● Distribute copies of work ● Perform work publicly ● Display work publicly ● Create derivative works ● Prevent others from doing same
  20. 20. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe BENEFITS OF COPYRIGHTS Establishes public record of ownership Enables copyright holder to sue infringers Potential statutory damages Can serve as evidence in court of validity of copyright Allows copyright owner to record registration in U.S. Customs
  21. 21. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe TRADE SECRETS Any confidential business information that provides an entity a competitive advantage may be considered a trade secret Any type of information, whatever its nature, which affects the company’s life and management, has value for the company and which competitors would like to know. Any technical knowledge relating to ideas, products or industrial procedures which, because of its competitive value for the company, the business person wishes to keep concealed.
  22. 22. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe TRADE SECRETS cont'd Trade Secret Elements: 1) Information must be a secret and 2) have commercial value; and 3) Holder must have tried to keep it a secret ● Unauthorized use of trade secrets by person other than the holder is regarded as unfair practice & violation of trade secret. ● Depending on legal system, protection of trade secrets forms part of general concept of protection against unfair competition or based on specific provisions/case law on protection of confidential information Source: www.wipo.int/sme/en/
  23. 23. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe WHAT IS A PATENT? ● The grant of a property right to the inventor, issued by the United States Patent and Trademark Office (USPTO) ● Generally given in 20 year terms ● Right is to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention ● Once patent is issued, the patentee must enforce the patent without aid of USPTO ●
  24. 24. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe TYPES OF PATENTS granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof
  25. 25. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe OBTAINING PATENT RIGHTS Non-provisional Application / Provisional Application: (1) written document; (2) drawing; (3) filing fees Subject matter must be useful Cannot be too similar to already-patented material
  26. 26. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe PATENT INFRINGEMENT STANDARDS Patent owner can sue in federal court for patent infringement. If patent owner is able to prove infringement, court may order infringer to pay $$$ or stop infringing (or both) one or more patent claims. Court can also find that (1) license to the patent not needed because accused infringer doesn’t practice the invention; (2) one or more patent claims are not valid; or (3) there are other reasons why patent owner is not entitled to prevail. https://www.uspto.gov/patents-maintaining-patent/patent-litigation/about-patent-infringement
  27. 27. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe IP CREATED BY EMPLOYEE OR CONTRACTOR If employee not hired with purpose to invent then IP belongs to them State Law Overrides Contract Assigning IP Ownership No Contract Some states have enacted laws limiting breadth of PIIAs May include inventions made on or off company’s premises
  28. 28. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe MORE RESOURCES World Intellectual Property Organization United States Patent and Trademark Office United States Copyright Office American Bar Association – Section of Intellectual Property Intellectual Property Owners Association Global Intellectual Property Center Intellectual Property Association American Intellectual Property Law Association
  29. 29. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe ABOUT THE FACULTY 29
  30. 30. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe JACK O'CONNOR – joconnor@sfgh.com Jack O’Connor is an associate in the Bankruptcy, Reorganization and Creditors’ Rights practice group. Jack’s practice focuses on the representation of corporate clients in complex reorganization proceedings across the country, including unsecured creditors’ committees, debtors, and chapter 11 liquidation trusts. Jack is skilled in negotiating complex business transactions in chapter 11 proceedings as well as structuring non-bankruptcy workouts in a historically weak credit market. In 2011, Jack successfully steered his first chapter 11 plan of reorganization to confirmation before the United States Bankruptcy Court for the Northern District of Illinois in In re Mangia Mangia, Inc. Jack is committed to finding creative and practical solutions for his clients, and works to provide them with the highest level of legal service. In addition to his experience as a restructuring and insolvency professional, Jack has worked on appellate matters in state and federal courts. For more, please click here. 30
  31. 31. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe DARREN SPIELMAN – dspielman@complexip.com Darren Spielman is a Shareholder of Kain Spielman, P.A. He concentrates his practice in the field of intellectual property, with an emphasis on trademarks, trade secrets, domain name disputes, copyrights, first amendment law including slander, libel and defamation. Darren has a Bachelor of Science in Public Relations from University of Florida. He also earned a Masters in Mass Communications degree from the University of Florida, as part of a joint degree with the University of Florida Levin College of Law. Darren is admitted to practice in front of the U.S. District Court for the Northern District of Florida, Southern District of Florida, and Middle District of Florida and the Eleventh Circuit Court of Appeals. Darren is a member of the Intellectual Property Committee, the Vice Chair of the E-discovery Committee and the Computer Law and Technology Committee of the Business Law Section of the Florida Bar. He is also a Board Member of the Federal Bar Association Broward Chapter. Darren is a member of the Intellectual Property Law Association of Florida, the First Amendment Lawyers Association and the Broward County Bar Association. 31
