Intellectual Property Law 101 for Small Businesses Featuring Armstrong Teasdale Attorneys: Jennifer Hoekel, Nick Clifford, & Jeffrey Schultz

Intellectual Property Law 101
For Small Businesses
Presented By
Jennifer Hoekel, Nicholas Clifford,
and Jeff Schultz
© 2014 Armstrong Teasdale
LLP
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What is Intellectual Property (“IP”)?
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Creations of the
mind
 Inventions
 Literary works
 Artistic works
 Designs
 Symbols
 Names/images used
in commerce

Why is IP Important?
 IP Rights Promote and Protect Innovation
• Incentivizes economic growth
 IP Assets Are A Company’s Most Valuable Property
• Must be diligently protected or the rights may be lost.
 IP Is Protected Against Unauthorized Use by Law
• Legal rights are based in the U.S. Constitution
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Types of IP Protection
 Trade Secrets
• Business technologies or competitive information with economic value
that is protected against disclosure to third parties
 Patents
• Exclusive property right granted to an inventor in exchange for a detailed
disclosure of the invention
 Trademarks/Trade Dress
• A name, logo, design or expression used to identify or distinguish
products or services of a particular source from products or services sold
by others
 Copyrights
• Protection for the tangible form of expression for original works of
authorship
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IP Rights
Protection
Enforcement
Groundbreaking
Products
Advances in
Technology
Innovative Solutions to
Problems
IP Strategy

Confidential Information
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-versus-
Trade Secret Information
6

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Trade Secrets
-versus-
Patents
Trade Secrets
Patents
(secret) (publicly
available)
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What is Confidential Information?
 Information, documents, communications provided to
or made in confidence with another.
 Business examples:
• Customer lists
• Pricing
• Technical information
• Business strategy
• Contracts
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Confidentiality
 Usually based on a contractual obligation.
• Non-disclosure agreement
• Employment agreement
• Settlement agreement
• Contracts
 Can be based upon status.
• Employee
• Trustee
• Officer/director
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What Do You Need to Do?
 Protect Your Company’s Confidential
Information/Documents
• Handle in accordance with contractual obligations
• Keep secure
• Do not make unnecessary copies
• Provide only to employees who need access
• Do not provide to non-employee personnel
− Exception: is there a non-disclosure agreement in
place?
• Avoid unnecessary electronic communications
• Pay close attention to email recipients
• Place CONFIDENTIAL on “Re” line and in body
• When in doubt: ASK!
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What Do You Need to Do?
 Protect Confidential Information Received from
Others
• Certain information/documents the company receives
from business partners which must be treated as
confidential by agreement
• Under some agreements, confidential information
must be designated with a “CONFIDENTIAL” stamp
• Must treat with the same protections as your own
confidential information
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Consequences
 What can happen if there is a breach of
confidentiality?
• Loss of its confidentiality (i.e. it becomes public)
• Breach of contract
• Lawsuit: attorneys’ fees, damages, injunction
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What Is a Trade Secret?
 General requirements:
• Information (including formulas, patterns,
compilations, programs, devices, methods,
techniques, or processes) that is not generally known
or readily ascertainable
• Has economic value from being secret
• Is the subject of reasonable
efforts to maintain its secrecy
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Examples
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Possible Trade Secrets?
 Business Information
• Examples?
 Technical Information
• Examples?
 R&D
• Examples?
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Is It Really Secret?
 Is the information known outside your business?
 Who knows the information in your business?
 What steps are taken to guard its secrecy?
 What is its value to your business and to others?
 What did your business do to develop it? Efforts?
$$?
 How easily could others acquire or duplicate it?
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What Do You Need To Do?
 Establish and maintain reasonable procedures to
keep secrecy
 Examples
• Limits on personnel who have access
• Logs
• Secured access (locks, security, cameras, etc.)
• Restricted copying
• Employment agreements
• Non-disclosure agreements
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Consequences
 What can happen if there is a failure to maintain
secrecy?
• Loss of trade secret status (i.e. it becomes public)
− No right to prevent competitors from using
• Trade secret misappropriation
• Lawsuit: attorneys’ fees, damages, injunction
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Patents
Utility Patents: Design
Patents
“How it works” “How it
looks”

