Transcript Derek Martinfrom

Martin & Associates, LLC
Carthage, Missouri
What is “Intellectual Property?”
 The term “intellectual property” is a term that
encompasses property rights that can result from
things that people dream up.
 Intellectual property includes patents, trademarks,
copyrights and trade secrets. Let’s go through these
one by one.
Patents
 United States patents cover inventions, including
ornamental designs. A patent holder has the right to
prevent others from making, using or selling the
patented invention in the United States for the term of
the patent.
Patentable Inventions
 In order for an invention to be patentable, it must be
novel. In other words, it must be different from that
which is already known.
 In addition, the invention must also be non-obvious.
In other words, it must not be obvious to a person
having ordinary skill in the field to which the
invention relates at the time the invention was made.
Uses for Patents
 Offensive - aggressively seek out infringers and sue
them to stop infringing or to pay money damages (or
both)
 Defensive - assure a company can continue to make
and sell their products
Advantages of Patents
 It’s the only game in town for protecting inventions
 Enforceable in court
 Possible royalties
Disadvantages to Patents
 Expensive to get a patent -- $15,000 to $20,000 is an
easy one
 Patents are becoming more difficult to get
 Expensive to enforce a patent in court
Recent Changes to US Patent Law
 The America Invents Act went fully into force in March
2013
 AIA changed US patent law from “first to invent” to
“first inventor to file”
 Many other changes, such as post-issue review
 Consult an IP attorney for more information
Trademarks
 Trademarks and service marks may be obtained for
distinctive words, phrases or symbols which serve to
identify a company’s goods or services. While
trademark protection is available under the law of
most states, a Federal Registration of a Trademark or
Service Mark provides significant advantages.
Valuable Trademarks
 Coca Cola
 iPOD
 Kentucky Fried Chicken
 YouTube
 Google
 Gap
 Pizza Hut
Advantages of Trademarks
 Relatively inexpensive to get a Federal Registration --
$1,000 to $1,500 on average
 Readily enforceable
 Adds great value to a business
Disadvantages of Trademarks
 Expensive to enforce if litigation is required
What if I Don’t Get a Federal
Trademark Registration?
 If a company uses a business or product name without
obtaining a federal registration, the company risks
losing all they have invested in the goodwill of that
name if the name has already been federally registered
for similar goods or services by someone else.
 Federally registering a trademark or service mark for
the business or product name provides the maximum
protection for that name.
Trade Secrets
 Trade secrets are things that have value to a company
simply because they are secret.
Examples of common trade secrets are:
 recipe for Kentucky Fried Chicken
 recipe for Coca Cola
 customer lists
 chemical and manufacturing processes
Advantage to Trade Secrets
 The advantage of a trade secret when compared to a
patent is that a trade secret has value as long as it is
maintained as a secret. It never expires. That's why
the recipe for Coca Cola is still valuable even though
Coca Cola has been sold for over 100 years.
Disadvantage to Trade Secrets
 It’s valuable only as long as it’s kept a secret
 Example: If you have a former employee who
publishes an article in a national publication that
divulges your trade secret, the cat’s out of the bag, and
it does not have value to you anymore because it is now
well-known in the industry
Copyrights
A copyright protects original works of authorship from
unlawful copying. Works of authorship include the
following categories:
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literary works, including computer programs
musical works
dramatic works
pantomimes and choreographic works
pictorial, graphic, and sculptural works
motion pictures and other audiovisual works
sound recordings
architectural works
When does a copyright arise?
 Upon fixing the work in a tangible media of expression
(immediately!)
 You can claim a copyright in anything you have created
that includes your expression
 A federal copyright registration does not create a
copyright, it merely provides public notice of
someone’s copyright
Why get a Federal Copyright
Registration?
 A Federal Copyright Registration is your ticket to the
courthouse to sue someone for Copyright
Infringement in Federal Court
What is Copyright Infringement?
 The US Copyright Office says:
“As a general matter, copyright infringement occurs
when a copyrighted work is reproduced, distributed,
performed, publicly displayed, or made into a
derivative work without the permission of the
copyright owner.”
Fair Use Defense to
Copyright Infringement
 Reproduction may be a “fair use”, which is a defense to
copyright infringement
 Factors:
 the purpose and character of the use, including whether such
use is of commercial nature or is for nonprofit educational
purposes;
 the nature of the copyrighted work;
 amount and substantiality of the portion used in relation to
the copyrighted work as a whole; and
 the effect of the use upon the potential market for or value of
the copyrighted work.
Starting a New Business
• Trademark Issues related to Business Name
• Trademark Issues for Product Names
• Patent issues if business has or uses inventions
• Who owns the Intellectual Property
• If business, might go down with the ship
• Consider separate business entity to own IP, then
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license to operating business entity
• Issues for Employees
• Assignment of IP to company
• Non-compete
Purchase or Sale of Existing Business
• Does business have trademarks or service
marks?
• Are marks federally registered?
• Should we seek registration of common law
marks?
• Purchaser steps into the shoes of the seller –
can seek registration based on predecessor’s
use
• Due diligence
Estate Planning
• Does the person own a business that owns
Intellectual Property?
• Who owns the IP?
• Will IP pass with business, or are they
separate?
Hiring Independent Contractor to
do Anything that Creates IP
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Web site development
Software development
Photographer
Author of technical documentation
For all these, you must have a written contract
that specifies what the contractor is creating is
a “work for hire” with express assignment of all
rights to hiring party
Employment Law
Need employment agreement to address IP
issues
• Is employee hired to invent?
• Express assignment to employer
• Non-compete provisions
Bankruptcy
• Is IP involved in the bankruptcy?
• Who owns the IP?
• Is IP included in assets, or is it licensed?
Divorce
• Does either spouse own IP?
• IP is personal property
• Include IP in assets to be divided
Get Help from IP Professionals
 Martin & Associates has two attorneys practicing
exclusively in the Intellectual Property field with over
40 years of combined experience
 Money spent up front to avoid potential issues pays big
dividends down the road