  32. 32. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe DARREN SPIELMAN cont'd Awards & Accolades: Darren has been honored as AV Rated with Martindale Hubble 2015-2018 and with the Super Lawyers Rising Stars Award for 2009-2011, 2013- 2018 and Top Attorneys Florida Outstanding Young Lawyers Award for 2011, 2013-2017; America’s Most Honored Professionals Top 1%, 2016-2018. Darren is also a frequent presenter and public speaker on Intellectual Property and First Amendment topics. 32
  33. 33. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe EUGENE GORYUNOV – egoryunov@gmail.com Mr. Goryunov is an experienced trial lawyer that represents clients in complex patent matters involving many diverse technologies. He is deeply involved, as trial counsel, in all aspects of cases pending in Federal courts, at the U.S. International Trade Commission involving Section 337 investigations, and in appeals at the U.S. Court of Appeals for the Federal Circuit. He also regularly serves as first-chair trial counsel in post- grant review trials, on behalf of both Petitioners and Patent Owners, pending at the U.S. Patent & Trademark Office. To date, he has been involved in over one-hundred post-grant review trials. Mr. Goryunov is a regular contributor to intellectual property publications, including the Intellectual Property Magazine, The Patent Lawyer, and the IPO Law Journal. To date, he has published more than sixty articles, many of which discuss post-grant review trial practice. Mr. Goryunov also speaks about diverse issues of patent law and post-grant review trial practice. He also teaches patent law and intellectual property litigation at the Columbia University and previously at the University of Notre Dame. 33
  34. 34. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe WILLIAM CORY SPENCE – william.spence@spencepc.com William Cory Spence is the Founder of SpencePC. Mr. Spence assists individual and business clients to obtain their best possible outcome in contentious legal matters. He has extensive experience in litigation, arbitration, and mediation involving all areas of intellectual property law. A registered patent attorney, Mr. Spence serves clients by providing advocacy and advice in the areas of: patent infringement; trade secret misappropriation; unfair competition (including conspiracy, tortious interference, and related antitrust claims); breach of contract; post-grant patent proceedings (e.g., inter partes review) ; trademark infringement; and copyright infringement. He has litigated claims in both state and federal courts throughout the United States. Additionally, Mr. Spence has extensive experience with patent monetization strategies and complex, international patent infringement litigation involving multiple parties and jurisdictions, most notably including Japan. He is a published author and frequent speaker on patent monetization and other intellectual property issues, and has been repeatedly recognized as an “Illinois Rising Star” and “Illinois Star,” in the area of intellectual property. 34
  35. 35. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe WILLIAM CORY SPENCE cont'd Cory is a graduate of the University of Notre Dame, where he obtained separate Bachelor of Science Degrees in Chemical Engineering and Biophysics (“Physics in Medicine”). As a student he received the distinction of Notre Dame Scholar and also earned the Monogram Award. Upon graduation from Notre Dame, Mr. Spence received his commission as a Second Lieutenant in the United States Air Force, Medical Service Corps. After completing his military service, he worked for several years in the chemical industry before pursuing his legal education at the University of Houston Law Center. Prior to forming SpencePC, Mr. Spence spent twelve years practicing law with Kirkland & Ellis LLP in Chicago, IL and Tokyo, Japan. 35
  36. 36. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe QUESTIONS OR COMMENTS? If you have any questions about this webinar that you did not get to ask during the live premiere, or if you are watching this webinar On Demand, please do not hesitate to email us at info@financialpoise.com with any questions or comments you may have. Please include the name of the webinar in your email and we will do our best to provide a timely response. IMPORTANT NOTE: The material in this presentation is for general educational purposes only. It has been prepared primarily for attorneys and accountants for use in the pursuit of their continuing legal education and continuing professional education. 36
  37. 37. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe ABOUT FINANCIAL POISE DailyDAC LLC, d/b/a Financial Poise™ provides continuing education to attorneys, accountants, business owners and executives, and investors. Its websites, webinars, and books provide Plain English, entertaining, explanations about legal, financial, and other subjects of interest to these audiences. Visit us at www.financialpoise.com. 37 Our free weekly newsletter, Financial Poise Weekly, updates you on new articles published on our Website and Upcoming Webinars you may be interested in. To join our email list, send an email to info@financialpoise.com with “Subscribe to email list” in the subject line. Or add yourself by going to: https://www.financialpoise.com/newsletter/ Email addresses are never sold to or shared with third parties.

