Transcript Intellectual Property

Presented by Jason M. Sobel, Esq. at Stroock & Stroock & Lavan LLP
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Copyrights
Patents
Trade Secrets
Confidential
Information
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Trademarks
Trade Dress
Domain Names
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Tool to Capture and Protect Value
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Secure and Exploit Work Product
Secure and Exploit Exclusive Rights
Competitive Advantage
Stop Free Riding Copycats
Licensing In/Out
Awareness of Potential Liabilities
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One-Way NDA
◦ One party having “confidential information” and
another party desiring to receive the confidential
information.
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Two-Way a/k/a Mutual NDA
◦ Both parties exchanging confidential information
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What is Confidential Information?
Exclusions from Confidential Information:
◦ Information already in the recipient's possession
prior to disclosure.
◦ Information that becomes generally available to
the public other than as a result of a disclosure
by the recipient.
◦ Information that becomes available to the
recipient on a non-confidential basis.
◦ Information that was independently developed by
the recipient.
When to use NDAs…
◦ Disclosing a new product to a potential investor.
◦ Employees who will develop intellectual property
for the company (i.e., copyrighted software,
patentable systems, etc.) or employees exposed
to company trade secrets.
◦ Contractual relationships between competitors.
◦ Anytime the information you are disclosing, if
used by others, would lessen your competitive
advantage.
For Disclosing Party
◦ Carefully and Broadly define confidential information.
◦ Limit definitional exclusions.
◦ Be sure “confidential information” includes the fact that
the business discussions are taking place.
◦ Be sure definition of “recipient” of confidential
information includes all those who will have access to
the information.
◦ Limit disclosure to those on a “need-to-know” basis.
◦ Limit use of Confidential Information (e.g., to evaluate
potential venture).
For Receiving Party
◦ Limit definition of confidential information.
◦ Consider requiring confidential information to be
labeled
◦ Consider with whom you need to share (e.g., with
consultants, affiliates, partners, etc.)
◦ Expand definitional exclusions.
◦ Before signing the agreement, consider whether the
information being disclosed is necessary to the
business deal at hand.
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Conspicuously Mark Confidential
Information as such.
Venture Capitalists and Manufacturers
◦ These businesses will generally refuse to sign
one.
◦ It is useful to develop generic descriptions to
avoid disclosure of confidential information.
◦ Consider marking materials (e.g., business plans)
as “Confidential.”
◦ Patent applications filed prior to disclosure are
also useful.
Property right granted to the inventor of a
new and useful process, machine,
manufacture or composition of matter, or
improvement thereof.
Right to exclude others from making, using,
selling, offering to sell or importing the
patented invention
1. Utility Patent: New and useful process,
machine, article of manufacture or
composition of matter, or any new or useful
improvement thereof.
2. Design Patent: New, original and ornamental
design for an article of manufacture.
3. Plant Patent: Distinct and new variety of
plant.
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The invention must be:
◦ Useful
◦ A sufficiently developed idea
• No requirement to have actually made the invention
• But, must provide an “enabling” disclosure
◦ Novel
◦ Non-obvious
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Application process is lengthy and can be
expensive because patent counsel is usually
necessary
Rights Attach When Patent Issues
◦ Not Necessary To Practice Invention
Term of Patent
◦ Utility and Plant Patents Expire 20 Years after date
of filing of Patent Application
◦ Design Patent Expires 14 Years after date that
Patent Issues
Idea
Conception
Reduction to
Practice
File Provisional or
Non-Provisional
Application
File Non-Provisional,
foreign and/or
PCT Application
Deadline to File in
PCT Countries of Choice
1.5 Years
1 Year
Ok to Publish and Commercialize
Can Seek Patent Protection
Worldwide
Idea
Conception
Reduction to
Practice
Commercialize
Public Disclosure
or
Offer for Sale
Deadline to File
Provisional,
Non-Provisional or
PCT
Application
1 Year
US
Grace
Period
Seek Patent Protection in U.S.
and Select Countries Only
No Other
Foreign
Rights
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Competitive Advantage
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Marketing tool - perceived as innovator
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Revenue Stream
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Best Defense is Good Offense (ability to crosslicense)
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Collateral for Loans
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Secondary Market
◦ Controlling use of similar products
◦ Licensing others to use invention
/ A Saleable Asset
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A trade secret is a formula, practice, process,
design, instrument, or pattern which is not generally
known with which a business can obtain an economic
advantage over competitors or customers.
