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Protecting your ideas when working with other people <br />Jennifer S Warren<br />JS Warren PLLC<br />January 23, 2010<br />
WHO:  Potential points of loss<br />
WHO:<br />Eighty percent (80%) of IP losses are due to employees and contractors <br />Suppliers are a frequent source of ...
WHAT : Decide what to protect<br />
WHAT : <br />Protect your secrets and proprietary information<br />Protect your right to use your intellectual property<br...
When<br />Before disclosing information to outside parties<br />Follow up with a reminder after disclosure<br />When hirin...
WHEN:  POTENTIAL PATENTS<br />In the US, you cannot disclose or use your patent more than one year before the filing date....
WHERE<br />Know where your information is<br />Computer?<br />On factory floor?<br />In a proposal?<br />In someone’s head...
WHY<br />Protect from copycats!<br />Protect ability to patent or register trademarks and copyrights<br />Stay ahead of th...
HOW:<br />Work with people you can trust<br />Get confidentiality in writing<br />Review any agreement that the other side...
Confidentiality agreement<br />Also called “Secrecy” or  “non-disclosure” agreements<br />Consider WHO, WHAT and WHEN <br ...
WHO:  Decide who is involved<br />Check all agreements to see who the parties are<br />Look to see who the other side want...
WHAT: Decide what to cover<br />Define the project or reason for disclosing<br />Non-public information<br />Ways of combi...
WHEN: IN the Agreement<br />When will you be disclosing information? <br />When will it be okay for each side to disclose ...
PROTECTING YOUR RIGHT TO USE and LICENSE your IP<br />Protect your confidential information<br />Look out for agreements t...
PROTECTING YOUR RIGHTS to YOUR IP <br />CONTRACTORS and CONSULTANTS:  BEWARE<br />You do not necessarily own all the IP ri...
PROTECTING YOUR RIGHTS TO YOUR IP<br />JOINT DEVELOPMENT AGREEMENTS<br />Usually involves existing IP on each side and new...
PROTECTING YOUR RIGHTS TO YOUR IP<br />UNIVERSITY INVENTIONS: BEWARE<br />Who owns the patents? <br />Many grad students a...
PROTECTING YOUR RIGHTS TO YOUR IP<br />GOVERNMENT FUNDING <br />If you decide to seek government funding, read the regulat...
PROTECTING YOUR RIGHTS TO YOUR IP<br />IP rights can show up anywhere and may not be labeled in a special heading<br />Sal...
PROTECTING YOUR RIGHTS TO YOUR IP<br />Make certain any marketing or promotion agreements have limited times for using you...
Key points to remember<br />Understand which information is critical to keep  confidential or secret.<br />Do not just sig...
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Protecting Your Ip With Agreements

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Protecting Your Ip With Agreements

