2. Topics Mobile Employee Issues Identifying and Protecting Innovations Patent Process Primer for Founders and Executives The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
3. Mobile Employee Issues Trade Secrets Nonsolicitation Noncompetition The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
4. Trade Secrets What are Trade Secrets? Information – technical & business Economic value from not being generally known Reasonable efforts to maintain secrecy The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
5. Common Scenarios Mobile Employees Founders leave prior employer Company hires new employees Founder/Company share information with 3rd parties The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
6. Labor Code 2870: Employers in California typically own everything you do unless unrelated to current or anticipated research or development. Must make a “clean exit” Don’t start work until after you leave. Take NOTHING!!!! Show Independent Development – Keep records. Consider a waiver or deal with former Employer. Example: Pursuing exploration of opportunities in emerging markets. Understand Nonsoliciation/Noncompete terms of Employment Agreement. Trade Secrets - Mobile Employees The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
7. NONDISCLOSURE AGREEMENTS One-Way Disclosing One-Way Receiving Mutual NDA Every engagement with a 3rd party is a negotiation. Work with your attorney to understand the parameters for each engagement. If you are not protected, tell the other side what you can do in broad high level terms without disclosing the “magic.” Avoid being “pumped.” Sharing Information The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
8. Types of IP Protection Trademarks – Protect the brand equity investments (Company Name, Logo, Product Names). Copyrights – Protect creative works (authorship, graphic design, etc…) Patents – Protect technical innovations Trade Secrets – Protect economically valuable non-public information (technical/business) The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
9. Identifying Innovations What is it about your product that is different and adds value? Team: Design, Dev., Mktg, Sales, Apps. Features that enable value added differentiators should be analyzed for protection. The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
10. Patents vs. Trade Secrets Is the innovation capable of being maintained in total secrecy FOREVER! Facebook – NOT! Advanced threading algorithm executing ONLY on Company Servers and incapable of reverse engineering – maybe? Trade Secrets – Once it is public, it is GONE. The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
11. Patent Basics Provisional v. Nonprovisional Specification, Drawings, Claims Novel & Not Obvious Technical innovations Software – Yes Pure Business Methods – No The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
18. Foreign Filing – Non-public/1 yr from filingThe content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
19. Patent Process Basics Meeting with Patent Attorney to: Review product offerings and identify potential innovations Develop “portfolio” and “business” strategy Deep dive into identified technologies Drafting and Filing of Patent Applications Duty of Disclosure Foreign Filing, Provisional/Nonprov. The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
20. Patent Process Basics (cont.) Publication/Non-publication – 18 mo. Examination by USPTO – 1-2 yrs. First Office Action/Response Further Examination/Responses Allowance/RCE/Appeal Continuations, Divisionals, CIPs Patent Grant Maintenance fees The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
21. Misc Patent Issues in High Tech Product Clearance and Patent Search Standards, Open Source, and RANDZ terms Contracts and Development Agreements Cost/Quality/Scope Offensive/Defensive Strategies - Litigation The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
22. Closing Thoughts Intellectual Property Rights are “Assets” that add value to your business. Your Lawyers “should be” trusted members of your executive team. Choose carefully and deliberately. “Help me, help you.” Jerry McGuire The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
