2014 Protecting Yourself & Your Intellectual Property by James Balls

1. Patent versus Trade Secret
2. Non-Disclosure, Non-Compete, & Non-
Solicitation Agreements
3. Ownership of an Invention
4. File First in the USA or Elsewhere?
5. Multiple Inventors from Different Countries
6. Litigation
Lecture Outline

Four Types of Intellectual Property
1. Copyrights
2. Trademarks (and trade dress)
3.Patents
4.Trade Secrets
Patent v. Trade Secret

Patent
• A limited monopoly (exclusive rights to make, use,
and sell invention) in exchange for publicly disclosing
invention
Trade Secret
• Confidential information from which the owner
derives an economic benefit by preventing it from
being publicly known

Trade SecretPatent

Factors to Consider
• Ability to detect patent infringement
• Ability to reverse-engineer
• Likelihood of licensing the technology
• Scope of potential patent claims and
ease of design-around
• Marketing considerations

Publishing/Disclosure
Risks
• Can preclude patentability
• Eliminate trade secrets
Benefits
• Defensive publications
• Offensive publications

Meadow Fresh
Whey-Protein Milk Substitute
®
Real World Example

Real World Example

Non-Disclosure Agreement
• A confidentiality agreement that can be used
to protect trade secrets and other confidential
information.
• Easier to enforce than non-compete and
non-solicitation agreements.
• Often include “assignment of inventions”
clause to ensure company (not employee)
owns trade secrets and other confidential
information.
Non-Disclosure, Non-Compete, and Non-

Non-Compete Agreement
• An agreement to not engage in activities that
compete with those delineated in the
agreement. Often, employees agree not to
work for a direct competitor for a certain
amount of time after leaving a company.
• Not enforceable in all jurisdictions
• Must be reasonable in duration, territory, and
scope of prohibited activity.

Non-Solicitation Agreement
• Typically an agreement that an employee not
solicit customers of the company and/or not
solicit other employees of the company after
the employee’s stops working at company.
• Some terms may be construed as a “Non-
Compete Agreement” and therefore may be
unenforceable

Ownership of an Invention
• Multiple people were involved in
inventing; who is the owner of the
patent?
• I created my invention at work; does my
employer own my invention?
• I created my invention at school; does my
university own my invention?

Ownership of an Invention (Employer)
• “Employment Agreements” or “Pre-
Invention Assignment Agreements”
(often in employee manuals)
• “Employed to Invent”
• “Shop Right” – A right to use the patent
on a non-exclusive, non-assignable,
royalty-free basis

Ownership of Intellectual Property:
1. MIT owns Intellectual Property made or created by MIT
faculty, students, staff or others participating in research
pursuant to a sponsored research agreement to which MIT
is a party;
2. ownership of copyrightable works created as "works-for-
hire" [] that will vest with MIT;
3. ownership of Intellectual Property developed by faculty,
students, staff, and others participating in MIT programs,
including visitors, with the significant use of funds or
facilities administered by MIT will vest with MIT.
Ownership of an Invention (University)

Real World Example
Giant Gila Monster (Lizard)

Real World Example
~$ 600 million in U.S. Sales Annually

• No “International” or “Global” patent
• International patent application (Patent
Cooperation Treaty)
• Must file within 12 months from filing first
application in an individual country
• Useful to defer decision where to file
• Useful to defer costs
• Useful to receive International Search
Report
File First in the USA or Elsewhere

General Considerations
• Company Resources
• The Geographical Scope of the
Company
• Company Goals
• Competitive and Cooperative
Strategies

Now less important to file first in USA than before
the America Invents Act
• Most countries recognize US filing dates
• US provisional application can be in any
language
• English is common language legally recognized
in many jurisdictions
• US system allows for the non-publication of
applications

• Who should be named as inventors?
• Where was the invention made?
• In what countries should patent
applications be filed?
• Where should the first patent
application be filed?
Multiple Inventors from Different
Countries

Rank Patents 2013 Company Country
1 6809 IBM USA
2 4676 Samsung Electronics Ltd Korea
3 3825 Canon K Japan
4 3098 Sony Corp Japan
5 2660 Microsoft Corp USA
6 2601 Panasonic Corp Japan
20 1334 BlackBerry Ltd Canada
23 1149 Telefonaktieboloaget L M Ericsson Sweden
33 997 Siemens AG Germany
36 934 Koninklijke Philips N V Netherlands
37 922 Hong Fu Jin Precision (Shenzhen) Co. China
Countries

Inventor Country % Cross-Border
Inventor
Most-Likely Country
of Co-Inventor
US 8% Germany
Japan 3% US
Germany 20% US
Korea 4% US
Taiwan 10% China
Canada 26% US
Great Britain 36% US
France 26% US
China 38% US
Switzerland 48% Germany
Italy 22% US
Israel 23% US
Countries

Top Cross-Border Inventor Patents
• International Business Machine (IBM)
• Microsoft
• Hong Fu Jin Precision (Shenzhen)
• Intel
• Cisco
• General Electric
• Schlumberger
• Nokia
• Hewlett-Packard
Countries

Foreign Filing License
• Some countries require residents to file a
patent application in the resident’s country
first before filing elsewhere
• Requirement generally arises from national
defense concerns (i.e., the export of military
or other sensitive technology)
• Most countries offer permission to file abroad
first if requested.
Countries

Countries
No Restrictions
• Mexico
• Japan
• Taiwan
• Indonesia
• Australia
Restrictions
• USA
• UK
• France
• Germany
• China
• South Korea
• New Zealand
• Canada
• India

Countries
France
“A failure of a person domiciled in France, or a
company whose principal place of business (“siege”) is
in France, to file a patent application first in France, or
the disclosure of an invention subject to such
requirement prior to obtaining the requisite
authorization to disclose from the Ministry of Defense,
is sanctioned by a 6,000 Euro fine and, if the French
national defense is deemed harmed by such failure to
comply, five year imprisonment.”

Litigation
Foreign Filing License
• DO NOT RESPOND! (seek advice from
counsel)
• Work with counsel to access likelihood of
infringement
• Begin collecting applicable
literature/evidence
• Consider declaratory judgment suit
• Rules for formal lawsuit

BOSTON
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Phone: 617.367.4600
HOUSTON
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Houston, TX77002
Phone: 713.517.3400
LOS ANGELES
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Twenty-Third Floor
Los Angeles, CA 90071
Phone: 213.787.2500
SAN FRANCISCO
555 Mission Street
Thirty-Fourth Floor
San Francisco, CA 94105
Phone: 415.814.6161
SILICON VALLEY
21771 Stevens Creek Blvd.
First Floor
Cupertino, CA 95014
Phone: 408.414.7330
WASHINGTON D.C.
1875 Eye Street, N.W.
Eleventh Floor
Washington, DC 20006
Phone: 202.331.7111
WEST PALM BEACH
525 Okeechobee Blvd.
Fifteenth Floor
West Palm Beach, FL 33401
Phone: 561.847.7800
WILMINGTON
1007 North Orange Street
Ninth Floor
Wilmington, DE 19801
Phone: 302.658.9141
www.novakdruce.com
NOVAK DRUCE CONNOLLY
BOVE + QUIGG LLP
THANK YOU!

2014 Protecting Yourself & Your Intellectual Property by James Balls

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2014 Protecting Yourself & Your Intellectual Property by James Balls