Intellectual Property Intellectual Property Protection – Critical Protection – Critical

Issues to Consider in Issues to Consider in Business Ventures Business Ventures

John F. Letchford, EsquireJohn F. Letchford, EsquireArcher & Greiner, P.C.Archer & Greiner, P.C.

Intellectual PropertyIntellectual Property(Creations of the Mind)(Creations of the Mind)

InventionsInventions Literary and artistic worksLiterary and artistic works Company and product namesCompany and product names Product designsProduct designs Commercially valuable, secret business Commercially valuable, secret business

informationinformation

Types of Intellectual PropertyTypes of Intellectual Property

PatentsPatentsTrade secretsTrade secrets

CopyrightsCopyrightsTrademarksTrademarks

The Value of Intellectual PropertyThe Value of Intellectual Property

U.S. IP is worth between $5 trillion and U.S. IP is worth between $5 trillion and $5.5 trillion equivalent to 45% of U.S. GDP $5.5 trillion equivalent to 45% of U.S. GDP and greater than the GDP of any other and greater than the GDP of any other nationnation

2002 - copyright industries (music, 2002 - copyright industries (music, publishing and software) accounted for 6% publishing and software) accounted for 6% of the U.S. GDP - $600 billionof the U.S. GDP - $600 billion

Intangibles account for 70% of the current Intangibles account for 70% of the current value of equities in the U.S.value of equities in the U.S.

What is a Trade Secret?What is a Trade Secret?Any formula, pattern, physical Any formula, pattern, physical

device, idea, process or device, idea, process or compilation of information that compilation of information that both:both:

Provides a competitive advantage in the Provides a competitive advantage in the market placemarket place

Is treated by the owner in a way that can Is treated by the owner in a way that can reasonably be expected to prevent the reasonably be expected to prevent the public or competitors from learning about public or competitors from learning about itit

Examples of information Examples of information protectable as trade secrets:protectable as trade secrets:

Engineering technologyEngineering technology Customer listsCustomer lists Novel laboratory processesNovel laboratory processes

Common Trade Secret MistakeCommon Trade Secret Mistake

Failure to take precautions to ensure secrecyFailure to take precautions to ensure secrecy

Solutions:Solutions: Confidentiality agreementsConfidentiality agreements

– Business partnersBusiness partners– Employees/consultantsEmployees/consultants

Physical measures to ensure secrecyPhysical measures to ensure secrecy– Computer system securityComputer system security– Segregation of secret informationSegregation of secret information– Limited disclosure of secret informationLimited disclosure of secret information

What is a Patent?What is a Patent?

Patentable Subject Matter:Patentable Subject Matter:• Any new and unobvious substance, Any new and unobvious substance,

product, apparatus, method of making product, apparatus, method of making something or method of doing somethingsomething or method of doing something

• Design PatentsDesign Patents

• Plant PatentsPlant Patents

InventorshipInventorship

Conception of an Conception of an ideaidea

Formulation in the Formulation in the mind of a definitive mind of a definitive way of realizing way of realizing that idea (ie – a that idea (ie – a concrete and concrete and complete solution complete solution to a problem)to a problem)

Who Is Not An Inventor?Who Is Not An Inventor?

Individuals that merely act as technicians Individuals that merely act as technicians under the direction of the actual inventorsunder the direction of the actual inventors

What Constitutes Public What Constitutes Public Disclosure?Disclosure?

