To view the accompanying webinar, go to: https://www.financialpoise.com/financialpoisewebinars/view-webinar/?id=262053587&slides=MJDLVHp03HDaeb 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.

2. Practical and entertaining education for
attorneys, accountants, business owners
and executives, and investors.
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3. The material in this webinar is for informational purposes only. It
should not be considered legal, financial or other professional
advice. You should consult with an attorney or other appropriate
professional to determine what may be best for your individual
needs. While Financial Poise™ takes reasonable steps to ensure
that information it publishes is accurate, Financial Poise™ makes
no guaranty in this regard.
DISCLAIMER
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4. MEET THE FACULTY
MODERATOR:
William C. Spence SpencePC
PANELISTS:
Richard Claywell J. Richard Claywell CPA
Kristin Garris Tannenbaum Helpern Syracuse &
Hirschtritt LLP
Brian Landry Saul Ewing Arnstein & Lehr LLP
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5. ABOUT THIS WEBINAR
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.
This webinar is delivered in Plain English, understandable to you even if you do not have a
background in the subject. It brings you into an engaging, even sometimes humorous, conversation
designed to entertain as it teaches. And, it is specifically designed to be viewed as a stand-alone
webinar, meaning that you do not have to view the other webinars in the series to get a lot out of it.
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6. ABOUT THIS SERIES
Intellectual property (IP) laws in the US have undergone fundamental changes over the past several years. For example, in 2011, the
Leahy-Smith America Invents Act (AIA) overhauled the American patent system in a way that had not been accomplished since 1952.
Moreover, the Supreme Court decided several cases that, among other things, created a tougher environment for inventors/patent
applicants and expanded the scope of trademark protection to marks that were likely to be previously rejected. In 2016, The Defend
Trade Secrets Act created new federal laws that allow an owner of a trade secret to sue in federal court when its trade secrets have been
misappropriated. And new technologies, such as artificial intelligence, have scholars and legislators rethinking the scope of copyright
protection and debating additional reforms that have the potential for even more change.
In an increasingly competitive commercial environment, entrepreneurs and managers must understand how these changes to our
patent, trademark, trade secret, and copyright laws may potentially impact US businesses. This series of webinars seeks to both educate
you on current laws and prepare you to take full advantage of the changes that lie ahead. Please join some of the leading attorneys in the
World, as they discuss—in plain English for the non-expert—the basics of U.S. IP laws and the changing landscape as it affects US
businesses.
As with every Financial Poise Webinar, each episode is delivered in Plain English understandable to investors, business owners, and
executives without much background in these areas, yet is also valuable to attorneys, accountants, and other seasoned professionals.
And, as with every Financial Poise Webinar, each episode brings you into engaging, sometimes humorous, conversations designed to
entertain as it teaches. Each episode in the series is designed to be viewed independently of the other episodes, so that participants will
enhance their knowledge of this area whether they attend one, some, or all episodes.
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7. Dates shown are premiere dates; all episodes will be available on demand after
their premiere date.
EPISODES IN THIS SERIES
Episode#1 What Every Lawyer & Every Client Must Understand 2/7/2018
Episode#2 Nuts & Bolts of Patents 3/14/2018
Episode#3 Nuts & Bolts of Copyrights 4/11/2018
Episode#4 Nuts & Bolts of Trademarks 5/16/2018
Episode#5 Leveraging & Protecting Trade Secrets in the 21st Century 6/13/2018
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8. ..,,,
PRESENTATION OVERVIEW
What is intellectual property (IP)?
Basic IP Rights:
• Copyrights
• Trademarks
• Patents
• Trade Secrets
How do you protect your IP and avoid infringement?
8

9. ..,,,
TYPES OF PROPERTY
Under the law, property is generally categorized as:
• Real property – buildings and land.
• Personal property – all other property, including:
• tangible property (e.g., office equipment and furniture) and
• intangible property (e.g., stocks, bonds, and intellectual property).
9

