This document discusses key intellectual property issues for new business leaders. It covers the main types of intellectual property - patents, trade secrets, copyrights, and trademarks. For each type, it describes what they are, how to obtain them, their value, and important considerations. The overall message is that business leaders need to understand intellectual property in order to protect their ideas and brands through the appropriate legal means. They must also be aware of enforcement and ownership issues related to intellectual property.
IP - What Every Lawyer & Every Client Must Understand (Series: Intellectual P...Financial Poise
Intellectual property or “IP” is a term used to describe certain types of intangible property. Like other forms of property, such as real estate and personal property, IP can be owned, purchased or transferred. How ownership is determined differs according to the type of IP. This webinar discusses the importance of certainty in ownership of IP and how ownership of IP is entangled with areas of corporate law and employment law.
To listen to this webinar on-demand, go to: https://www.financialpoise.com/financial-poise-webinars/ip-what-every-lawyer-must-understand-2020/
IP: What Every Lawyer & Every Client Must Understand (Series: Intellectual Pr...Financial Poise
Intellectual property or “IP” is a term used to describe certain types of intangible property. Like other forms of property, such as real estate and personal property, IP can be owned, purchased or transferred. How ownership is determined differs according to the type of IP. This webinar discusses the importance of certainty in ownership of IP and how ownership of IP is entangled with areas of corporate law and employment law.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/ip-what-every-lawyer-every-client-must-understand-2021/
Why should you care about intellectual property?Azèle Mathieu
The sooner an entrepreneur think about protecting his/her intellectual property the better. This does not mean, not sharing his/her ideas. It simply means sharing ideas in a clever way!
Deck designed and delivered by Ian Bell from the Canadian Intellectual Property Office during his session at the Vancouver Innovation Labs (May 24th, 2016)
IP - What Every Lawyer & Every Client Must Understand (Series: Intellectual P...Financial Poise
Intellectual property or “IP” is a term used to describe certain types of intangible property. Like other forms of property, such as real estate and personal property, IP can be owned, purchased or transferred. How ownership is determined differs according to the type of IP. This webinar discusses the importance of certainty in ownership of IP and how ownership of IP is entangled with areas of corporate law and employment law.
To listen to this webinar on-demand, go to: https://www.financialpoise.com/financial-poise-webinars/ip-what-every-lawyer-must-understand-2020/
IP: What Every Lawyer & Every Client Must Understand (Series: Intellectual Pr...Financial Poise
Intellectual property or “IP” is a term used to describe certain types of intangible property. Like other forms of property, such as real estate and personal property, IP can be owned, purchased or transferred. How ownership is determined differs according to the type of IP. This webinar discusses the importance of certainty in ownership of IP and how ownership of IP is entangled with areas of corporate law and employment law.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/ip-what-every-lawyer-every-client-must-understand-2021/
Why should you care about intellectual property?Azèle Mathieu
The sooner an entrepreneur think about protecting his/her intellectual property the better. This does not mean, not sharing his/her ideas. It simply means sharing ideas in a clever way!
Deck designed and delivered by Ian Bell from the Canadian Intellectual Property Office during his session at the Vancouver Innovation Labs (May 24th, 2016)
What do businesses need to know about Intellectual Property? This presentation covers the basics of Trade Secrets, Patents, Trademarks, and Copyrights for entrepreneurs, business owners, freelancers, and creative professionals.
This workshop, led by intellectual property attorney and founder of Smartup, Yuri Eliezer, will help you understand what options are available to secure your work and how you can cover all your bases at a reasonable cost. Attendees will leave with an understanding of the difference between patents, trademarks, and copyrights, how to protect their software, how to preserve their rights, and who owns their contributions.
Introduction to UK Intellectual Property LawJane Lambert
An introduction to UK IP law. Presented orginally to young entrepreneurs in Bradfrod last May. Explains how the law protects investment in brands, design, technology and creative works. Gives some useful tips.
Intellectual Property Protection for ProductsJeremy Horn
Slides Calvin Chu recently used in his discussion w/ mentees of The Product Mentor.
The Product Mentor is a program designed to pair Product Mentors and Mentees from around the World, across all industries, from start-up to enterprise, guided by the fundamental goals…Better Decisions. Better Products. Better Product People.
