Basic Overview of concepts of Intellectual Property

1. Protecting
Intellectual
Property
August 27, 2018
©LEWIS RICE LLC
Presented By:
And
@LewisRice @kirkdmn
@LGGpod

2. What is Intellectual Property?
• “Intangible business assets whose commercial
value is derived from intellectual labor”
– Patents
– Trademarks
– Copyrights
– Right of Publicity & Likeness Rights
– Trade Secrets and “Know How”
– Databases
– Defensive Publication/Open Source

3. Why You Should Care
ONE OF YOUR COMPANY’S FIRST ASSETS
COMPLEX AND WIDELY MISUNDERSTOOD
WHAT YOU DON’T KNOW CAN HURT YOU
DON’T BELIEVE THE INTERNET

4. Why You Should Care
Gregory N. Mandel: “What is IP For? Experiments in Lay and
Expert Perceptions” St. John's Law Review, Vol. 90, No. 3, 2016
(17 Apr 2017)
-“There is a significant disconnect between how IP law treats
attribution. . . And how creators and the general public
understand attribution and IP rights.” (Page 672)
-Even with “a recent rise in attention to IP, the general public
retains an extremely low level of knowledge about the law. On
average, the national sample of United States adults. . . correctly
answered only one-an-a-half questions better than chance on a
basic ten question IP law quiz.” (Page 674)

5. Copyright
The exclusive right to copy, distribute, perform,
display, or rip off an expressive work.
COPYING
REGISTER
FAIR USE
LONG DURATION
AUTOMATIC
CHEAP

6. Trademarks
The exclusive right to call your product or
service by a particular name.
“GENERICIDE”
REGISTER
DISTINCTIVENESS
INDEFINITE
AUTOMATIC
AFFORDABLE

7. Trade Dress
The unique appearance of your product service
offering
INDEFINATE
REGISTER?
DISTINCTIVENESS?
“LOOK AND FEEL”
AUTOMATIC
AFFORDABLE

8. Publicity & Likeness Rights
The exclusive right to control the commercial
exploitation of your personality and identity.
HIDDEN TRAPS
UNIONS
STATE LAW
LONG DURATION
AUTOMATIC
FREE

9. Patents
A temporary legal monopoly to make, use, do,
import, or sell something.
SHORT-LIVED NEGATIVE RIGHT
DIFFICULT AND EXPENSIVE
NO COPYING PUBLIC DISCLOSURE

10. Types of Patents
PROVISIONAL APPLICATION
UTILITY PATENT
PLANT PATENT
DESIGN PATENT
“BUSINESS METHOD”
“COMPUTER-IMPLEMENTED INVENTION”

11. Patents
Three requirements for a patent:
•NEW
•USEFUL
•NON-OBVIOUS
An inventor is entitled to a patent for any novel
and useful invention which is also not an
obvious combination of, or improvement over,
the existing art.

12. What You May Want (Patent)
- Preparation of Provisional Application
- Provisional Patent Application Filing(s)
- Search (Patentability)
- Not generally required for filing
- Tries to save money on the far end of the process
- Are required to disclose anything you know about
- Search (Clearance)
- $$$$$
- Preparation of Utility Application

13. The PCT and non-US IP Registration
– Provides for “patent pending” in many different countries
with a single application
– Increases total fees as all national fees must be paid
eventually (if filed) on top of PCT fees.
– Allows for a non-binding “International Prosecution”
– Can be filed and Prosecuted in English by more local
attorneys (US, Europe)
– Provides for delay of national phase to determine
countries to file in.
– Not Available for Trademarks

14. Paris and National Phase
– Significant up front costs
• Translations
• National filing fees
– Faster process if patent rights are needed quickly
– Only process for non-PCT countries
– Used eventually regardless
– How you have to file Trademarks internationally

15. Trade Secret
Information that is valuable because nobody
else knows it or can figure it out, and you keep
it secret.
DISCOVERY
NON-DISCLOSURES
BUSINESS
INFORMATION
LONG DURATION
AUTOMATIC
“FREE”

16. Data & Databases
Compilations of data painstakingly assembled
at great effort and expense
NO COPYRIGHT
LICENSES
SCRAPERS & BOTS
LONG DURATION
AUTOMATIC
FREE

17. Defensive Publication/Open
Source
Making your technology public to inhibit the
rights of others to protect something similar
FIRST MOVER
ENFORCEMENT
500LB GORILLA
NO PROTECTION
“EASY”
FREE

18. Summary
Property Rights Acq. Acq. Cost Duration
Patent Government $25,000-$50,000+ 17 years (-ish)
Trademark Automatic n/a ($325 reg.) Indefinite
Copyright Automatic n/a ($35 reg.) Life of author + 70 years
Trade Secret Automatic n/a Indefinite
Publicity Automatic n/a Indefinite
Databases Automatic n/a Indefinite
Copyright Registrations (2011):
Utility Patent Applications (2011):
539,332
535,763

19. • Ultimately a business decision
– What do you want to do?
• Use different types of IP available to you
depending on protection needed
• Do you intend to be:
• Aggressive?
• Defensive?
• Passive?