10. ..,,,
WHAT IS INTELLECTUAL PROPERTY?
Intellectual property (IP) refers to intangible creations of the mind.
There are four main types of IP:
• Copyrights – protect works of authorship, such as books, music, or
pictures.
• Trademarks – protect company identifiers, such as logos or package
designs.
• Patents – protect new and useful inventions and discoveries.
• Trade Secrets – protect commercially valuable protected information,
such as business plans, formulas, or customer information.
10

11. ..,,,
WHY IS INTELLECTUAL PROPERTY
IMPORTANT?
Intellectual property can be a company’s greatest asset. For example,
intellectual property:
• Builds brand loyalty and awareness;
• May be sold, licensed, or leveraged for profit; and
• Protects interests in inventions, technology, goods, and services used
and sold by companies.
11

12. ..,,,
WHAT IS A PATENT?
A patent is a right granted by the U.S. government to an inventor for a limited
time to exclude others from:
• Making, using, offering to sell, or selling the patented invention; or
• Importing the patented invention into the United States.
Patents protect inventions and discoveries, including new and useful processes,
machines, products, compositions, or manufactures. Types of patents include
design, utility, and plant patents.
12

13. ..,,,
PATENT ELIGIBILITY REQUIREMENTS
For an invention to be patentable, the invention must fall within a category of
patentable subject matter and must be useful, new, and non-obvious.
• Patentable subject matter excludes abstract ideas, laws of nature, and
natural phenomena.
• Usefulness or utility
• New or novelty
• Non-obviousness
13

14. ..,,,
PATENT PROSECUTION AND OWNERSHIP
To obtain a patent on an invention, an inventor, patent agent, or patent
attorney must file a patent application with the U.S. Patent & Trademark
Office (USPTO). The process of filing a patent application and negotiating the
patent application with the USPTO is known as patent prosecution.
A patent application is made in an inventor’s name, and the inventor is
presumed to initially own rights in the invention. An inventor may assign (or
may be required to assign) the patent application or patent to another party.
14

15. ..,,,
PATENT RIGHTS AND LITIGATION
A patent provides a right to exclude others. It does not give the right to make,
use, or sell the patented invention.
A party that practices an invention claimed in a patent without a license from
the owner infringes the patent.
• Direct Infringement vs. Indirect Infringement
• Remedies
15

16. ..,,,
WHAT IS A TRADEMARK?
A trademark identifies the source of a good or service used in commerce.
• Words, phrases, or letters (e.g., APPLE®, McDonald’s slogan I’m Lovin’
It, General Electric’s GE mark)
• Symbols or shapes (e.g., Nike’s , Pepsi’s )
• Product, package, or store design (e.g., 7-Eleven store design, APPLE
store design, adidas’ three stripes)
• Sounds, scents, colors, or patterns (e.g., NBC’s 3-note chimes, Tiffany’s
blue packaging, Burberry’s plaid )
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17. ..,,,
TRADEMARK REQUIREMENTS
A trademark must be used in commerce and be distinctive. A hierarchy of
distinctiveness exists to determine the strength of a mark.
• Coined (no commonplace meaning) (e.g., KODAK®)
• Arbitrary (e.g., APPLE® for computers)
• Suggestive (e.g., KOOL-AID®)
• Descriptive (cannot be registered unless the mark acquires
distinctiveness) (e.g., NO SPOT RINSE SYSTEM®)
• Generic (can never be registered as a trademark) (e.g., BAKERY,
SOAP, ICE CREAM)
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18. ..,,,
GENERAL RULE FOR TRADEMARKS
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The MORE information
a trademark conveys about the
associated product or service,
the LESS useful and valuable
it is as a trademark.

