1. Contract Management
Subject: Patents, Licenses,
NDA’s
Recap
Villanova University
Presenter: Mary Johnson, CPCM,
C.P.M.

2. Patents – Tricky Business
• 1. Provisional Patents – good for 1 yr.
• 2. Patent Maintenance – need to pay fee
• 3. Patent “Re-examination” – example Y2K

3. Provisional Patents
• Awarded for One Year
• Must be formalized within the One Year
• Or they expire
• During the “provisional patent period”
• Inventor does not have to make public
• The application description/specifications

4. Maintenance Fees for Patents -1
• If not paid – they expire
• Generally 5 years from award date
• Mix-ups can occur
• Make sure YOU send to PTO
• Certified Mail, Return Receipt Requested

5. Maintenance Fees for Patents -2
• DO Not Trust Your Lawyer to Do this for you
• Competing Companies/Individuals
• Wait for Missed “Maintenance Fee” &
• Grab open patent

6. Patent “Re-examination”
• When another company that doesn’t have the
patent requests investigation
• May challenge that the patent is “obvious”
• E.G. Y2k patent awarded to Dickens
• Patent went through numerous appeals
• Also went through re-examination

7. International Patents
• Must register patent in each country
• Each Individual country separately

8. Copyrights
• Using portion of logo – isn’t copyright
infringement, e.g. Roadrunner head
• Unless – copyright is on logo
• Specialization in legal studies – copyright law,
e.g. Berkeley law school

9. Disputes in Copyright Infringement
• Longhorn case in Texas
– Required contender to modify design of bull horns
– Distinguish from copyrighted version
• Whether or not copyright symbol is on
document/design

10. Service Marks
• See Weblinks on Discussion Board
• Wikipedia
• Federal discussion
• Legal dictionary

11. FAR Forms
• Restrictions in Technical Data
• Found in FAR part 53 (forms)
• Identify proprietary software/technical data

12. SBIR – Small Business Innovative
Research Programs
• Through U.S. Government Financing
• Generally U.S. Government retains patents
and copyrights
• May be after a period of time
• Investigate details if interested

13. Current Lawsuit on Intellectual
Property
• See Oracle vs. SAP example
• Off topic message board
• Details of market boundaries
• Offering similar technologies
• Different prices

14. Licensing
The Benefit of Patent Allows:
Patent-holder to sell licenses
For a fee
To interested parties

15. Protecting Ideas
• When one discusses a future patent idea
• MUST have Non-Disclosure Agreement
• Signed by Receiver of New Idea
• Aka, “NDA”’s
• Also signed by Inventor