Description

Intellectual property (“IP”) rights are at the center of 21st Century business. Copyrights protect the books we read and the movies we watch. Patent protection is what enables drug companies to spend billions of dollars every year in search of cures for our worst diseases. And without trademarks, we might not have the iconic brands we have come to enjoy and trust across a spectrum of industries. But what is a trademark? You cannot touch it, taste it, or smell it. And what is a copyright, a trade secret, and a patent? When does a business need one? How can a business avoid violating the intellectual property rights of a third party? And how do traditional IP rights related to things like internet domain names? This webinar is designed to teach the basics of intellectual property.

To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/intellectual-property-2019/

Transcript

  1. 1. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe Insert the cover image for this webinar on this slide entirely 1
  2. 2. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe Practical and entertaining education for attorneys, accountants, business owners and executives, and investors. 2
  3. 3. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe DISCLAIMER The material in this webinar is for informational purposes only. It should not be considered legal, financial or other professional advice. You should consult with an attorney or other appropriate professional to determine what may be best for your individual needs. While Financial Poise™ takes reasonable steps to ensure the information it publishes is accurate, Financial Poise™ makes no guaranty in this regard. 3
  4. 4. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe MEET THE FACULTY Moderator: Jack O'Connor – Sugar Felsenthal Grais & Helsinger Panelists: Darren Spielman – Kain Spielman, P.A. Eugene Goryunov – Kirkland & Ellis William Cory Spence – Spence PC 4
  5. 5. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe ABOUT THIS WEBINAR: Intellectual Property in an Hour Intellectual property (“IP”) rights are at the center of 21st Century business. Copyrights protect the books we read and the movies we watch. Patent protection is what enables drug companies to spend billions of dollars every year in search of cures to our worst diseases. And without trademarks, we might not have the iconic brands we have come to enjoy and trust across a spectrum of industries. But what is a trademark? You cannot touch it, taste it, or smell it. And what is a copyright, a trade secret, and a patent? When does a business need one? How can a business avoid violating the intellectual property rights of a third party?   And how do traditional IP rights related to things like internet domain names? This webinar is designed to teach the basics of intellectual property. 5
  6. 6. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe ABOUT THIS SERIES: One Hour Law School Looking for a bird’s eye understanding of the rudimentary principles of a complex area of law? Interested in a much needed refresher on an issue that has rapidly evolved in recent years? Short on time? This series explores the essential building blocks of important legal concepts facing business people. 6
  7. 7. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe EPISODES IN THIS SERIES 1/22/19 Episode #1: Estate Planning & Asset Protection-101 2/19/19 Episode #2: Intellectual Property in an Hour 3/19/19 Episode #3: Labor & Employment Law in an Hour 4/16/19 Episode #4: Environmental Law In an Hour 5/14/19 Episode #5: Business Tax Law-101 7 Dates shown are premiere dates. All webinars will be available On Demand approximately 4 weeks after they premiere.
  8. 8. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe EPISODE #2: INTELLECTUAL PROPERTY IN AN HOUR 8
  9. 9. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe WHAT IS INTELLECTUAL PROPERTY? ● Creations of the mind, including: inventions; literary & artistic works; symbols; names & images used in commerce. ● IP allows creators (or owners) of patents, trademarks, or copyrighted works to benefit from their own work or investment in a creation.