19. ..,,,
TRADEMARK OWNERSHIP AND
REGISTRATION
Trademark rights and ownership are acquired through use of the mark in
commerce.
Registration of a trademark is not necessary, but registration provides benefits to
the owner. Benefits include:
• Rights extend nationwide from the filing date of a trademark application, even
if use is in a limited region;
• Constructive notice to the public of ownership;
• Legal presumption of ownership of the mark and the exclusive right to use the
mark nationwide on or in connection with the goods and/or services listed in
the registration;
• Use the U.S. registration as a basis to obtain registration in other countries;
• Right to use the registered trademark symbol “®”
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20. ..,,,
WHAT CAN BE PROTECTED BY A
COPYRIGHT?
• Original works of authorship fixed in a tangible medium (the work to be
perceived, reproduced, or otherwise communicated)
• Protects the expression of an idea, but not the idea or concept itself
• Copyright generally not available for:
a. words
b. symbols
c. slogans
d. common designs
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21. ..,,,
WHAT TYPES OF WORK RECEIVE
COPYRIGHT PROTECTION?
Copyright protection available for work that contains sufficient originality and
expressive elements.
Unlike in patent law, there is no requirement that a copyrightable work be
sufficiently distinct from earlier creations.
➢ Independently created
➢ Possess a spark or minimal degree of creativity
21

22. ..,,,
WHAT TYPES OF WORK RECEIVE
COPYRIGHT PROTECTION?
Examples of copyrightable material include musical compositions, sculptures,
and motion pictures.
• Logos, hangtags, labels, and even packaging that feature artwork or graphic
design elements may be copyrightable.
• Copyright registration for trademarks that incorporate such artwork or
graphic design elements can provide another layer of protection for the
mark/logo.
22

23. ..,,,
SCOPE OF COPYRIGHT PROTECTION
A copyright protects the elements of a work that are original.
Public domain elements can be “selected, coordinated, and arranged in such a
way as to render the work original.”
23

24. ..,,,
COPYRIGHT OWNERSHIP
Generally, the creator(s) of the work owns the copyright, except for:
• “Work Made for Hire”
• A work prepared by an employee within the scope of his or her
employment is owned by the employer.
• Certain works specially ordered or commissioned are not owned by
the creator, if the parties expressly agree in a signed writing that the
work is a work made for hire.
• Sale of the entire copyright
24

25. ..,,,
COPYRIGHTS: 70, 95, 120 YEARS
• Copyright protection (for works created after Jan. 1, 1978): 70 years after
author’s death, or, if a work made for hire, 95 years from year of first
publication or 120 years from year of creation
• Assignment: Author retains right to terminate after 35 years (17 U.S.C §
203); If less than all rights conveyed, author may be able to exploit work in
derivatives.
25

26. ..,,,
COPYRIGHT RIGHTS AND REGISTRATION
A copyright gives its owner the exclusive right to:
• Reproduce the work
• Prepare derivative works
• Distribute copies of the work
• Perform certain works
• Display certain works
Copyright registration is not necessary for protection, but registration provides
certain benefits to owners.
26

27. ..,,,
WHY REGISTER A COPYRIGHT?
• Copyright protection (for works created after January 1, 1978) vests as soon as
the copyrightable work is fixed in a tangible medium
• Obtaining a copyright registration enhances this protection
• Evidence of ownership and facts in registration:
If copyright application is filed within 5 years of publication, registration
certificate will be prima facie evidence of the validity of the copyright and of the
facts stated in the certificate
27

28. ..,,,
WHY REGISTER A COPYRIGHT? (CONT)
• Registration is generally a prerequisite for filing a copyright infringement
lawsuit for works of U.S. origin.
• Registration prior to infringement of the work, or within three months of
the work’s publication, entitles copyright owner to seek statutory damages
(in lieu of actual damages and profits) and attorneys’ fees.
28

29. ..,,,
WHAT IS A TRADE SECRET?
A trade secret is any information, including a formula, pattern, compilation,
program, device, method, or process:
1. That derives economic value from not being readily ascertainable; and
2. Is the subject of efforts that are reasonable under the circumstances to
maintain its confidentiality.
Example: KFC’s Fried Chicken Recipe.
29

