Transcript No Slide Title

Finding and Managing
Intellectual Property
Assets
2006 Virginia State Bar Meeting
©2006 Genworth Financial, Inc. All rights reserved.
Keys for a Successful Intellectual Property
Program
• Identify
• Protect
• Leverage
• Respect
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Four Basic Types of Intellectual Property (IP)
• Trademarks
– branding – protect corporate good will
• Copyright
– protect unauthorized copying of software – not function
• Trade Secrets
– protect secret processes
• Patents
– monopoly on functionality
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Trademarks
TM
®
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SM
What is a Mark?
• Any word, name, symbol or device
• Serves as an indication of origin
• Houses goodwill
• Can be common law or federally registered
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Why are Trademarks Important?
• Brand identity is a valuable corporate asset
• Need to control trademarks both internally and by third
parties
• Product naming should include trademark search to
avoid infringement
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Copyrights
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Copyright Law
A U.S. copyright protects original works of
authorship which have been fixed in a tangible
medium of expression.
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A Copyright Protects
• Computer programs
• Musical works
• Dramatic works
• Pantomime and choreographic works
• Pictorial and graphic works
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Sculptural works
Literary works
Motion pictures
Sound recordings
• Architectural works
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Copyright Owner May Control
• Reproduction
• Distribution
• Adaptation
• Public display
• Public performance
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Why Important
• We need to protect our copyrights
– Sales materials, software, training materials
• Respect the copyrights of others
– Photos, music, software, print media
– Use only with appropriate permission
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Patents
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What Is a Patent?
• The right to exclude others from making, using, selling
or offering to sell
• Viewed favorably by courts
• Patent portfolios = a strong company asset
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U.S. Patent Requirements
• § 101 –
patentable subject matter
• § 102 –
novelty
• § 103 –
non-obviousness
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§101 - Patentable Subject Matter
• New and useful process, machine, manufacture, or
composition of matter
• Any new and useful improvement
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Examples of Software Features that are
Patentable
• Overall System/Method
• New Functions/Processes (Steps)
• New Implementation Of Existing Functions/Processes
• Graphical User Interface
• Algorithms/Implementation of Algorithms
• Data Structures
• Objects
• Neural Networks
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Patentability of Business Methods
• State Street Bank case clarified that "business methods"
are patentable
• Business methods are not required to be computerimplemented in order to be patentable under U.S. law
(European protection may differ)
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Considerations for Filing for Patents on
Business Methods
• Would you be able to detect if others were infringing?
• What is the value to the company of the method?
• Will the method be used in a commercial
product/service?
• Are there licensing opportunities?
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§102 - Novelty
• Known or used by others, or described in a publication
before date of invention
• “Public use” or “on sale” more than 1 year before U.S.
filing date - disclosure
• Abandonment, concealment
• Important distinctions between US and non-US regimes
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Examples of Events That May Start §102
Grace Period
• Publication of idea on Internet, in trade journals
• Disclosure to third party for purposes of
commercialization
• Offering system for sale in this country
• Publicly displaying the system such as at a trade show
or convention
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§103 - Non-obviousness
• Non-obvious to a person of “ordinary skill in the art”
• At the time of invention
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Document Inventive Activity
• Keep accurate log books and other materials to
demonstrate dates of conception and reduction to
practice
• Importance of “diligence”
• Experimental or environmental testing
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Confidentiality Agreements
• Must be signed by all outside parties
• Should clearly identify subject matter – specific better
than general
• Helps avoid disclosure problems
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Independent Contractors
• Use engagement letters
• Use confidentiality agreements
• Use assignment agreements - ensure that any inventions
discovered by an independent contractor working for
Genworth becomes Genworth’s property
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In contrast….Trade Secrets as Alternative to
Patents
Any formula, pattern, device or combination of
information which is used in a business and, because it
is unknown to others, gives the business a competitive
advantage.
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Considerations for Filing for Patents on
Business Methods
• Should the "business method“ be kept as a trade secret?