  10. 10. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe TYPES OF INTELLECTUAL PROPERTY Trade Secret – any confidential business information which provides an enterprise a competitive edge may be considered a trade secret Copyright - form of protection grounded in the U.S. Constitution and granted by law for original works of authorship fixed in a tangible medium of expression Trademark - word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others Patent - a right granted to the owner of an invention that prevents others from making, using, importing or selling the invention without his permission
  11. 11. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe WHAT IS A TRADEMARK? “generally a word, phrase, symbol, or design . . . that identifies & distinguishes the source of the goods of one party from those of others. ” - United States Trademark Office All trademarks identified with: ®; ™; ℠ are marks of their respective owners.
  12. 12. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe TRADEMARKS: SIGNIFICANCE OF SYMBOLS A brand that someone has started using to sell services, but hasn’t registered. A trademark or servicemark that has been registered with the U.S. Trademark Office or some other country’s or region’s trademark office.
  13. 13. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe TRADEMARK PROTECTIONS ● Allows owner to prevent others from using “confusingly similar” mark to sell goods or services. ● Does not prevent others from selling the same goods or services. ● Does not prevent others from using the word(s) in owner’s trademark in other, permissible, contexts.
  14. 14. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe TRADEMARKS: OBTAINING RIGHTS Owner must start using word, symbol, or something else to sell goods or services. Once created, trademark must be used commercially before registration.
  15. 15. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe TRADEMARK REGISTRATION File - After 3-5 months your application will be assigned to an examiner. Examiner may approve application for publication or issue an office action if there’s a problem. If you can address the problem to the examiner’s satisfaction, you move on. Otherwise, you can appeal or allow your application to die. About 35% of applications die at some point. If examiner approves application (either immediately or after an acceptable response to office action), application will be published in the Official Gazette. Others have 30 days to oppose application (or ask for more time to oppose). If someone successfully opposes application, it will die. If no one opposes, application moves on.
  16. 16. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe TRADEMARKS: WHAT ARE COMMON MISTAKES? ● Trying to register a word or phrase that’s “generic” or “merely descriptive.” ● Trying to register a trademark that’s “confusingly similar” to someone else’s trademark. Mistakes on trademark application: ● “Use” vs. “Intent-to-Use” ● Choosing wrong international class(es) ● Improper description of goods and services ● Not submitting acceptable evidence of use ● Registering word mark and design together
  17. 17. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe TRADEMARK DURATION Trademark registrations last forever, if: ● Owner keeps using trademark; ● Mark doesn’t become generic (like zipper or linoleum); and ● Owner renews registration The oldest living registered U.S. trademark is Samson® for rope, registered in 1884. Many others go back almost as long: CocaCola® and Tiffany® were each registered in 1893. Budweiser® and General Mills® were registered in 1886.
  18. 18. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe COPYRIGHT ● A form of protection grounded in U.S. Constitution & granted by law for original works of authorship fixed in tangible medium of expression. ● Covers both published & unpublished works. ● Protects original works of authorship including literary, dramatic, musical, & artistic works, such as poetry, novels, movies, songs, computer software, and architecture. Source: Copyright.gov
  19. 19. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe COPYRIGHT FUNCTION Author of work alone has right to: ● Make copies of work ● Distribute copies of work ● Perform work publicly ● Display work publicly ● Create derivative works ● Prevent others from doing same
  20. 20. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe BENEFITS OF COPYRIGHTS Establishes public record of ownership Enables copyright holder to sue infringers Potential statutory damages Can serve as evidence in court of validity of copyright Allows copyright owner to record registration in U.S. Customs
  21. 21. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe TRADE SECRETS Any confidential business information that provides an entity a competitive advantage may be considered a trade secret Any type of information, whatever its nature, which affects the company’s life and management, has value for the company and which competitors would like to know. Any technical knowledge relating to ideas, products or industrial procedures which, because of its competitive value for the company, the business person wishes to keep concealed.