20. or

21. • Good Reads
“The Invisible Edge”
By Mark Blaxill and Ralph Eckardt
“Rembrandts in the Attic”
By Kevin Rivette and David Kline (Dated)

22. Shield
Most versatile, but dangerous
if it’s all you have
Armor
Fills the gaps, but limits
mobility
Sword
Keeps enemy at bay, and
allows you to parry
The Armored Knight

23. But I Don’t Need/Have Any IP!
• “Everybody does it this way.”
– In exactly the same way, or do you have an improvement or change which
gives you an advantage?
• “It’s not protectable”
– Names, Phrases, Sounds, Smells, Shapes, Designs, Inventions, and Colors
can all be protected
• “It’s just Engineering.”
– So were the light bulb, the cartridge rifle, and the airplane.
• “It’s all just Marketing”
– Then why did you spend so much time and money to obtain it.
• “It’s too expensive”
– Until you have a problem

24. Protecting IP (First Steps)
Get an Attorney you are willing to call and work with.
- AND TALK TO THEM
Have an IP Strategy you can articulate
- Invention Disclosures
- Trademark Use in Commerce
- Document (Version) Control
- Trade Secret Policies and Procedures
Make Sure You Have and Use Agreements with
Contractors, Employees, and Third Parties.

25. I’m Smart – I can Go it Alone
ANYONE WITH A KNIFE AND A PATIENT CAN
PERFORM AN APPENDECTOMY
IT’S NOT THE PROCEDURE THAT’S HARD,
IT’S IF THE POTENTIAL VALUE IS WORTH
THE RISK INCURRED
PRICE VS. COST

26. Sample Patent Claims
What are these for?
8. The combination and arrangement of electro-magnets
in one or more circuits of metallic conductors with armatures
of magnets for transmitting intelligence by signs and sounds,
or either, between distant points and to different points
simultaneously.
5. The mode and process of propelling and connecting
currents of electricity or galvanism in and through any desired
number of circuits of metallic conductors from any known
generator of electricity or galvanism.

27. Sample Patent Claims
1. A method of placing an order for an item comprising:
under control of a client system, displaying information identifying
the item;
in response to only a single action being performed, sending a
request to order the item along with an identifier of a purchaser of the item
to a server system;
under control of a single-action ordering component of the server
system,
receiving the request;
retrieving additional information previously stored for the purchaser
identified by the identifier in the received request; and
generating an order to purchase the requested item for the
purchaser identified by the identifier in the received request using the
retrieved additional information; and
fulfilling the generated order to complete purchase of the item
whereby the item is ordered without using a shopping cart ordering
model.

28. Picking Your Attorney
• Know what services they provide (“invention
promotion company” vs. agent vs. attorney).
• Have a relationship with an attorney you can talk
with ideally before you need them.
• Don’t decide on skill alone (e.g. law school, firm,
scientific background).
• Don’t decide on recommendations alone. Your
attorney needs to be right for you.
• Don’t decide based on price alone (either way).
• Know your limitations and your expectations.
– You are not necessarily a good client…

29. Working with Your Attorney
• Provide as much information as is available at the
start (Disclosure Forms)
• Recognize that the more advance notice, the
better job that can be done, and often the less
expense it can be done for. Think Ahead.
• Know what you are looking to protect, and have
ideas finalized as much as possible.
• Have clear contact channels and accessibly to
Inventors and others involved in process. It’s
expensive to NOT talk.
• Plan ahead for possible litigation.

30. Protecting IP (Common Mistakes)
• Not Talking to Your Attorney in Time
– Call BEFORE discussing outside company regardless of
with who or why.
• Common Pitfalls
– Trade Shows
– Investment meetings
– Marketing and sales
– Sending articles for publication
• Thinking Last Years Protection is Sufficient
• Not Bolstering Your Own Position
– Non-Disclosure Agreements (NDA/CDA)
– Self-Serving Disclosures

31. Protecting IP (Common Mistakes)
• Timing is Paramount (Particularly in patent)
– US is “First to File”
– You have no protection until you have filed.
• BUT Application needs to describe invention
– Often requires certain “formalities” be met.
• Any application is better than no application, but a
better application is still better.
– You always want SOMETHING to argue about
later.
– The 0 to 10 scale.

32. What are you getting into?
IP Protection is a process, not a destination

33. Any questions?Q&A and More
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