WebsitesWebsites AdvertisementsAdvertisements PublicationsPublications Discussions/Presentations – not under Discussions/Presentations – not under

confidentiality agreementconfidentiality agreement

The Easiest Way to Protect Your The Easiest Way to Protect Your InventionInvention

January 1, 2007 – DiscloseJanuary 1, 2007 – DiscloseJanuary 2, 2007 – PatentJanuary 2, 2007 – Patent

BABADD

The Easiest Way to Protect Your The Easiest Way to Protect Your InventionInvention

January 1, 2007 – PatentJanuary 1, 2007 – PatentJanuary 2, 2007 – DiscloseJanuary 2, 2007 – Disclose

GOOGOODD

Provisional Patent Application Provisional Patent Application AdvantagesAdvantages

Preserves Preserves international filing international filing rightsrights

Defers substantial Defers substantial patent costspatent costs

Permits inventions Permits inventions to be marked as to be marked as “patent pending”“patent pending”

Provisional Patent Application Provisional Patent Application LimitationsLimitations

Not examined by the U. S. Patent and Not examined by the U. S. Patent and Trademark Office (“USPTO”)Trademark Office (“USPTO”)

Lapses in 12 monthsLapses in 12 months Does not form the basis for Does not form the basis for

enforceable patent protectionenforceable patent protection

Provisional Patent ApplicationProvisional Patent ApplicationCostsCosts

$100 USPTO filing $100 USPTO filing feefee

Minimal fees for Minimal fees for legal serviceslegal services

What you can do to What you can do to keep those costs keep those costs from escalatingfrom escalating

Provisional Patent Application Provisional Patent Application What We Need From YouWhat We Need From You

More than a generalized description More than a generalized description of the invention and/or its of the invention and/or its performanceperformance

Legally sufficient disclosure (ie - what Legally sufficient disclosure (ie - what you are doing, lab results, working you are doing, lab results, working papers, drawings/diagrams)papers, drawings/diagrams)

What Happens After the What Happens After the Provisional Provisional Application is Filed?Application is Filed?

At the USPTO… nothingAt the USPTO… nothing Provisional applications are never Provisional applications are never

published by the USPTOpublished by the USPTO Patentability SearchPatentability Search AnalysisAnalysis

Future DevelopmentsFuture Developments

When Additional Provisional When Additional Provisional Applications May Be Necessary Applications May Be Necessary

Non-provisional/Utility ApplicationNon-provisional/Utility Application

Must be filed within 1 year of the Must be filed within 1 year of the provisional applicationprovisional application

Formally examinedFormally examined Provides enforceable patent Provides enforceable patent

protection if grantedprotection if granted Considerable cost and timeConsiderable cost and time

If you’ve followed the If you’ve followed the Patent then Patent then DiscloseDisclose doctrine and a patent issues… doctrine and a patent issues…

The Benefits are NumerousThe Benefits are Numerous

What is a Copyright?What is a Copyright?Protects certain works that meet the following requirements:Protects certain works that meet the following requirements:

-- OriginalOriginal-- Sufficiently creativeSufficiently creative-- “Fixed in a tangible medium of expression”“Fixed in a tangible medium of expression”

Protects “expression” of ideas, not ideasProtects “expression” of ideas, not ideas

Registration not necessary but affords additional rightsRegistration not necessary but affords additional rights-- Legal presumptions of copyright ownershipLegal presumptions of copyright ownership-- Right to recover statutory (presumed damages)Right to recover statutory (presumed damages)-- Right to recover attorneys’ feesRight to recover attorneys’ fees

What is a Copyright (cont.)?What is a Copyright (cont.)?

Examples of copyrightable works: Literary works, musical Examples of copyrightable works: Literary works, musical works, sound recordings, motion pictures, sculptures, works, sound recordings, motion pictures, sculptures, paintingspaintings

Grants “author” of the work the exclusive right to:Grants “author” of the work the exclusive right to:– Make copiesMake copies– Make changes toMake changes to– DistributeDistribute– Publicly perform (Publicly perform (e.g.,e.g., choreographic works) choreographic works)– Publicly display (Publicly display (e.g.,e.g., sculptural works) sculptural works)

Life of a Copyright is LongLife of a Copyright is Long– Author’s life plus 70 years (works made for hire is 95 Author’s life plus 70 years (works made for hire is 95

years from publication or 120 years from creation)years from publication or 120 years from creation)

