Innovation Women Speak! Webinar: Protecting Your Intellectual Property (IP): Why It Matters Now More Than Ever
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The fast pace of developments in tech, coupled with the ongoing changes in the legal landscape, make intellectual property (IP) protection more important than ever. Whether you are involved in creating, developing, or purchasing IP, understanding the various types of IP and ways to effectively protect your IP is vital. This webinar will provide a primer on the key IP concepts that you should know—including protection of one’s own IP, preventative measures individuals and businesses should consider, and recent developments in IP protection and litigation. The discussion will be particularly helpful for women in tech, but also applicable to those who work with, or would like to learn more about, intellectual property. You’ll learn: - How to understand the different types of IP, and identify your IP - How to evaluate the options on how to best protect your IP - Recent developments in the legal and regulatory landscape and how it affects you and your IP
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Innovation Women Speak! Webinar: Protecting Your Intellectual Property (IP): Why It Matters Now More Than Ever
- 1. InnovationWomenSpeak! W E B I N A R S E R I E S
- 3. $100/ YEAR • Speakerprofile • Weekly speakerexclusive newsletter • Access to speakerresources • Specialpromotionforauthors • Promotionofyourspeakingengagements
- 4. Platform Features • Eventmanagers post “Calls forSpeakers” • Search and apply to speaking opportunities • Manageapplications andinvitationson your dashboard • Robust keyword search functions • Public profiles and shareable links
- 6. Innovation WomenSpeak! WebinarSeries 2020 October 7and 21: Cybersecurity DEADLINE TO APPLY: SEPTEMBER7TH November4 and 18: BookWriting/Publishing December2 and 16: Giving innovationwomen.com
- 7. NEXT WEBINAR TESS GADWA Program Director at Giving Map WomeninTech:ActionableData September 16,2020 12:00-1:00pm ET
- 8. Webinar AttendeeScreen Askaquestion Slideviewingarea Usertabs • Askaquestion • Attachmentsorlinks • Voteonpolls • Ratethiswebinar Audiohelp
- 9. TODAY’S FEATURE HANA OH Counsel at O’Melveny ProtectingYourIntellectualProperty(IP): WhyItMattersNowMore ThanEver
- 10. Intellectual Property Protection: Why It Matters Now More Than Ever Hana Oh, Ph.D. O’Melveny & Myers LLP September 2, 2020 Innovation Women Webinar: Women in Tech
- 11. 11 Roadmap Three Goals: • Understand the different types of IP, and identify your IP • Evaluate the options on how to best protect your IP • Learn recent developments in the legal and regulatory landscape and how it affects you and your IP
- 12. 12 Women and IP Office of the Chief Economist, IP Data Highlights, Number 4, July 2020 https://www.uspto.gov/sites/default/files/documents/OCE-DH-Progress-Potential-2020.pdf
- 13. 13 Women Innovators • Number of US patents with at least one woman inventor: 21.9% – Compare to 30% of international patent applications • “Women Inventor Rate” (WIR) – % of U.S. inventors receiving patents who are women – 12.8%in 2019 • Share of women among new inventors on issued patents: 17.3% • New and repeat inventors: 46% of women (and 52% of men) patented again in the next five years https://www.uspto.gov/sites/default/files/documents/OCE-DH-Progress-Potential-2020.pdf https://www.wipo.int/women-and-ip/en/
- 14. 14 Women Innovators “Fine arts” vs “Crafts” or “Domestic” fiber https://commons.wikimedia.org/wiki/File:Washington_Post1.png
- 15. 15 • Chemical engineer by training • Ph.D. in Chemical and Biomolecular Engineering • Postdoctoral scientist in biotech • Patent agent • Intellectual Property (IP) attorney Hana Oh IP Counsel The opinions expressed in this presentation do not necessarily reflect the views of O'Melveny or its clients and should not be relied upon as legal advice.
- 17. 17 Why We Are Here https://www.flickr.com/photos/gleonhard/28777163450 Technology is evolving quickly Legal landscape is changing Increased employee mobility More collaborations—and competition Intellectual Property (IP) protection is important now more than ever
- 18. 18 Patents Patentable invention • “Process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” • Requirements – New – Useful – Non-obvious
- 19. 19 Patent Applications • Provisional • Non-provisional – Specification (description and claims) – Drawings (when necessary) – Oath or declaration – Fees • Publication of application (18 mo.)