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Can others detect it?
Can you maintain it in secrecy?
What is the useful life of the business method?
Are competitors likely to file for patents on similar methods?
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Strategies for Trade Secret Protection
• Identify Genworth’s valuable trade secrets
• Written trade secret protection policy
• Educate employees about trade secret protection policy
and monitor compliance
• Restrict trade secret access to employees with a
legitimate, business related, need to know
• Mark documents containing trade secrets
• Physically isolate and protect most important trade
secrets
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….Strategies for Trade Secret Protection
• Maintain computer secrecy
• Restrict public access to your facilities
• Deal cautiously with third parties - use confidentiality
agreements
• Be careful and consistent with unsolicited submissions
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Strategic Reasons for Implementing Formal
IP Program
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Offensive Reasons
• Market advantage – Leverage exclusive rights to
Genworth’s developments, sue to obtain injunction
and/or damages
• Injunctions – Ability to shut down infringer
• License to obtain royalties or other business benefit
• Marketing advantage – real/apparent
• Enhance/maintain first mover advantage
• Protect investment in R&D
• Occupy field in and/or surrounding key standards
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Defensive Reasons
• Defend against patents of competitors
• Cross license if accused of infringing
• Counter sue if sued – use as bargaining chip
• Bolster settlement position
• Partners/investors want to know if “idea” is protected
• Competitor who independently develops idea can obtain
IP rights
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Importance of Formal IP Program
• Convey importance of IP to all employees
• Educate employees on steps necessary to benefit from
IP/avoid loss of rights/reduce liability
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Goals of IP Program
• Protect technology and market position
• Exploit IP – Use as a business tool/source of revenue
• Avoid or reduce liability
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Essentials for Successful IP Program
• Technical – must identify inventions; comply with
procedures
• Business/Sales/Marketing – must be aware of what can
cause loss of rights; know about technology that can be
exploited
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The IP Program
• Create and distribute/make accessible patentability and
program reference
• Use online collaborative workroom to enhance
inventor/counsel interaction
• Provide access to and instructions for completing
invention disclosure forms
• Use procedure for receiving, logging and tracking
invention disclosure forms
• Involve key business personnel
– IP council
– Management support
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IP Program Considerations
• Employee issues (existing employees, new hires,
departing employees)
• Contractors and Consultants (ensure ownership of IP,
confidentiality, etc.)
• Manufacturers, distributors, joint ventures
• Indemnity
• Mechanisms for identifying IP
– Submission procedures
– Status chart
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IP Program Considerations
• Documentation (notebooks, invention disclosures, etc.)
• Pre-release reviews – avoid loss of rights (speeches,
publications, trade shows, etc.)
• Avoiding liability
• Insurance
• Clearance process for new products and processes –
non-infringement options
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Identifying and Harvesting Inventions
• Identify business units that may generate inventions
• Identify key personnel in each business unit to monitor
handling of inventions
• Educate and train key personnel regarding patentability
and key issues
• Provide seminars for other personnel to enlighten and
inspire
• Reward and recognition program for inventors
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Identify Existing IP
• For existing IP that is not protected, immediate attention
should be directed to determining whether and how it
may be protected, and if protectable, deciding whether to
protect it.
• Critical to do this to avoid inadvertent loss of rights.
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Identifying IP
• Identify IP being developed and any timing issues
• Identify key areas of development early – sometimes
broad ideas can be protected and details added later
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IP Protection – Implementation
• Review audit list
• Develop strategy (what to protect, how, etc.)
• Prioritize, group, budget
• Decide
• Prepare and file applications
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Avoid infringement of third party rights
Get indemnities
Consider insurance
Conduct clearance search, obtain opinion if necessary
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IP Protection – Implementation
• For mergers, acquisitions, investment, partnerships: IP
due diligence can be critical to:
– Ensure protection
– Identify potential liability
– Valuation
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IP Protection - Respect
• Respect the IP rights of third parties
• Educate associates
• Documented corporate guidelines
• Part of Integrity Program
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