30. ..,,,
TRADE SECRET REQUIREMENTS AND
LIMITATIONS
To receive trade secret protection, information must be:
1. An actual secret;
2. Protected by reasonable efforts; and
3. Valuable as a secret.
Limitations on trade secret protection include:
• Independent discovery; and
• Reverse engineering
30

31. ..,,,
IS THERE A TRADE SECRET?
Is there a trade secret? 6 factors used in both common law & statutory
jurisdictions:
• Extent of the measures used to protect the secrecy of the information
• Commercial value of the information to the business and to its competitors
• Extent to which those in the company knew about it
• Extent to which those outside the company knew about it
• Ease/difficulty with which it was developed
• Ease/difficultly with which it could be duplicated by another
31

32. ..,,,
TRADE SECRET MISAPPROPRIATION
Trade secret misappropriation occurs when there is a wrongful use, disclosure,
or acquisition of the trade secret by “improper means.”
Trade secret misappropriation typically occurs in the context of employer-
employee relationships, but may also occur when any person or thing is given
access to protectable information.
32

33. ..,,,
PROTECTING TRADE SECRETS
• No need to file / register
• But, you must be proactive:
• Stamp “confidential” on appropriate files
• Instruct employees to not disclose secrets
• Install security systems
• Use non-disclosure and confidentiality agreements
• Duration: lasts until it becomes public knowledge
33

34. ..,,,
BEST PRACTICES FOR PROTECTING IP
• Develop an IP company policy and portfolio
• Obtain non-disclosure agreements and assignment agreements
• Mark protected products and goods
• Weigh costs and benefits of registering copyrights and trademarks and
applying for patents
• Weigh costs and benefits between potential patent and trade secret
protection
• Enforce rights against infringers
34

35. ..,,,
BEST PRACTICES FOR AVOIDING
INFRINGEMENT
• Perform research on existing IP
• Question and understand how employees obtain and develop ideas,
marks, or publications
• Understand the marketplace prior to launching new products and
services
• Engage services to monitor new IP filings and perform infringement
analysis
35

36. ABOUT THE FACULTY
J. RICHARD CLAYWELL
richard@biz-valuation.com
36
Richard is a practicing Certified Public Accountant, and holds the additional designations of Accredited in Business Valuation,
Accredited Senior Appraiser, Certified Business Appraiser, International Certified Valuation Specialist, Certified Valuation Analyst,
Certified in Merger & Acquisition Advisor, Master Analyst in Financial Forensics, Certified in Fraud Deterrence, Accredited in
Business Appraisal Review. Richard has been valuing closely held companies since 1985. Richard’s practice is restricted to business
valuation, economic damages, profit enhancement and exit planning.
Richard has been an instructor for the National Association of Certified Valuation Analysts for many years, has been an instructor for
the Internal Revenue Service and the International Association of Consultants Valuators and Analysts (IACVA). Richard is currently
the Director of Education for the IACVA and is responsible for the business valuations materials being taught in 55
countries. Richard has taught business valuation or economic damage courses in China, Korea, Taiwan.
Richard has performed over 1,000 business valuations since 1985. Richard has testified in Texas County Court, Texas State Court,
Bankruptcy Court and Texas State Courts. Richard has given testimony in economic damages (lost profits), shareholder disputes,
personal injury, wrongful termination and divorce.
Richard has given many presentations worldwide. A partial list of some of the topics covered include fraud, risk assessment, forensic
accounting, valuing intangible assets, remaining useful life analysis, survivor curves,valuing customer relationships, valuing brands,
allocation of goodwill, valuing software, and quantifying synergies.

