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Intellectual Property Law 101 
For Small Businesses 
Presented By 
Jennifer Hoekel, Nicholas Clifford, 
and Jeff Schultz 
...
What is Intellectual Property (“IP”)? 
© 2014 Armstrong Teasdale 
LLP 
2 
Creations of the 
mind 
 Inventions 
 Literary...
Why is IP Important? 
 IP Rights Promote and Protect Innovation 
• Incentivizes economic growth 
 IP Assets Are A Compan...
Types of IP Protection 
 Trade Secrets 
• Business technologies or competitive information with economic value 
that is p...
© 2014 Armstrong Teasdale 
LLP 
IP Rights 
Protection 
Enforcement 
Groundbreaking 
Products 
Advances in 
Technology 
Inn...
Confidential Information 
© 2014 Armstrong Teasdale 
LLP 
-versus- 
Trade Secret Information 
6
© 2014 Armstrong Teasdale 
LLP 
Trade Secrets 
-versus- 
Patents 
Trade Secrets 
Patents 
(secret) (publicly 
available) 
...
What is Confidential Information? 
 Information, documents, communications provided to 
or made in confidence with anothe...
Confidentiality 
 Usually based on a contractual obligation. 
• Non-disclosure agreement 
• Employment agreement 
• Settl...
What Do You Need to Do? 
 Protect Your Company’s Confidential 
Information/Documents 
• Handle in accordance with contrac...
What Do You Need to Do? 
 Protect Confidential Information Received from 
Others 
• Certain information/documents the com...
Consequences 
 What can happen if there is a breach of 
confidentiality? 
• Loss of its confidentiality (i.e. it becomes ...
What Is a Trade Secret? 
 General requirements: 
• Information (including formulas, patterns, 
compilations, programs, de...
Examples 
© 2014 Armstrong Teasdale 
LLP 
14
Possible Trade Secrets? 
 Business Information 
• Examples? 
 Technical Information 
• Examples? 
 R&D 
• Examples? 
© ...
Is It Really Secret? 
 Is the information known outside your business? 
 Who knows the information in your business? 
 ...
What Do You Need To Do? 
 Establish and maintain reasonable procedures to 
keep secrecy 
 Examples 
• Limits on personne...
Consequences 
 What can happen if there is a failure to maintain 
secrecy? 
• Loss of trade secret status (i.e. it become...
© 2014 Armstrong Teasdale 
LLP 
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 ...
Types of Patents & What They 
Protect 
 Utility patents (most common) 
• Protection for 
− Machines/devices 
− Processes ...
Patents - What They Give 
 Expiration 
• Utility patents – 20 years from priority date 
• Design patents – 15 years from ...
Patents - Requirements 
 Invention: 
• Novel (i.e. new) 
• Useful (i.e., useful purpose that it actually performs) 
• Non...
No Patent If … 
 1 year or more before you file your application 
(1) the same invention was patented or described in a 
...
Patents - Process 
 Long Process 
• 3+ years for utility patents; 1½ years for design 
patents 
 Pending U.S. Applicatio...
Anatomy of a Patent 
Title of the invention 
Inventor 
Assignee/owner 
Application number and date 
Related prior applicat...
Anatomy of a Patent 
Claims 
© 2014 Armstrong Teasdale 
LLP 
Specification: 
- Written description 
of invention 
- Often ...
What Do You Need To Do? 
 Employment Agreements 
• Assignment of inventions to employer 
 Invention Disclosures (see sam...
Consequences 
 No invention disclosure program? 
• You may not be learning about patentable innovations 
 Failure to fil...
Trademarks 
 A distinctive name, word, phrase, logo, symbol, 
design, image, or a combination 
 Identifies source 
 Unl...
What Do You Need To Do? 
 Should register with the United States Patent and 
Trademark Office 
• Nationwide Protection 
•...
Copyrights 
 Gives the creator of an original work exclusive rights 
for a limited time (decades). 
 Registered at the L...
What Do You Need To Do? 
 Registration 
• What does it get you? 
− the ability to file suit 
− presumption of copyright v...
IP Strategies 
 Protect what is important to the company 
 Protect what is important to your competitor 
 Keep private ...
Questions? 
© 2014 Armstrong Teasdale 
LLP 
35
Contacts 
Jeff Schultz 
Partner 
Armstrong Teasdale 
LLP 
314.259.4732 
jschultz@armstrongteasdale.c 
om 
www.armstrongtea...
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Intellectual Property Law 101 for Small Businesses Featuring Armstrong Teasdale Attorneys: Jennifer Hoekel, Nick Clifford, & Jeffrey Schultz

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Intellectual property ("IP") is often a company's most valuable asset. If you have an idea, business name, logo, or invention, you need to protect it. In this presentation you will learn the basics of IP law. Find out what can happen if you're not covered and why intellectual property law is such an important economic tool for small businesses.

