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Grow + Sell Your Business Part Two: IP Protections


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Presented by Eric Duffee and Steve Barsotti on 9/19 as Part 2 of a Four Part Series. This seminar introduced the basics of Patent Requirements, Copyrights and confidential information (including Trade Secrets) and explained the strategies for and significance of protecting them. Discussions included necessary criteria for registration, how rights are established, and steps for filing and enforcement.

Published in: Law
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Grow + Sell Your Business Part Two: IP Protections

  1. 1. Be thinking…
  2. 2. What are the “intellectual” assets of your business?
  3. 3. Have you conducted an IP audit of the IP in your business?
  4. 4. What should I be doing to position for exit?
  5. 5. BUT FIRST…what are we talking about exactly…
  6. 6. Tangible Assets COMPANY VALUE ?
  7. 7. What is a PATENT?
  8. 8. Invention must be novel Not Obvious Full + true inventorship REQUIREMENTS
  9. 9. How long does a PATENT LAST?
  10. 10. Rights of a Patent OWNER Exclude others from making the invention Does not require you to actually use or sell invention
  11. 11. You may lose the right to get a patent if: You use or sell the invention publicly more than a year before filing You disclose the invention publicly more than a year before filing You get a foreign patent more than a year before filing
  12. 12. Confidential information + trade secrets are valuable business assets
  13. 13. Not all confidential information merits trade secret protection
  14. 14. Confidential Information Stuff we call “confidential” but isn’t Trade Secrets
  15. 15. Types of Information Companies Keep CONFIDENTIAL
  16. 16. How do trade secrets differ from other confidential information? Enjoy greater legal protections Must meet specific criteria Capable of lasting indefinitely Lose protection if disclosed intentionally or accidentally
  17. 17. Copyrights Original works of authorship Protect the “expression” of an idea WHAT ARE THEY?
  18. 18. Copyright REQUIREMENTS The expression must be original No protection for “functional articles”
  19. 19. Ideas Facts Titles Processes Names Unprotected MATERIAL Slogans Public Domain Materials
  20. 20. Reproduce Distribute Perform Display Create Derivative Works Rights of OWNERSHIP
  21. 21. Unless… There is an employee-employer relationship There is a written assignment Who is the Owner? THE AUTHOR
  22. 22. Copyright REGISTRATION Provides substantial benefits Must register before suing for infringement Availability of statutory damages Evidence of copyright validity + ownership
  23. 23. Assume all works are copyright protected Read “click-wrap” agreements or “read me” files Obtain permission to use any work in the public domain Use any work in the public domain Consult your legal team Recognize “fair use” is a defense, not a right Be aware that rights holders vary in their protectiveness Remember companies aggressively monitor for infringement
  24. 24. Use works found on the internet without permission Assume crediting the author absolves you of infringement Think CC license means you can use work any way you like Believe receiving cease + desist is the worst that can happen Assume “fair use” because intend to derive no profit Think because someone else is doing something, you can too Remove copyright notices or symbols from others’ works Think your unauthorized copying is harmless
  25. 25. Trademark Source Indicators Prevent Consumer Confusion FUNDAMENTALS
  26. 26. Distinctive Used = +
  27. 27. GENERICDESCRIPTIVESUGGESTIVEARBITRARY/ FANCIFUL Strongest trademark rights Inherent distinctiveness Strong trademark rights Inherent distinctiveness Weak trademark rights Acquired distinctiveness No trademark rights No distinctiveness CLOCK ESCALATOR TRAMPOLINE ASPIRIN BAND-AID TISSUE
  28. 28. A specimen is needed to show the mark as actually used in connection with each class of goods or services Tags Labels Photographs Advertisements Correspondence
  29. 29. How are rights ESTABLISHED?
  30. 30. U.S. Common Law
  31. 31. Filing for Registration
  32. 32. Benefits of REGISTRATION Evidence of validity + ownership Constructive nationwide use Right to use ® symbol Access to federal courts Potential for increased recovery Reveals points of infringement exposure Provides basis for registering the trademark in some foreign countries
  33. 33. How to Use a Trademark Following REGISTRATION Adopt + enforce guidelines Use consistently Use proper notice symbols Use in connection with registered goods/services Comply with renewal requirements
  34. 34. How to ENFORCE Keep Records Monitor Train Engage Legal
  35. 35. 7 BEST PRACTICES
  36. 36. 1 Create a Process for indentifying IP assets
  37. 37. 2 Obtain Key Contractual Protections
  38. 38. 3 Implement Security Measures Internally
  39. 39. 4 Address When Employees Join + Leave
  40. 40. 5 Require Employee Agreements
  41. 41. 6 Train Employees on What Matters + the Process
  42. 42. 7 Explore Registrations where possible
  43. 43. POP QUIZ! George Jetson owns a flying car business. To run his flying cars, he needs a developer to write a special software program. He hires Elroy to write the program that runs the cars. He pays Elroy $50,000 to write the software program, which Elroy accepts. Who owns the program?
  44. 44. POP QUIZ! Duff Beer comes up with a great recipe for a new brew. Duff plans to file for a copyright to protect the recipe. Is that the right decision?
  45. 45. POP QUIZ! Egon Spengler and Ray Stantz develop a great idea for a new proton pack. Being the academics they are, they write a scholarly article about the proton pack that details how it works. 18 months later, they meet with Peter Venkman and they agree that they should seek patent protection for the proton pack so they can start a ghost-busting business. Any issues?
  46. 46. POP QUIZ! Bayside High School’s fight song has the same tune as “On Wisconsin!” which was written in 1909. Mr. Belding gets a letter from the University of Wisconsin demanding that Bayside cease and desist from using the tune as its fight song. Zach and Kelly are distraught. What should Mr. Belding do?
  47. 47. Eric D. Duffee Kegler Brown Hill + Ritter 614-462-5433 Steve Barsotti Kegler Brown Hill + Ritter 614-462-5458