37. ABOUT THE FACULTY
KRISTIN GARRIS
garris@thsh.com
37
Kristin Garris joined Tannenbaum Helpern Syracuse & Hirschtritt LLP as counsel in 2017. She focuses on trademark and
copyright litigation, enforcement, and IP transactional matters. She counsels clients across a broad spectrum of industries on
trademark, trade dress, and copyright enforcement and protection issues; Internet and social media issues; and trademark
licensing. Kristin has created and managed comprehensive international trademark and copyright Internet policing and
enforcement programs tailored for a range of clients, and regularly advises clients on the clearance of marks and registration
strategies. She has significant experience with trademark proceedings before the Trademark Trial and Appeal Board of the
U.S. Patent and Trademark Office and has helped clients resolve intellectual property matters in federal court proceedings,
in arbitration, and through creative and practical settlements outside the courtroom. With extensive experience in Internet
enforcement and domain name disputes, Kristin has helped recover hundreds of domain names for clients through various
methods. A skilled negotiator, Kristin has negotiated and drafted license agreements and IP provisions in asset purchase
agreements and other commercial contracts. Kristin currently serves as a co-chair of the Fashion Law Committee of the
Entertainment, Arts, and Sports Law section of the New York State Bar Association.

38. ABOUT THE FACULTY
BRIAN LANDRY
Brian.Landry@saul.com
Brian Landry draws on a broad base of intellectual property experience and technical expertise to help clients
identify, protect, and enforce their IP. Brian has significant experience in medical devices as well as consumer
products, building materials, and devices and software having research, diagnostic, and therapeutic applications.
Brian handles patent matters involving a variety of medical technologies including cryotherapies for medical and
cosmetic indications, phototherapies, urologic devices, neurologic interfaces, surgical tools, and novel uses of
existing therapeutics. Brian also works with companies to harmonize their IP strategy across trademarks, designs,
copyrights, and trade secrets to strengthen their offensive position and reduce risks. Brian draws upon
experience guiding clients though diligence for acquisitions and public offerings as well as contested proceedings
before the USPTO Patent Trial and Appeal Board, US District Courts, and US Court of Appeals for the
Federal Circuit to deliver and execute strategies that create long-term business value.
38

39. ABOUT THE FACULTY
WILLIAM C. SPENCE
william.spence@spencepc.com
39
William Cory Spence assists individual and business clients to obtain their best possible outcome in contentious legal matters. He has
extensive experience in litigation, arbitration, and mediation involving all areas of intellectual property law. A registered patent
attorney, Mr. Spence serves clients by providing advocacy and advice in the areas of: patent infringement; trade secret
misappropriation; unfair competition (including conspiracy, tortious interference, and related antitrust claims); breach of contract;
post-grant patent proceedings (e.g., inter partes review) ; trademark infringement; and copyright infringement.
He has litigated claims in both state and federal courts throughout the United States. Additionally, Mr. Spence has extensive
experience with patent monetization strategies and complex, international patent infringement litigation involving multiple parties and
jurisdictions, most notably including Japan. He is a published author and frequent speaker on patent monetization and other
intellectual property issues, and has been repeatedly recognized as an “Illinois Rising Star” and “Illinois Star,” in the area of
intellectual property.
Mr. Spence is a graduate of the University of Notre Dame, where he obtained separate Bachelor of Science Degrees in Chemical
Engineering and Biophysics (“Physics in Medicine”). As a student he received the distinction of Notre Dame Scholar and also earned
the Monogram Award. Upon graduation from Notre Dame, Mr. Spence received his commission as a Second Lieutenant in the
United States Air Force, Medical Service Corps. After completing his military service, he worked for several years in the chemical
industry before pursuing his legal education at the University of Houston Law Center.
Prior to forming SpencePC, Mr. Spence spent twelve years practicing law with Kirkland & Ellis LLP in Chicago, IL and Tokyo, Japan.

40. The material in this presentation is for general educational
purposes only.
It has been prepared primarily for attorneys and accountants for
use in the pursuit of their continuing legal education and continuing
professional education.
IMPORTANT NOTES
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43. About Financial Poise™
www.financialpoise.com
DailyDAC LLC, d/b/a Financial Poise™ provides continuing education to
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