  22. 22. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe TRADE SECRETS cont'd Trade Secret Elements: 1) Information must be a secret and 2) have commercial value; and 3) Holder must have tried to keep it a secret ● Unauthorized use of trade secrets by person other than the holder is regarded as unfair practice & violation of trade secret. ● Depending on legal system, protection of trade secrets forms part of general concept of protection against unfair competition or based on specific provisions/case law on protection of confidential information Source: www.wipo.int/sme/en/
  23. 23. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe WHAT IS A PATENT? ● The grant of a property right to the inventor, issued by the United States Patent and Trademark Office (USPTO) ● Generally given in 20 year terms ● Right is to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention ● Once patent is issued, the patentee must enforce the patent without aid of USPTO ●
  24. 24. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe TYPES OF PATENTS granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof
  25. 25. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe OBTAINING PATENT RIGHTS Non-provisional Application / Provisional Application: (1) written document; (2) drawing; (3) filing fees Subject matter must be useful Cannot be too similar to already-patented material
  26. 26. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe PATENT INFRINGEMENT STANDARDS Patent owner can sue in federal court for patent infringement. If patent owner is able to prove infringement, court may order infringer to pay $$$ or stop infringing (or both) one or more patent claims. Court can also find that (1) license to the patent not needed because accused infringer doesn’t practice the invention; (2) one or more patent claims are not valid; or (3) there are other reasons why patent owner is not entitled to prevail. https://www.uspto.gov/patents-maintaining-patent/patent-litigation/about-patent-infringement
  27. 27. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe IP CREATED BY EMPLOYEE OR CONTRACTOR If employee not hired with purpose to invent then IP belongs to them State Law Overrides Contract Assigning IP Ownership No Contract Some states have enacted laws limiting breadth of PIIAs May include inventions made on or off company’s premises
  28. 28. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe MORE RESOURCES World Intellectual Property Organization United States Patent and Trademark Office United States Copyright Office American Bar Association – Section of Intellectual Property Intellectual Property Owners Association Global Intellectual Property Center Intellectual Property Association American Intellectual Property Law Association
  29. 29. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe ABOUT THE FACULTY 29
  30. 30. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe JACK O'CONNOR – joconnor@sfgh.com Jack O’Connor is an associate in the Bankruptcy, Reorganization and Creditors’ Rights practice group. Jack’s practice focuses on the representation of corporate clients in complex reorganization proceedings across the country, including unsecured creditors’ committees, debtors, and chapter 11 liquidation trusts. Jack is skilled in negotiating complex business transactions in chapter 11 proceedings as well as structuring non-bankruptcy workouts in a historically weak credit market. In 2011, Jack successfully steered his first chapter 11 plan of reorganization to confirmation before the United States Bankruptcy Court for the Northern District of Illinois in In re Mangia Mangia, Inc. Jack is committed to finding creative and practical solutions for his clients, and works to provide them with the highest level of legal service. In addition to his experience as a restructuring and insolvency professional, Jack has worked on appellate matters in state and federal courts. For more, please click here. 30
  31. 31. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe DARREN SPIELMAN – dspielman@complexip.com Darren Spielman is a Shareholder of Kain Spielman, P.A. He concentrates his practice in the field of intellectual property, with an emphasis on trademarks, trade secrets, domain name disputes, copyrights, first amendment law including slander, libel and defamation. Darren has a Bachelor of Science in Public Relations from University of Florida. He also earned a Masters in Mass Communications degree from the University of Florida, as part of a joint degree with the University of Florida Levin College of Law. Darren is admitted to practice in front of the U.S. District Court for the Northern District of Florida, Southern District of Florida, and Middle District of Florida and the Eleventh Circuit Court of Appeals. Darren is a member of the Intellectual Property Committee, the Vice Chair of the E-discovery Committee and the Computer Law and Technology Committee of the Business Law Section of the Florida Bar. He is also a Board Member of the Federal Bar Association Broward Chapter. Darren is a member of the Intellectual Property Law Association of Florida, the First Amendment Lawyers Association and the Broward County Bar Association. 31
