Ip practice overview pres 2012

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Ip practice overview pres 2012

  1. 1. Basics ofIntellectual Property Law Jim Chester, J.D. / LL.M. 1 © J F. C hester 201 2 .
  2. 2. Why does IP matter?•U.S. trad e in com m ercial knowled ge-intensive servicesand intangible assets— business, financial and,com m unications services, and paym ents of royalties andfees— has prod uced a consistent and growing surplus.•It reached a record $1 08 bill in 2008, sufficient to ioncounter-balance the high-technology good s d eficit, andhas been fl since then, reflecting the recessions effect. at
  3. 3. Top IP “Myths”1. Only large “high-tech” companies have IP - EVERY business has IP Assets. - A significant am ount of innovation com es from ind ivid ual inventors & SM E’s- Securing your IP rights in the US will give you protection in other countries, as well In m ost cases, US IP rights m ean not hing outsid e US
  4. 4. Types of IP Trademarks  Any name, symbol, figure, letter, word, or mark adopted and used by a business to designate its goods/services and to distinguish them from those of others  Includes service marks, certification marks  Also Trade Dress - Identifies the source or good by: • Packaging • Total image of a product • Look and feel of business
  5. 5. Trademarks (Cont) US is a “first to use” jurisdiction –common law Can also register TMs with state & USPTO Trademark Symbols  Federally Registered Trademark - ®  Federally registered trademarks and service marks  Non registered marks - (no legal significance)  Trademark -™ (goods)  Service Mark - ℠ (services) Must protect, or can lose: • Gone: Aspirin; Ketchup ; Zipper; Escalator • Going? – Kleenex, Xerox, Band-Aid, Tivo, Google
  6. 6. Trademarks (Cont)Trade Names - A name used to identify a commercial product or service Ex. General Electric, Inc. – legal name GE – Trade name (i.e., “d/b/a”) - Trademark
  7. 7. IP ISSUE SPOTTINGTrademarks – Situations that might give rise to legal work for a typical company include:• Formation of new company or spin-off• New products/marketing campaign• Enter new markets (incl. overseas)• Notice a similar mark used by other company• Merger/Acquisition or Financing
  8. 8. Other Types of IPPatents- the exclusive right to an inventor to manufacture, use, or sell an invention. - Can only come from the US govt. - Must meet statutory requirements novel, useful, non-obvious, etc. - Expire after 20 years after filing – NO renewal  (Design patents – 14yrs. From issue of patent)
  9. 9. IP ISSUE SPOTTINGPatents– Situations that might give rise to legal work for a typical company include:• Company invents a new product• Company develops a new business method• Start-up wants to raise money by pitching its new invention/method to potential investors• Learn of a competitor’s use of a patented product• Merger/Acquisition or Financing
  10. 10. Other Types of IPTrade Secrets- Secrets secrets kept from the world by that relate to how to manufacture, use, or sell something (i.e., give a competitive advantage) - No registration required - Does not expire - Must be protected (e.g., limited access, NDAs, etc.)
  11. 11. IP ISSUE SPOTTINGTrade Secrets – Situations that might give rise to legal work for a typical company include:• Same as “Patent” Issues• Hire new employees or get new partner• Learn that former Employee sent company materials to new employer while still working for company
  12. 12. Other Types of IPCopyright- exclusive right to make copies, license, and otherwise exploit a literary, musical, or artistic work, whether printed, audio, video, etc - Can last 100 years - Under Berne Convention, this is the one type of US IP right that gets automatic protection in other countries- Don’t need registration, but registration gives additional rights/benefits
  13. 13. IP ISSUE SPOTTINGCopyright – Situations that might give rise to legal work for a typical company include:• Creation of web site• Hire software company to develop proprietary contact management program• Create training materials/PPTs• Advertisements• Develop Firm newsletter or fact sheets to distribute to clients/post on web, etc.
  14. 14. Intellectual Property LawThree Main Elements: n Securing IP Rights (directly & indirectly) h Licensing IP h Enforcing IP
  15. 15. Securing IP Rights - Directly-NDA’s/Confidentiality Agreements-Partner/JV Agreements-Assignments/Transfers-“ Work for Hire” and development agreements
  16. 16. Securing IP Rights - Indirectly-State - TM/SM – Sec. of State -Trade Secrets (no registration)-Nationwide -TM, SM, trade dress – USPTO -Patents – USPTO - Copyrights – US Library of Congress-International -WIPO (Patent); Madrid Protocol (TMs) -Foreign Gov’ts
  17. 17. Licensing IP No “cookie-cutter”  Type of agreement will depend on type of IP, value, etc.  Often start with prior agreements, but each transaction will need to be evaluated individually  Key concerns  Timing & calculation of payments  Scope of license  Rights in future developments & goodwill  Ensure against “transfer”  Be wary of franchise characteristics  Don’t want to imply partnership
  18. 18. Enforcing IP Investigating claims/potential infringement Drafting letters of inquiry & “Cease & desist” letters Negotiating settlements & consent agreements Prosecuting & defending infringement lawsuits
  19. 19. More IP ISSUE SPOTTING International IP – Protecting US-created IP abroad continues to be a huge issue for American companies. Counterfeiting is a multi-billion dollar annual industry Get Some Help at the Border - Although IP owners must typically self-police against infringement, US Customs will seize potential infringements of US IP rights, provided the rights are recorded with Customs Design Patents. Relatively new to US law, these types of patents protect the design elements of a useful device. They can be renewed. In some cases, a given item may be protected by a ©, a trade dress registration, and a design patent Computer software – can be protected by © or patent. Copyright is easier but afford protection only against exact copies. Patent is greater protection, but harder to get because program’s “utility” must be novel. Co-Developed works – each owner will own 100% of the IP Internet – Google terms, domain names, Adwords, Metatags, etc.
  20. 20. Questions to Ask Do you have any registered trademarks, copyrights or patents? Do you sell products/services using a unique name? Do you have a logo? Do you have a web site? Have you developed business strategies or methods that give your company an advantage in the marketplace? Have you ever been sued or otherwise confronted by anyone claiming you had infringed on a mark, name, copyright or invention? Have you ever noticed someone using a mark or product similar to yours? Have you hired 3rd parties to develop logos, web sites, brochures, advertisements, software, or other materials for your company? Do employees/contractors sign agreements regarding company IP, trade secrets, or confidential information? Do you (or do you plan to) sell products/services or outsource production outside the US?
  21. 21. Concluding ThoughtsEvery com pany has IP assets – though m any d on’t ad equately protect theirs.A “Proactive” strategy with regard to IP assets is generall y m uch less expensive than a “Reactive” strategy
  22. 22. Questions? Em ail jim@chester-law.com D irect 214.988.9248 Toll Free 1 .877.34.Worl d

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