Protecting IP: Patents and Trade Secrets
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Protecting IP: Patents and Trade Secrets
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Protecting IP: Patents and Trade Secrets. Concept Map:. Company Background: . midsized paper distribution company employs 84 people and has 6 branches based in the Pacific Northwest one of a kind distribution pattern created a new loading machine. What they want to know:. - PowerPoint PPT Presentation
Transcript of Protecting IP: Patents and Trade Secrets
Protecting IP: Patents and Trade Secrets
Concept Map:
Company Background:
• midsized paper distribution company
•employs 84 people and has 6 branches
•based in the Pacific Northwest
•one of a kind distribution pattern
•created a new loading machine
What they want to know:
What steps do we need to take to make our channels a certified trade secret that no one else can copy?
What suggestions can be made on how to implement a confidentiality contract in the company?
What do we need to do in order to patent this new machine?
Is the patent or idea able to be sold if we chose?
PATENTS: an exclusive right granted by the
federal government to the inventors of new and useful machines, articles, substances or processes.
Most technically demanding branch of IP
Lasts 20 years
3 types of patents
Type of Patents: Utility
› Provisional› Non-provisional
Design
Plant› Provisional › Non-Provisional
How to get a patent: Not a quick or cheap process
Has anyone else beat you to it?
Consult a qualified and experienced patent attorney
USPTO
Applying for a Patent:
non-provisional utility patents should include these elements:
Utility Patent Application Transmittal Form or Transmittal Letter
Fee Transmittal Form and Appropriate Fees Application Data Sheet Specification (with at least one claim) Drawings (when necessary) Executed Oath or Declaration Nucleotide and/or Amino Acid Sequence Listing (when
necessary)
How much does it cost?
Maintenance Fees:› 3.5 yrs: $930› 7.5 yrs: $2,360› 11.5 yrs: $3,910
Utility patent application filing fee› $1200 - $1500
Fun Facts of the day: Each year the USPTO receives
approximately 350,000 patent applications
Last year there was a count of 1,877 patents in Oregon
Top five Patent recipients in the US:
1. IBM …………………..2,9412. Canon ………………1,8283. HP ……………………1,7974. Matsushita ………….1,6885. Samsung ……………1,641
OSU patent count
Familiar patents: Amazon.com : one-click method
Apple: iPod scrolling wheel
Tabasco Sauce: since 1870
Microscope
Trade Secrets overview: Trade secrets defined and important
aspects
Two main components of trade secrets:
Uniform Trade Secrets Act of 1984 – uses and importance
Examples of Trade Secrets
Non-compete clause importance and application
Dunder Mifflin: trade secrets
Trade Secrets defined: Trade secrets are a:
› formula › pattern › device › compilation of information › program › method› technique or process
Used by one’s business to gain an
opportunity to “obtain an advantage over competitors.”
Trade Secrets:
Non-compete clause importance and application
Dunder Mifflin: trade secrets
Non-Compete Clause:
used in contract law under which one party (usually an employee) agrees to not pursue a similar profession or trade in competition against another party (usually the employer)
Non-Compete Clause: upon his or her termination or resignation,
the employee might begin working for a competitor or start a business, and gain competitive advantage by abusing intimate knowledge of the employer's operations
release trade secrets or sensitive information such as customer/client lists, business practices, upcoming products, and marketing plans.
Important aspects of Trade Secrets:
Protection of existing confidential and proprietary business information
Employees want to start competing business
Trade secrets are confidential and proprietary
Patents and trademarks are public
Uniform Trade Secrets Act of 1984:
41 states adhere to this legislation
Defined as “information, including a formula, pattern, compilation, program, device, method, technique or process, that”
› Derives economic value
› Worth keeping secret (“Reasonable under the circumstances to maintain its secrecy”)
Uniform Trade Secrets Act of 1984:
Reasonable efforts Misappropriation of Trade secrets
“Reasonable efforts have been made to ensure the secrecy of the alleged trade secret.”
Examples of Trade Secrets:
Customer lists: “A customer list possesses economic value when the secrecy of that information provides the owner of the customer list with a substantial business advantage.”
Software: “Invested time and money to develop and
benefit from the software”
Coca Cola example
Coca Cola Trial proves importance of Trade Secrets
Joya Williams, 42 was a secretary at Coca-Cola
Williams stole confidential documents and samples of products that hadn't been launched by Coca-Cola
Attempted to sell Coke's trade secrets to rival PepsiCo Inc. for at least $1.5 million.
Coca-Cola’s Trial sentenced to eight years in prison for
conspiring to steal trade secrets from the world's largest beverage maker
"This is the kind of offense that cannot be tolerated in our society.“
- U.S. District Judge J. Owen Forrester
ordered to pay $40,000 restitution
Selling intellectual property rights: patents and trade secrets
As trade secrets and patents are property rights you are allowed to license and sell them.
Our recommendations for Dunder Mifflin:
Find out if any one else has already patented your machine
Seek out a patent attorney to assist you
Create a contract for employees to secure your trade secrets
Be cautious when visitors come to tour the distribution center
Preguntas?(“Questions” in spanish)