  1. 1. Protecting your ideas when working with other people <br />Jennifer S Warren<br />JS Warren PLLC<br />January 23, 2010<br />
  2. 2. WHO: Potential points of loss<br />
  3. 3. WHO:<br />Eighty percent (80%) of IP losses are due to employees and contractors <br />Suppliers are a frequent source of industrial intelligence gathering<br />Big customers often try to work around you<br />LESS PROBLEM: Professionals who need your trust to avoid their own ethical issues: accountants, attorneys<br />
  4. 4. WHAT : Decide what to protect<br />
  5. 5. WHAT : <br />Protect your secrets and proprietary information<br />Protect your right to use your intellectual property<br />Protect your right to license your intellectual property in the future. <br />Remember to protect information that belongs to others, as well<br />
  6. 6. When<br />Before disclosing information to outside parties<br />Follow up with a reminder after disclosure<br />When hiring new employees, consultants or contractors<br />Follow up with a reminder when they leave or when job is completed<br />
  7. 7. WHEN: POTENTIAL PATENTS<br />In the US, you cannot disclose or use your patent more than one year before the filing date.<br />PROCESSES cannot be patented, if used more than one year before filing EVEN IF you cannot tell what process was used<br />Outside the US, most countries do not allow ANY disclosure before the filing date. <br />PROCESSES may or may not be patented if used before a patent application is filed.<br />TALK TO YOUR ATTORNEY<br />
  8. 8. WHERE<br />Know where your information is<br />Computer?<br />On factory floor?<br />In a proposal?<br />In someone’s head?<br />Control where it goes<br />
  9. 9. WHY<br />Protect from copycats!<br />Protect ability to patent or register trademarks and copyrights<br />Stay ahead of the competition<br />Protect future value of any licenses<br />
  10. 10. HOW:<br />Work with people you can trust<br />Get confidentiality in writing<br />Review any agreement that the other side drafts very carefully<br />Be specific in describing the type of information that needs to be protected<br />TALK TO YOUR ATTORNEY<br />
  11. 11. Confidentiality agreement<br />Also called “Secrecy” or “non-disclosure” agreements<br />Consider WHO, WHAT and WHEN <br />Do not use a standard form without reading it. <br />Insist on getting the agreement signed by someone who have the right authority to represent each side.<br />
  12. 12. WHO: Decide who is involved<br />Check all agreements to see who the parties are<br />Look to see who the other side wants to share information or license rights with <br />Be careful of nonspecific “subsidiaries” or “related parties” <br />DO YOU KNOW WHO MIGHT GET THE INFORMATION?<br />
  13. 13. WHAT: Decide what to cover<br />Define the project or reason for disclosing<br />Non-public information<br />Ways of combining public information<br />Prohibit USE as well as DISCLOSURE<br />If necessary, include penalty for use<br />Make certain that any confidentiality agreements are specific about what will be disclosed <br />(not “any and all information”)<br />Do you need to prevent reverse-engineering or analyisis?<br />
  14. 14. WHEN: IN the Agreement<br />When will you be disclosing information? <br />When will it be okay for each side to disclose or use the information? <br />Until it is disclosed by a third party?<br />Until it is published by the owner?<br />When the owner gives permission?<br />For 2 years? 5 years? 10 years? From when? The end of the project? <br />Can information really be protected forever?<br />
  15. 15. PROTECTING YOUR RIGHT TO USE and LICENSE your IP<br />Protect your confidential information<br />Look out for agreements that take away your rights<br />Contractor agreements<br />Joint development agreements<br />Government funding<br />Look out for agreements that allow others to use your rights for free<br />Internet user agreements<br />Marketing or promotion agreements<br />
  16. 16. PROTECTING YOUR RIGHTS to YOUR IP <br />CONTRACTORS and CONSULTANTS: BEWARE<br />You do not necessarily own all the IP rights to work they do for you. <br />(Very big companies have made mistakes on this)<br />You and the contractor/consultant do not always have the same rights in every state or country where you operate. <br /> A GOOD TIME TO FIND AN ATTORNEY<br />
  17. 17. PROTECTING YOUR RIGHTS TO YOUR IP<br />JOINT DEVELOPMENT AGREEMENTS<br />Usually involves existing IP on each side and new IP that the project will create. <br />Protect your existing IP<br />Negotiate future IP<br />Avoid assigning future IP based on inventorship <br />Think in terms of lead times rather than exclusivity<br />
  18. 18. PROTECTING YOUR RIGHTS TO YOUR IP<br />UNIVERSITY INVENTIONS: BEWARE<br />Who owns the patents? <br />Many grad students are, or should be, listed on patents<br />Funding a professor will not necessarily get you rights to the patents <br />Many professors have negotiated new spin-off companies<br />Many state universities have legal limits on selling or licensing patents <br />State universities may be protected from Federal IP laws by the 11th amendment<br />
  19. 19. PROTECTING YOUR RIGHTS TO YOUR IP<br />GOVERNMENT FUNDING <br />If you decide to seek government funding, read the regulations and laws that apply. Ask the funding agency questions. <br />Generally, US governments funding requires you to commercialize first in the US, and allows the US to use it without royalty<br />Check with the entity you want to work with to understand its obligation to protect your confidential information<br />
  20. 20. PROTECTING YOUR RIGHTS TO YOUR IP<br />IP rights can show up anywhere and may not be labeled in a special heading<br />Sales and purchasing agreements, warranties<br />Contract manufacturing<br />Material transfer (sampling or demonstration s)<br />Analytical services<br />Employment (your former employers)<br />
  21. 21. PROTECTING YOUR RIGHTS TO YOUR IP<br />Make certain any marketing or promotion agreements have limited times for using your trademarks or copyrighted materials<br />READ any click-through or click-wrap licenses. They are generally enforceable.<br />See what the internet service provider, software company, etc. thinks they own.<br />Determine if that will be acceptable for you. <br />
  22. 22. Key points to remember<br />Understand which information is critical to keep confidential or secret.<br />Do not just sign the other sides’ agreement form to get it out of the way. Read it and ask questions. (<br />Look for IP and confidentiality clauses in all agreements<br />Make friends with one or more IP attorneys <br />

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