Throughout the program, each mentor leads a conversation in an area of their expertise that is live streamed and available to both mentee and the broader product community.
http://TheProductMentor.com
Intellectual Property for Start-Ups and Small Businesses: A Top 10 and Q & A Series. Wednesday, February 20th @ 11:45 - 1:15 - Presented by Jill Link. Location: Bozeman Public Library - Large Community Room
Presented by James Longwell, Partner
The information in this presentation is for general information purposes only. It does not constitute a legal opinion or other professional advice.
Invited talk on Intellectual Property Rights in a national webinar "Rasa Manthana 2020" held on 31 July2020 organized by JS Ayurveda Mahavidyalaya, Nadiad
In this presentation, Rob McDonald and Stephen Parker discuss the following topics related to intellectual property:
- IP Due Diligence in Commercial Transactions
- Common IP Disputes that Arise in Business
- The New Copyright Modernization Act
In this presentation, FMC Partners Rob McDonald and Marlon Rajakaruna describe the importance of protecting your start-up company’s intellectual property (IP). The following topics are discussed:
- Types of Intellectual Property
- Patents
- Copyright
- Trade-marks
- Other Ways to Protect IP
- Protecting Your IP in Commercial Agreements
Presentation given to the Chicago Lean Startup Circle on Dec. 1, 2011.
In a lean startup, getting product-to-market-fit is everything. Along the way, consider core IP issues to make sure your startup owns all of the value that you are adding. You can also have lean IP, just make sure you fully understand the implication of bootstrapping.
As always, consult with a lawyer if you have questions or concerns.
What do businesses need to know about Intellectual Property? This presentation covers the basics of Trade Secrets, Patents, Trademarks, and Copyrights for entrepreneurs, business owners, freelancers, and creative professionals.
This workshop, led by intellectual property attorney and founder of Smartup, Yuri Eliezer, will help you understand what options are available to secure your work and how you can cover all your bases at a reasonable cost. Attendees will leave with an understanding of the difference between patents, trademarks, and copyrights, how to protect their software, how to preserve their rights, and who owns their contributions.
Introduction to UK Intellectual Property LawJane Lambert
An introduction to UK IP law. Presented orginally to young entrepreneurs in Bradfrod last May. Explains how the law protects investment in brands, design, technology and creative works. Gives some useful tips.
Intellectual Property Protection for ProductsJeremy Horn
Slides Calvin Chu recently used in his discussion w/ mentees of The Product Mentor.
The Product Mentor is a program designed to pair Product Mentors and Mentees from around the World, across all industries, from start-up to enterprise, guided by the fundamental goals…Better Decisions. Better Products. Better Product People.
Throughout the program, each mentor leads a conversation in an area of their expertise that is live streamed and available to both mentee and the broader product community.
http://TheProductMentor.com
Intellectual Property for Start-Ups and Small Businesses: A Top 10 and Q & A Series. Wednesday, February 20th @ 11:45 - 1:15 - Presented by Jill Link. Location: Bozeman Public Library - Large Community Room
Presented by James Longwell, Partner
The information in this presentation is for general information purposes only. It does not constitute a legal opinion or other professional advice.
Invited talk on Intellectual Property Rights in a national webinar "Rasa Manthana 2020" held on 31 July2020 organized by JS Ayurveda Mahavidyalaya, Nadiad
In this presentation, Rob McDonald and Stephen Parker discuss the following topics related to intellectual property:
- IP Due Diligence in Commercial Transactions
- Common IP Disputes that Arise in Business
- The New Copyright Modernization Act
In this presentation, FMC Partners Rob McDonald and Marlon Rajakaruna describe the importance of protecting your start-up company’s intellectual property (IP). The following topics are discussed:
- Types of Intellectual Property
- Patents
- Copyright
- Trade-marks
- Other Ways to Protect IP
- Protecting Your IP in Commercial Agreements
Presentation given to the Chicago Lean Startup Circle on Dec. 1, 2011.
In a lean startup, getting product-to-market-fit is everything. Along the way, consider core IP issues to make sure your startup owns all of the value that you are adding. You can also have lean IP, just make sure you fully understand the implication of bootstrapping.
As always, consult with a lawyer if you have questions or concerns.
Learning Objective: Develop an understanding of how an invention can be protected.
At some point in your life, a light bulb above your head shines bright, as you believe you’ve come up with something brilliant, namely an invention. But what now? How do you protect it?
Whether you want to produce and market your invention on your own, or license it to another company, the only way to profit from your invention and to guarantee that no one will steal your idea is to seek patent protection. This seminar will help you gain an understanding of patents and the process of pursuing patent protection of your inventions.