Copyright NoticesCopyright Notices

Example: Example: ©2007 ©2007 Archer & Greiner, P.C. Archer & Greiner, P.C. All Rights ReservedAll Rights Reserved

Use of notice not Use of notice not requiredrequired

Registration not Registration not necessary to use noticenecessary to use notice

Common Copyright MistakeCommon Copyright Mistake

““Work for Hire” Doctrine - Absent agreement to the Work for Hire” Doctrine - Absent agreement to the contrary:contrary:

Copyright in work created by an employee within scope of Copyright in work created by an employee within scope of employment is owned by employeremployment is owned by employer

Copyright in work created by a third party is owned by the Copyright in work created by a third party is owned by the third partythird party

Solution: Written agreements confirming copyright ownershipSolution: Written agreements confirming copyright ownership Website developersWebsite developers Marketing/PR AgencyMarketing/PR Agency Software/technology developersSoftware/technology developers

Copyright InfringementCopyright Infringement

Unauthorized copying of copyrighted Unauthorized copying of copyrighted work resulting in a “substantially work resulting in a “substantially similar” worksimilar” work– Can be exact copying of small portion of Can be exact copying of small portion of

copyrighted workcopyrighted work– Can be substantial paraphrasing of Can be substantial paraphrasing of

copyrighted workcopyrighted work ““Fair Use” DefenseFair Use” Defense

What is a Trademark?What is a Trademark?

An indicator of the source of goods (trademarks) or An indicator of the source of goods (trademarks) or services (service mark)services (service mark)

““Any word, name, symbol, or device, or any combination Any word, name, symbol, or device, or any combination that is used to identify and distinguish the goods of one that is used to identify and distinguish the goods of one seller from goods manufactured or sold by others, and to seller from goods manufactured or sold by others, and to indicate the source of the goods.”indicate the source of the goods.”

Examples of trademarks:Examples of trademarks: Archer & GreinerArcher & Greiner Coca-ColaCoca-Cola ExxonMobilExxonMobil

What is a Trademark (cont.)?What is a Trademark (cont.)?

Like copyrights, registration Like copyrights, registration not necessary but affords not necessary but affords additional rightsadditional rights – Legal presumptions of copyright Legal presumptions of copyright

ownershipownership– Right to recover treble damagesRight to recover treble damages– Right to recover attorneys feesRight to recover attorneys fees

Trademark rights generally Trademark rights generally exist for as long as exist for as long as trademark is used in trademark is used in commercecommerce

Trademark NoticesTrademark Notices

Examples:Examples:– ARCHER & GREINER®ARCHER & GREINER®– ARCHER & GREINER™ARCHER & GREINER™

Use of notice not requiredUse of notice not required Registration not necessary to use noticeRegistration not necessary to use notice

Trademark InfringementTrademark Infringement

Generally prohibited from using a mark Generally prohibited from using a mark that is confusingly similar in use and that is confusingly similar in use and appearance to another party’s markappearance to another party’s mark

-- Use may be prohibited even if Use may be prohibited even if two two trademarks are not the sametrademarks are not the same

-- Use may be permitted even if Use may be permitted even if two two trademarks are identicaltrademarks are identical

Common Trademark MistakesCommon Trademark Mistakes

Registration of a corporate name or domain name does not Registration of a corporate name or domain name does not mean the name does not infringe a third party’s trademark mean the name does not infringe a third party’s trademark rightsrights

Solutions: Solutions: .. Trademark availability search Trademark availability search ..

– Review of registered and unregistered marksReview of registered and unregistered marks Trademark registration Trademark registration ..

– Helpful but not necessary for protection Helpful but not necessary for protection . . (like copyrights) (like copyrights) ..

ConclusionConclusion

Questions?Questions?

Thank you.Thank you.

Archived Presentation Available At:Archived Presentation Available At:

www.archerip.comwww.archerip.com