- 20. 20 Patent Prosecution • Examination – Restrictions – Office Action – Applicant’s Reply – Abandonment – Final Rejection – Appeal – Allowance and Issue • Maintenance • Recording of Assignments
- 22. 22 Patent Enforcement • “the right to exclude others from making, using, offering for sale, or selling” the invention in the US or importing the invention into the US • Common responses to Patent infringement claims – Patent invalidity – Non-infringement
- 23. 23 Patent Pledges • Example: COVID Patent Pledge https://opencovidpledge.org/
- 24. 24 Trade Secrets • Information that is not generally known or readily ascertainable • Derives economic value from being secret • Is the subject of reasonable efforts to maintain its secrecy https://www.flickr.com/photos/99781513@N04/16900920797 https://pixabay.com/photos/coca-cola-the-coca-cola-company-4090021/
- 25. 25 Examples of Trade Secrets Sales: customer lists, vendor information, contract terms Finance: market analyses, cost and expense information, contract terms, bidding details HR: organizational charts, salary information, management techniques Marketing: pricing information, product release dates, advertising plans Engineering: source code, prototypes, laboratory notebooks, seismic data, hydraulic fracturing ingredients, well logs
- 26. 26 Negative Trade Secrets • Trial-and-error during R&D process • Investments one did not make • Conditions and parameters that were tested and abandoned
- 27. 27 Breakdown of Trade Secrets Trade Secret Cases % Customer list/information 284 58% Business information (including financial data, marketing information, and business plans) 280 58% Technical information 189 39% Software/algorithm 105 22% Formula 37 8% “Negative” knowledge/know-how 6 1%
- 28. 28 Trade Secret Misappropriation Misappropriation • Improper acquisition • Improper use • Improper disclosure Not misappropriation • Independent discovery/development • Acquisition from public information • Reverse engineering Note: “reasonable particularity” in misappropriation actions
- 29. 29 The Evolving Patent vs TS Debate Developments in Patent Law • America Invents Act (AIA) • Alice Corp. v. CLS Bank Developments in Trade Secret Law • Uniform Trade Secret Act (UTSA) • Defend Trade Secrets Act (DTSA)
- 30. 30 TS Misappropriators Federal Courts State Courts Employee or former employee 53% 77% Business partner 39% 20% Unrelated third party 6% 9% Other or unknown 6% 3%
- 31. 31 Patent vs Trade Secret Public disclosure Limited timeframe Registration costs ~3 years from filing to protection Defined scope of protection Enforcement mechanisms Maintaining secrecy Potential for indefinite protection No registration cost (but costs to keep information confidential) Immediate effect Potential variability in scope Patent TradeSecret
- 32. 32 Patents and TS: Additional Considerations • Patentable subject matter • Patent thickets • Expected length of exploitation • Reverse engineering • Ease of independent development
- 33. 33 COVID-19: Multi-pronged approach involving: • Underlying mechanism, signaling pathway (biochemistry) • Disease progression (physiology) • Community spread (epidemiology) • Prevention measures (protective equipment, sociology) • Detection and diagnostics (medical devices) • Tracking (telecommunications, government) • Treatment (medicine, pharmacology) • Prevention (vaccine development) IP: An Increasingly Complex Question
- 34. 34 IP: An Increasingly Complex Question • Access to information – Employee movement – Partners and collaborators • Leverage / message to the public • “Designing around”
- 35. 35 Patents AND Trade Secrets • Traditional view: patents OR trade secrets? • Evolving view – Not mutually exclusive – Complementary applications • Examples: – Patented technology generating trade secret data – Information maintained as trade secret until published as patent application – Internal manufacturing vs compositions
- 36. 36
Editor's Notes
- Welcome to the Innovation Women Speak! Webinar series. I’m Bobbie Carlton, the founder of Innovation Women. Innovation Women is a visibility bureau for entrepreneurial, technical, and professional women. Our mission is to eliminate the all-male all-pale and often all-stale panels you see so often at industry conferences and events. <next slide>
- We connect women with speaking opportunities and we connect event managers with awesome speakers, who just happen to be women. Innovation Women is… <next slide>
- …is so much more than just a traditional speakers bureau. Event managers can search the database for free and speakers pay just $100 a year to become a member. They get a profile on the platform and access to lists of speaking opportunities as well as a number of other cool benefits. <next slide>
- As a speaker on our site, you can see how often your profile is visited. Speakers can also notify us to promote their speaking engagements and event managers can easily create and store lists of speakers on the platform as they build out their events. <next slide>
- If you’d like more information on Innovation Women, check out our website. For our webinar attendees, we have a special offer of 20% off your first year. It’s like coffee money, you probably spent more visiting Starbucks. Before we move on, let’s look at what’s coming up on our webinar schedule... <next slide>
- This year, our webinar series has a new theme every month. October’s theme is Cybersecurity. All of our webinar speakers are Innovation Women members. If you are interested in applying to be one of our webinar speakers, we post the calls for speakers on our own platform. The deadline to apply for the next webinar is September 7th. If you’re already a member, keep an eye out for these opportunities on the site and in your weekly newsletter. <next slide>