At the end of this seminar, participants will be able to:
a. Explore the pros and cons of pursuing patent protection.
b. Understand the patent application process.
c. Identify options for patent monetization.
Each business has some form of intellectual property. Whether its trademarks, copyrights, patents, or trade secrets, each needs to be understood and protected.
Legal mistakes can doom even the best startup concepts and founding teams. This workshop prepares you with a legal road map to successfully safeguarding your product or idea. Yuri Eliezer, Founder and Patent Attorney at SmartUp, will show you how to reserve your Intellectual Property rights.
Online marketing has opened the floodgates for trademark and copyright infringement—learn the essentials of intellectual property. BRANDit Live! is a series of webinars hosted by Studio 2055 that include lively discussions with our special guests who bring insight and knowledge to the subject of brand.
On Saturday, April 28, 2012, Knobbe Martens Partner Agnes Juang presented "Intellectual Property Considerations During Product Development" at the Sino-American Biomedical & Pharmaceutical Professionals Association (SABPA) 7th Annual Biomedical Forum, which was held at the McDonnell Douglas Engineering Auditorium at UC Irvine.
Intellectual Property Slide Deck for Video Project
Intellectual Property Basics
1. Intellectual Property
What New Business Leaders Need to Know
Presented by:
Matti Neustadt Storie
Attorney
Stoel Rives LLP
Technology and Intellectual Property
January 28, 2010
1
3. How do you get it?
• INVENT IT – patents, trade secrets
• CREATE IT – copyright, trade secrets
• USE IT - trademark
• REGISTER IT – patent, copyright, trademarks
• BUY IT
3
4. What is it worth?
• Commercial or Competitive Advantage
– Monopoly rights
– Exclusivity
– Consumer Preference – Good Will
• Generate Revenue
– Licensing
– Merchandising
• Defensive Value
– Cross Licensing
– MAD
4
6. Patents
• A government grant of a limited right to exclude
others from making, using, selling, offering, and
importing the claimed invention
• What a patent is not:
– A right to “practice” your invention
– You may not be free to practice your invention if it infringes
someone else’s patent
• A right to sue, not a right to do
• “Flavors” of patents: utility, design, and plant
6
7. Patents
• Where do inventions
come from?
– Necessity
– Shortcomings of prior
solutions
– Applications of new
technologies
– Customer requests
– Engineers
7
8. Patents
• To obtain a utility patent, applicant must show that
the invention is:
– New
– Useful
– Nonobvious
• New inventions have not been disclosed, or (in the
U.S.) are applied for within one year of disclosure.
• Non-obvious inventions means that it is not readily
ascertainable by a “person of ordinary skill in the art”
based on prior art.
8
9. Patents
• Utility Patents – for useful inventions
– Term of 20 years from earliest filing date (for new
application)
• Design Patents – for designs (cannot be usesful)
– Term of 14 years from grant
– Narrowly interpreted – best against knock offs that don’t
include labels.
• Average of 32 months from application to grant (all
patents)
9
10. Key Patent Issues for
Business Leaders
• Patents must be registered – there is no common law
right in an idea
– First-to-invent system in the U.S.
– One year grace period for filing
• Disclosure Requirements
• Cost
• Business Benefit / ROI
• Ownership/Inventorship
– Employee is inventor
– Employer will only own the patent under certain
circumstances.
10
12. Trade Secrets
• Examples:
– Marketing and business plans
– Computer source code
– Secret recipes, formulas
– Product development efforts, including information about
what doesn’t work (“negative information”)
12
13. Trade Secrets
• A trade secret is something that gives a business a commercial
advantage in the marketplace because it is secret.
• A trade secret is a creature of state law, both common and
statutory law.
• Trade secrets may exist in either tangible or intangible form and
creation of a trade secret depends on how the information is used
and protected. No registration system is available.
• Misappropriation and use of trade secrets may be subject to US
state and federal law as well, e.g., the RICO statute, the Economic
Espionage Act, and the Lanham Act.
13
14. Trade Secrets
• A trade secret will only be protected by the courts if a
business takes care to keep it secret!
• How?
– Employment agreements
– Security and treatment of information
– Non Disclosure Agreements with third parties
– Limited Access
– Avoiding infection
14
15. Key Trade Secrets Issues for
Business Leaders
• Developing and implementing policies regarding the
security of information.
• Implementing systems to reduce the risk of disclosing
trade secrets.
• Drafting and using appropriate non-disclosure
agreements with employees and third parties.