What Is a Patent?
 A right to exclude others from:
• Making
• Using
• Offering for sale or selling
• Importing
 A patent is a negative right to control others from
using your invention.
 Misconception - A patent does not grant the
affirmative right to use your own product.
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Types of Patents & What They
Protect
 Utility patents (most common)
• Protection for
− Machines/devices
− Processes and Article of Manufacture
− Compositions of Matter (including Improvements)
− Business Methods
 Design patents
• Protection for the visual/ornamental characteristics of
an article
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Patents - What They Give
 Expiration
• Utility patents – 20 years from priority date
• Design patents – 15 years from date of issuance
 Legal Monopoly – Market Control
 Royalties – Bargaining Power
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Patents - Requirements
 Invention:
• Novel (i.e. new)
• Useful (i.e., useful purpose that it actually performs)
• Non-obvious
 File Promptly
• First-to-file v. first-to-invent
• Provisional v. non-provisional
 Costs - $25K to $40K in fees and filing costs, plus
maintenance fees
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No Patent If …
 1 year or more before you file your application
(1) the same invention was patented or described in a
printed publication available anywhere in the world;
(2) the same invention was in public use in the U.S.;
(3) the same invention was on sale in the U.S.
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Patents - Process
 Long Process
• 3+ years for utility patents; 1½ years for design
patents
 Pending U.S. Applications Secret
• 18 Months after Filing, Published
• No Way to Know What Competitors Have Filed Until
Publication
 International Filings
• Must File Multiple Applications
• Treaties (Paris Convention, PCT, EPC)
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Anatomy of a Patent
Title of the invention
Inventor
Assignee/owner
Application number and date
Related prior application
number and date
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US Patent Number
Prior art references
Abstract
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Anatomy of a Patent
Claims
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Specification:
- Written description
of invention
- Often includes discussion
of prior art
- Drawings
- Preferred embodiment(s)
- Must be enabling to persons
of ordinary skill in the art of the
invention
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 Employment Agreements
• Assignment of inventions to employer
 Invention Disclosures (see sample)
• Description of invention
• Business analysis
• Prior Art
 Competitor monitoring/patent watch
 Freedom to operate searches and clearances
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Consequences
 No invention disclosure program?
• You may not be learning about patentable innovations
 Failure to file for patents in timely manner
• Loss of potential patent rights
 No organized competitive watch program?
• Missed opportunity for key business intelligence
• Missed opportunity for avoiding infringement
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Trademarks
 A distinctive name, word, phrase, logo, symbol,
design, image, or a combination
 Identifies source
 Unlimited duration
 Applied for at the USPTO
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 Should register with the United States Patent and
Trademark Office
• Nationwide Protection
• Treble Damages
• Potential Recovery of Attorney Fees
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Copyrights
 Gives the creator of an original work exclusive rights
for a limited time (decades).
 Registered at the Library of Congress
 Copyright exists as soon as the work is created
• There is no strict need to register, but you have fewer rights
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 Registration
• What does it get you?
− the ability to file suit
− presumption of copyright validity
• If registered within 3 months of publication, will allow
statutory damages and attorney fees
− $750 - $30,000 per work
− Willful infringement – up to $150,000 per work
• Requires three things to be submitted to the Copyright
Office:
− (1) application, (2) fee, (3) copy or representation of the work
• Current fee for online registrations: $35
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IP Strategies
 Protect what is important to the company
 Protect what is important to your competitor
 Keep private what can’t be easily reversed
engineered
 Use non-disclosure agreements with vendors
 Continue to periodically assess the IP portfolio
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Questions?
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Contacts
Jeff Schultz
Partner
Armstrong Teasdale
LLP
314.259.4732
jschultz@armstrongteasdale.c
om
www.armstrongteasdale.c
om
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Nicholas Clifford,
Jr.
Partner
Armstrong Teasdale
LLP
314.259.4711
nclifford@armstrongteasdale.co
m
www.armstrongteasdale.co
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36
Jennifer Hoekel
Partner
Armstrong Teasdale
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314.342.4162
jhoekel@armstrongteasdale.com
www.armstrongteasdale.co
m
Webinar CLE Confirmation Code: SHC1012

Intellectual Property Law 101 for Small Businesses Featuring Armstrong Teasdale Attorneys: Jennifer Hoekel, Nick Clifford, & Jeffrey Schultz

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Intellectual Property Law 101 for Small Businesses Featuring Armstrong Teasdale Attorneys: Jennifer Hoekel, Nick Clifford, & Jeffrey Schultz