- Before we get started with today’s presentation, I encourage you to sign up for our next webinar. On September 16th, Tess Gadwa will be presenting ”Actionable Data”. You’ll learn to: Visualize - Present dynamic data in the most effective and compelling way to facilitate interaction. Actualize - Design data interactions for maximum impact and resonance. Synthesize - Structure your data narrative so that visitors stay engaged. You can register for this webinar in the attachments tab. <next slide>
- This is an annotated version of your screen. Below the video viewing window, there are tabs. The default tab is “Ask a Question”. You can type in a question, or comment at any point during the program. The “Attachments or Links” tab is where you’ll see documents and links from today’s speaker -- and the link to sign up for our next webinar. You can download the attachments at any time during this webinar, and from the recording. The tab called "Rate This” helps us determine what you like. We read all the feedback. The Polls or Vote tab is where you’ll see polls from our speaker – she’ll ask you a question and you can answer it right on the screen. You can enlarge your screen to view it in full-screen mode. If at any time you need audio help – feel free to click on the Help button at the bottom of the screen. Today’s webinar is being recorded, so if you’d like to view this webinar again you will be able to. We send you the link after the webinar. Now – on to today’s presentation. <next slide>
- With us today is Hana Oh – Hana is an MIT-trained attorney who focuses on patent and trade secret litigation and licensing issues for innovative companies, including Samsung, Micron, Belkin, Alcon, and Novartis. As an engineer and as a large-firm IP attorney, Hana has frequently found herself as the only woman (or one of very few women) in a room full of men. She is thus committed to mentoring younger women and helping them draw on their strengths to succeed in their fields. For those listening – please note you can ask a question at any time and this webinar is being recorded for future playback at your convenience. We’re very excited to have you join us Hana…and I’ll turn it over to you now. <next slide>
- The fast pace of developments in tech, coupled with the ongoing changes in the legal landscape, make intellectual property (IP) protection more important than ever. Whether you are involved in creating, developing, or purchasing IP, understanding the various types of IP and ways to effectively protect your IP is vital. Can’t cover everything here; this is meant as a beginning of a conversation.
- Said differently: 4 in 5 patents have all-male inventors The number of patents with at least one woman inventor increased from 20.7% in 2016 to 21.9% by the end of 2019. The “Women Inventor Rate” (WIR) – the share of U.S. inventors receiving patents who are women – increased from 12.1% in 2016 to 12.8% in 2019. The share of women among new inventors on issued patents increased from 16.6% in 2016 to 17.3% by 2019. The gender gap in the number of women inventors who remain active by patenting again within five years is decreasing. For new inventors in 2014, 46% of women patented again in the next five years versus 52% of men (by 2019). In 1980, the gap was 28% for women versus 38% for men.
- “Fine arts” such as sculpture, painting, literature music – fields that were male dominated if not exclusively masculine vs “crafts” such as needlework, knitting, quilting and other “domestic” fiber Shelley Wright, A Feminist Exploration of the Legal Protection of Art, 7 CAN. J. WOMEN & L. 59, 94-96 (1994) Dan L. Burk, Bridging the gender gap in intellectual property, https://www.wipo.int/wipo_magazine/en/2018/02/article_0001.html https://pixabay.com/photos/needlework-embroidery-needle-crafts-4639780/ https://pxhere.com/en/photo/1594278
- The fast pace of developments in tech, coupled with the ongoing changes in the legal landscape, make intellectual property (IP) protection more important than ever. Whether you are involved in creating, developing, or purchasing IP, understanding the various types of IP and ways to effectively protect your IP is vital. Technology: Increased connectivity: people to tech, and tech to tech Legal: What is considered “protectable” IP is evolving What is considered “ownership” is evolving
- 35 U.S.C. 101 United States Patent No. 174,465 (telephone)
- Provisional: not evaluated on merits; abandoned after 12 months
- Provisional: not evaluated on merits; abandoned after 12 months
- Provisional: not evaluated on merits; abandoned after 12 months
- Provisional: not evaluated on merits; abandoned after 12 months
- https://pixabay.com/photos/coca-cola-the-coca-cola-company-4090021/
- AIA: 2011 Alice Corp. v. CLS Bank, 573 U.S. __, 134 S. Ct. 2347 (2014)—requires “inventive concept” beyond computer implementation of abstract idea UTSA: Adopted by most states but each state has unique law
- AIA: 2011 Alice Corp. v. CLS Bank, 573 U.S. __, 134 S. Ct. 2347 (2014)—requires “inventive concept” beyond computer implementation of abstract idea UTSA: Adopted by most states but each state has unique law
- AIA: 2011 Alice Corp. v. CLS Bank, 573 U.S. __, 134 S. Ct. 2347 (2014)—requires “inventive concept” beyond computer implementation of abstract idea UTSA: Adopted by most states but each state has unique law
- Canned questions: 1. What are some measures I (or my company) can take to protect trade secrets? What is considered sufficient? 2. What are some examples of inventions that could be protected under both patents and trade secret protection? 3. What are some reasons that companies pledge their patents to the public? Wouldn’t they have invested a lot of money and resources into that patent? 4. If my company wants to assert our IP rights, what steps should we take before starting a lawsuit?
- Thank you, Susanne for joining us and to you too at home. Don’t forget to leave us feedback! Have a good day.