• Appropriate use of Non-Compete Agreements with
key employees.
15
17. Copyrights
• Copyright protects “original works of authorship.”
• What are “works of authorship”?
– An idea or concept that is “fixed in a tangible medium of
expression.”
– What is fixed?
– What is an expression?
• Copyright protection only the EXPRESSION of the
idea, and not the idea itself.
– Monopoly rights in an idea are only granted through patents.
17
18. Patent vs. Copyright
• Patent law allows the owner the right to exclude all others
from making, using, or selling the invention. The scope
of the invention is determined by the patent claims. It does
not matter if the infringer independently developed the
same invention.
• Copyright law prevents the copying of the expression of
ideas. Copyright law does not protect ideas themselves.
As a result, copyright law does not protect against
someone else stealing an invention, nor does it
prevent anyone else from independently creating the
same or similar expression.
18
19. Copyrights
• An owner of a copyright has certain monopoly rights.
• These rights include the right to:
1. Reproduce the work;
2. Prepare derivative works based on the original work;
3. Distribute copies of the work by sale, rental, lease or
lending;
4. Perform the work publicly;
5. Broadcast the work (in the case of a sound recording; and
6. Display the work publicly.
19
20. Copyright
• Ownership
– The Works Made for Hire Doctrine
– Works created by employees as part of their job are
generally owned by their employers.
• Government
• Professors
– However, paying a non-employee to create a work does
NOT guarantee ownership of the copyright.
• Consultants
• Independent Contractors
• Software Developers
20
22. Copyrights
• Infringement • Defenses
– Music Downloads – Fair Use
– Linking – Public Domain
– Framing – Safe Harbor
– Tweeting
22
23. Key Copyright Issues for
Business Leaders
• Ownership
– Copyright ownership is always vested in the author or creator of
the work.
– Right vest immediately upon fixation
• Term
– Life of the author plus 70 years (individual)
– 120 years after creation or 95 years after publication (corporate)
• Registration
– Registration a prerequisite to suit, recovery of statutory damages
• Infringement and Defenses
23
27. Trademarks
• Trademark law is a type of consumer protection.
• Trademarks identify source of goods or services.
• Consumers associate familiar sources with past
experience and reputation.
• Result: protection of the consumer from confusion as
to source and quality.
27
28. Trademarks
• An owner only has monopoly rights for the goods
which are associated with the mark.
• A mark is only protectable if it is inherently distinctive
or has acquired distinctiveness (“secondary
meaning”)
Most Least distinctive
distinctive
28
29. Trademarks
• United States • Abroad
– Words – Words
– Designs (Logos) – Designs (Logos)
– Packaging and Product – Packaging and Product
Configurations Configurations
– Colors – Touch Marks
– Sounds – Holograms
– Fragrances – Taste marks
– Combinations of the Above
29
31. Trademarks
• Trademark rights exist as soon as a distinctive mark
is used in commerce.
– For descriptive marks, rights are gained after it can be
shown that the mark has acquired distinctiveness.
• Registration of a trademark is not required for an
owner to have rights or to assert those rights.
– However, it has benefits.
31
36. Trademarks
• Registration
– Registration provides enhanced rights and constructive notice to
the world.
• Marking – ™ and ®
– Marking can be a requirement for damages for infringement.
– Erroneous marking may lead to lawsuits.
• Use
– Consistent use.
– Trademarks are generally used as adjectives, not nouns and
NEVER verbs.
• Genericide
36
37. Trademarks
• Infringement
– Passing Off (counterfeiting)
– Consumer Confusion
• Actions for infringement based on counterfeit goods
will only be available if the counterfeit goods are sold
under the trademark.
• The main test of infringement is whether the use of
the allegedly infringing trademark creates consumer
confusion.
• Senior user generally has priority and can stop
subsequent users.
37
38. Key Trademark Issues for
Business Leaders
• Ensuring no prior use of the brand you are seeking
• Branding strategy
– Don’t pick brands likely to infringe
– Create and implement policies to protect your brand
• Registration plan
• Enforcement plan
– It is true that if you don’t use it, you will lose it.
38
39. Key IP Issues for
Business Leaders
• Make sure you own it.
• If not, make sure you have the right to use it.
• Utilize protections available.
• Careful contracting.
• Monitor your rights, and be prepared to enforce them.
39
40. Thank You!
Matti Neustadt Storie
Stoel Rives LLP
Technology and Intellectual Property
(503)294-9523
mnstorie@stoel.com
40