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

  1. 1. Intellectual Property Law 101 For Small Businesses Presented By Jennifer Hoekel, Nicholas Clifford, and Jeff Schultz © 2014 Armstrong Teasdale LLP © 2014 Armstrong Teasdale LLP
  2. 2. What is Intellectual Property (“IP”)? © 2014 Armstrong Teasdale LLP 2 Creations of the mind  Inventions  Literary works  Artistic works  Designs  Symbols  Names/images used in commerce
  3. 3. 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 © 2014 Armstrong Teasdale LLP 3
  4. 4. 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 © 2014 Armstrong Teasdale LLP 4
  5. 5. © 2014 Armstrong Teasdale LLP IP Rights Protection Enforcement Groundbreaking Products Advances in Technology Innovative Solutions to Problems IP Strategy
  6. 6. Confidential Information © 2014 Armstrong Teasdale LLP -versus- Trade Secret Information 6
  7. 7. © 2014 Armstrong Teasdale LLP Trade Secrets -versus- Patents Trade Secrets Patents (secret) (publicly available) 7
  8. 8. 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 © 2014 Armstrong Teasdale LLP 8
  9. 9. Confidentiality  Usually based on a contractual obligation. • Non-disclosure agreement • Employment agreement • Settlement agreement • Contracts  Can be based upon status. • Employee • Trustee • Officer/director © 2014 Armstrong Teasdale LLP 9
  10. 10. 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! © 2014 Armstrong Teasdale LLP 10
  11. 11. 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 © 2014 Armstrong Teasdale LLP 11
  12. 12. 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 © 2014 Armstrong Teasdale LLP 12
  13. 13. 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 © 2014 Armstrong Teasdale LLP 13
  14. 14. Examples © 2014 Armstrong Teasdale LLP 14
  15. 15. Possible Trade Secrets?  Business Information • Examples?  Technical Information • Examples?  R&D • Examples? © 2014 Armstrong Teasdale LLP 15
  16. 16. 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? © 2014 Armstrong Teasdale LLP 16
  17. 17. 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 © 2014 Armstrong Teasdale LLP 17
  18. 18. 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 © 2014 Armstrong Teasdale LLP 18
  19. 19. © 2014 Armstrong Teasdale LLP Patents Utility Patents: Design Patents “How it works” “How it looks”
  20. 20. 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. © 2014 Armstrong Teasdale LLP 20
  21. 21. 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 © 2014 Armstrong Teasdale LLP 21
  22. 22. 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 © 2014 Armstrong Teasdale LLP 22
  23. 23. 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 © 2014 Armstrong Teasdale LLP 23
  24. 24. 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. © 2014 Armstrong Teasdale LLP 24
  25. 25. 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) © 2014 Armstrong Teasdale LLP 25
  26. 26. Anatomy of a Patent Title of the invention Inventor Assignee/owner Application number and date Related prior application number and date © 2014 Armstrong Teasdale LLP US Patent Number Prior art references Abstract 26
  27. 27. Anatomy of a Patent Claims © 2014 Armstrong Teasdale LLP 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 27
  28. 28. What Do You Need To Do?  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 © 2014 Armstrong Teasdale LLP 28
  29. 29. 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 © 2014 Armstrong Teasdale LLP 29
  30. 30. Trademarks  A distinctive name, word, phrase, logo, symbol, design, image, or a combination  Identifies source  Unlimited duration  Applied for at the USPTO © 2014 Armstrong Teasdale LLP
  31. 31. What Do You Need To Do?  Should register with the United States Patent and Trademark Office • Nationwide Protection • Treble Damages • Potential Recovery of Attorney Fees © 2014 Armstrong Teasdale LLP 31
  32. 32. 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 © 2014 Armstrong Teasdale LLP
  33. 33. What Do You Need To Do?  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 © 2014 Armstrong Teasdale LLP 33
  34. 34. 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 © 2014 Armstrong Teasdale LLP 34
  35. 35. Questions? © 2014 Armstrong Teasdale LLP 35
  36. 36. Contacts Jeff Schultz Partner Armstrong Teasdale LLP 314.259.4732 jschultz@armstrongteasdale.c om www.armstrongteasdale.c om © 2014 Armstrong Teasdale LLP Nicholas Clifford, Jr. Partner Armstrong Teasdale LLP 314.259.4711 nclifford@armstrongteasdale.co m www.armstrongteasdale.co m 36 Jennifer Hoekel Partner Armstrong Teasdale LLP 314.342.4162 jhoekel@armstrongteasdale.com www.armstrongteasdale.co m Webinar CLE Confirmation Code: SHC1012

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