Broadly speaking, any confidential business information which provides an enterprise a competitive edge may be considered a trade secret. Trade secrets encompass manufacturing or industrial secrets and commercial secrets. The unauthorized use of such information by persons other than the holder is regarded as an unfair practice and a violation of the trade secret. Depending on the legal system, the protection of trade secrets forms part of the general concept of protection against unfair competition or is based on specific provisions or case law on the protection of confidential information. (Source: http://www.wipo.int/sme/en/ip_business/trade_secrets/trade_secrets.htm) The subject matter of trade secrets is usually defined in broad terms and includes sales methods, distribution methods, consumer profiles, advertising strategies, lists of suppliers and clients, and manufacturing processes. While a final determination of what information constitutes a trade secret will depend on the circumstances of each individual case, clearly unfair practices in respect of secret information include industrial or commercial espionage, breach of contract and breach of confidence. (Source: WIPO- http://www.wipo.int/sme/en/ip_business/trade_secrets/trade_secrets.htm)
(Source: http://www.wipo.int/patentscope/en/patents/ and www.uspto.gov)
411 on IP 101 for Tech-Geeks in the Startup World
What is Intellectual Property Law ? “Intellectual property (IP) refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce.” –WIPO “Congress shall have power…to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries…” –US Constitution Article 1 Section 8
Why is it Important to Protect your Intellectual Property ? Ability to protect core ideas Limited term monopoly Provides a protected competitive advantage Opportunity to recoup costs on necessary R&D Defend one’s ideas from infringement Commercialize your invention successfully no more “Grant Proposals”!
Types of IP Trade Secret “Secret Sauce” Copyright “Artistic expression in the way something looks or sounds” Patent “Protects the embodiment or method of an idea” Trademark “Branding” DO NOT USE THESE TERMS INTERCHANGEABLY!
Trade Secret Industrial and/or Commercial secrets Confidentiality agreements and Legal recourse May impact future employment opportunities Classic examples: Coca Cola or KFC Spice Blend Uniform Trade Secrets Act Economic Espionage Act of 1996
Copyright A legal term of for the exclusive rights of a creator’s literary or artistic works Protection duration is lifetime of Author plus 70 years Types of works: books, film, music, software algorithms, plays, etc… Tangibility of expression is key distinction between a copyright and a patent Registration is not required but it helps Fair Use Doctrine
Trademark A distinctive sign associated with goods or services Distinctiveness needs to be maintained (e.g. Xerox) Registration is not required but it helps Duration is indefinite as long as it is in use and renewed every 10 years (First renewal must occur in between the 5th and 6th year time frame) (Find a better way of stating this point)
Patent Exclusive limited term monopoly for a novel, useful, unobvious, invention (20 Yrs from Date of Filing) 3 US types: Utility, Design, and Plant Patents are examined for viability thus full disclosure is required International Patent protection requires extensive planning First to Invent to now become First Inventor to File (AIA) Flow Diagram from the USPTO on the Process
First Inventor to File US will be switching from First to Invent to a First Inventor to File System on 3/16/2013 Syncing with the rest of the world’s IP Filing Systems Grandfathered into the First to Invent Category til 3/16/2013
Prior Art & International Protection People will forever keep on “reinventing the wheel” Know your technology’s competitive landscape Just because you have a patent does not mean your IP is protected Make sure the claims match up with the actual product US Patent is good only in the US PCT Applications provide an opportunity to file your patent protection globally with other country’s IP offices Hard to enforce adequate protection overseas without procuring Patents in foreign countries. Unless you are a MNC or buddies with the USTR Rep
Provisional and Non- Provisional Applications Provisional Application Secures your spot in line as a filer 1 year to take your idea and RTP towards POC Cheap and effective Non-Provisional Application Convert Provisional to a NP or file a NP on its own Actual Patent Application (Title,Abstract, Spec, Claims, Drawings, etc…) Backlog of initial review is on avg between 2-3 years Patent Agent/Attorney represents your case to the USPTO where a Patent Examiner makes a legal, science, and technical determination on your case
Typical Patent Application Process Provisional Non-Provisional-Examiner Reviews Case Non-Final Rejection Claim Amendment by Filer Allowance or Final Rejection If Allowed-Done but if FR then an After-Final Typically Occurs If AF-Rejected then RCE, Abandonment, or Appeal to BPAI If case goes BPAI route can eventually go CAFC and then SCOTUS
Bayh-Dole Act Applicable to Universities, Small Businesses, and Non- Profits ONLY! Designation and Ownership of IP rights becomes crucial during Bayh-Dole Implications (Major Points) Re-assigning of rights is generally prohibited Deferred IP assignment in lieu of License-free arrangement for federally-sponsored research Report each disclosed invention to the funding agency File for Patent Protection Must try to commercialize the invention Share royalties with inventor Use leftover funding for R&D and Education
How we protect against copy-cat competitors? Trade Secrets For many companies the greatest value are unique un-definable processes and system designs, not specific easily ascertainable aspects. This type of competitive info is best kept confidential. Do it best. Sounds trivial, but if the best user experience is provided, including cost, to customers, it will be extremely difficult or intimidating for other companies to enter the market. Capital intensiveness of the industry matters.
Know Your Options in Legal Firms Technical Competency is crucial Patent Agent might be suffice for USPTO purposes Patent Attorney makes more sense if litigation is part of the formula Lower Registration Number generally means more experienced practitioner General Exception to the rule: A former patent examiner with 3+ years of experience Handle the initial documentation and prep-work yourself Let the $500/hr attorney do the high level work
Refresher: Why you Should keep IP Rights in Mind? Defense: Future: defense against Patent Trolls or competitors who may come after you due to significant revenue creation Current: defense against competitors who want to slow the process down Education: Learn what’s been patented already & who’s competing Revenue: Patents may enable us to increase revenue by licensing our technology to others, without starting additional businesses Valuation: Financial capital is required to build your business The above points add value & confidence in your business model
Thank You Now switching topics for a second to make a brief announcement about the recently launched Patents for Humanity program!
OverviewFor over two centuries, strong patents have provided businessincentives that encourage technological progress to build ourmodern world. As we struggle against humanitarian issuesplaguing many of the worlds poor, patents play an essential rolein creating lasting solutions.The USPTO Patents for Humanity program creates businessincentives for patent holders to engage in humanitarian issues.After consulting with industry, universities, and non-profits, theUSPTO has developed this 12-month voluntary pilot program torecognize patent owners and licensees who apply their technologyto pressing global challenges.
Program Structure Awards competition Applicants describe how they have used patented technology or products to address humanitarian needs Up to 50 winners
Awards Certificate for expedited USPTO processing: appeal to internal Board of Appeals (BPAI) ex parte reexamination, including 1st appeal examination of a patent application, including 1st appeal USPTO plaque at an awards ceremony Public recognition
Selection Criteria Two sets of criteria: use and research It’s about distribution (of benefits) Focus on real-world results(C) Anna Ridout/Oxfam 2011
Humanitarian Useè Subject Matter – patented tech. effectively addresses a recognized humanitarian issue;i Target Population – the actions target an impoverished population; andn Demonstrated Impact – the actions have significantly increased application of the technology to address the humanitarian issue
More info Program info and materials: http://www.uspto.gov/patentsforhumanity Apply or view submissions: http://patentsforhumanity.challenge.gov/ Complete program rules in the Federal Register Notice at USPTO website Email firstname.lastname@example.org