  32. 32. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe DARREN SPIELMAN cont'd Awards & Accolades: Darren has been honored as AV Rated with Martindale Hubble 2015-2018 and with the Super Lawyers Rising Stars Award for 2009-2011, 2013- 2018 and Top Attorneys Florida Outstanding Young Lawyers Award for 2011, 2013-2017; America’s Most Honored Professionals Top 1%, 2016-2018. Darren is also a frequent presenter and public speaker on Intellectual Property and First Amendment topics. 32
  33. 33. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe EUGENE GORYUNOV – egoryunov@gmail.com Mr. Goryunov is an experienced trial lawyer that represents clients in complex patent matters involving many diverse technologies. He is deeply involved, as trial counsel, in all aspects of cases pending in Federal courts, at the U.S. International Trade Commission involving Section 337 investigations, and in appeals at the U.S. Court of Appeals for the Federal Circuit. He also regularly serves as first-chair trial counsel in post- grant review trials, on behalf of both Petitioners and Patent Owners, pending at the U.S. Patent & Trademark Office. To date, he has been involved in over one-hundred post-grant review trials. Mr. Goryunov is a regular contributor to intellectual property publications, including the Intellectual Property Magazine, The Patent Lawyer, and the IPO Law Journal. To date, he has published more than sixty articles, many of which discuss post-grant review trial practice. Mr. Goryunov also speaks about diverse issues of patent law and post-grant review trial practice. He also teaches patent law and intellectual property litigation at the Columbia University and previously at the University of Notre Dame. 33
  34. 34. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe WILLIAM CORY SPENCE – william.spence@spencepc.com William Cory Spence is the Founder of SpencePC. Mr. Spence assists individual and business clients to obtain their best possible outcome in contentious legal matters. He has extensive experience in litigation, arbitration, and mediation involving all areas of intellectual property law. A registered patent attorney, Mr. Spence serves clients by providing advocacy and advice in the areas of: patent infringement; trade secret misappropriation; unfair competition (including conspiracy, tortious interference, and related antitrust claims); breach of contract; post-grant patent proceedings (e.g., inter partes review) ; trademark infringement; and copyright infringement. He has litigated claims in both state and federal courts throughout the United States. Additionally, Mr. Spence has extensive experience with patent monetization strategies and complex, international patent infringement litigation involving multiple parties and jurisdictions, most notably including Japan. He is a published author and frequent speaker on patent monetization and other intellectual property issues, and has been repeatedly recognized as an “Illinois Rising Star” and “Illinois Star,” in the area of intellectual property. 34
  35. 35. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe WILLIAM CORY SPENCE cont'd Cory is a graduate of the University of Notre Dame, where he obtained separate Bachelor of Science Degrees in Chemical Engineering and Biophysics (“Physics in Medicine”). As a student he received the distinction of Notre Dame Scholar and also earned the Monogram Award. Upon graduation from Notre Dame, Mr. Spence received his commission as a Second Lieutenant in the United States Air Force, Medical Service Corps. After completing his military service, he worked for several years in the chemical industry before pursuing his legal education at the University of Houston Law Center. Prior to forming SpencePC, Mr. Spence spent twelve years practicing law with Kirkland & Ellis LLP in Chicago, IL and Tokyo, Japan. 35
  36. 36. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe QUESTIONS OR COMMENTS? If you have any questions about this webinar that you did not get to ask during the live premiere, or if you are watching this webinar On Demand, please do not hesitate to email us at info@financialpoise.com with any questions or comments you may have. Please include the name of the webinar in your email and we will do our best to provide a timely response. IMPORTANT NOTE: The material in this presentation is for general educational purposes only. It has been prepared primarily for attorneys and accountants for use in the pursuit of their continuing legal education and continuing professional education. 36
  37. 37. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe ABOUT FINANCIAL POISE DailyDAC LLC, d/b/a Financial Poise™ provides continuing education to attorneys, accountants, business owners and executives, and investors. Its websites, webinars, and books provide Plain English, entertaining, explanations about legal, financial, and other subjects of interest to these audiences. Visit us at www.financialpoise.com. 37 Our free weekly newsletter, Financial Poise Weekly, updates you on new articles published on our Website and Upcoming Webinars you may be interested in. To join our email list, send an email to info@financialpoise.com with “Subscribe to email list” in the subject line. Or add yourself by going to: https://www.financialpoise.com/newsletter/ Email addresses are never sold to or shared with third parties.

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