A valid trade secret requires:
1. The information has economic value
2. The information is not generally known
3. Reasonable efforts were made to maintain secrecy
Trade Secrets need not be patentable but can
coexist with patent protection
Trade Secrets last indefinitely
Exclusive Rights In “Original Work of
Authorship”
◦ Work of authorship
 literary works (includes computer software and on written
works)
 musical works, including accompanying words
 dramatic works, including accompanying music
 Pictorial, graphic and sculptural works
 pantomimes and choreographic works
 sound recordings
 motion pictures and other audiovisual works
 architectural works
◦ Fixed in a tangible medium of expression
TANGIBLE MEDIUMS OF
EXPRESSION
Expression, but not
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Ideas
Procedures
Processes
Systems
Methods of Operation
Concepts
Principles
Discoveries
Expression, but not
Titles
Names of products or services
Names of businesses, organizations, or groups
Pseudonyms of individuals (including pen or
stage names)
◦ Short phrases, including slogans, catchphrases,
mottos or short advertising expressions
◦ Listing of ingredients, as in recipes, labels or
formulas
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Exclusive right to:
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reproduce
prepare derivative works
distribute copies
publicly perform
publicly display
Ownership of the medium, such as a book or
painting, does not give the possessor the
copyright
Author owns copyright, unless
◦ Work made for hire
 a work prepared by an employee within the scope of his or her
employment; or
 a work specially ordered or commissioned for certain uses if the
parties expressly agree in a signed writing that the work shall
be considered a “work made for hire”
◦ Joint ownership – unless written assignment
Intellectual Property Ownership Agreement
◦ Use Them! –Ownership of Intellectual Property
Underlying Work Product Drives Company Value
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Secure – Use Foresight
◦ Own the Work Product and Underlying Copyright
◦ Get Assignment of Copyright (IP Ownership Agreement)
Notify 1-2-3 – on all published copies
(1) “©” or “Copyright”
(2) Owner’s Name
(3) First Year of Publication
Register Early
◦ enables recovery of statutory damages and attorney fees
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Word, term, name, symbol, design, logo,
image, sound, color or combination thereof
Used in commerce
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to indicate the source of the goods or services
to identify and distinguish particular goods or
services (e.g., Delta Airlines vs. Delta Faucets)
Right to prevent a likelihood of confusion
In short, a trademark is a brand
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Words, Logos, Sounds, Colors and
Combination Marks
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Trademarks distinguish your product or services
from those of your competitor
Trademarks signify to consumers or clients that all
of your products or services come from one source
Trademarks signify to consumers or clients that all
of your products or services are of equal quality
Trademarks create value
◦ Consumer Goodwill – market share
◦ Corporate Goodwill – others want to collaborate/joint venture
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E.g., licensing deals
Companion products (case example: iPhone)
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Inherently Distinctive
◦ Fanciful: KODAK® cameras; CLOROX ® bleach; Exxon ®
gasoline
◦ Arbitrary: APPLE® computers; LOTUS ® software; Ice Cream ®
gum
◦ Suggestive: COPPERTONE® sunscreen; Microsoft ® computers
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Requires Secondary Meaning
◦ Descriptive: AMERICA ONLINE® Internet Services ; WINDOWS ® for
windowing software
◦ Geographic
◦ Personal name –marks that are primarily surnames
◦ Laudatory Phrases (e.g., Best, Good, Fast)
Can Never be a Trademark
◦ Generic name of a product or service (victims of Genericide include
ASPIRIN and STYROFOAM)
◦ Functional
SLOGAN MARKS
“Breakfast of
Champions”
“They’re Gr-rreat!!!”
“Be all that you can
be”
NON-TRADITIONAL
MARKS
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Similar to Trademarks
Protects appearance of product or its
packaging that identifies the source of the
product to consumers
May be Registered with USPTO
Examples:
Select New Brand
• Pick Trademark(s)
•Pick Domain Name(s)
No
Domain
Name
Available?
Not
Clear
for Use
Yes
No
Trademark
Clearance
Analysis
Yes
Mark cleared for
use and
registration
Trademar
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Applicatio
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Yes
Use in
Commerce
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No
Yes
Intent-toUse
Application
Mark cleared for
use only
Business/Legal
evaluation of use
of mark without
registration
Consider Selecting
New Brand
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Choose Distinctive Marks (Fanciful, Arbitrary or Suggestive)
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Descriptive marks and common terms are difficult to clear for
use
◦ Avoid descriptive terms
◦ Avoid common words/phrases; avoid acronyms
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generally increases clearance and registration costs
third parties are more likely to oppose registration
narrower scope of protection (decreases strength and value of mark)
may inhibit ability to stop third parties from using mark
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Consider Domain Name availability
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Reputational Risk Assessment
◦ Register domain names early (inexpensive to register popular TLDs)
◦ consider negative associations, connotations, other meanings
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Use only in connection with cleared good or services
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Use “TM” before registration; Use ® after registration
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Use properly (marks identify source of
product/service)
◦ Marks should be adjectives, not nouns
◦ E.g., Kleenex® tissues; Jeep® SUV
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Licensees
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Police
◦ Written agreements with specialized licensing terms
necessary
◦ Advise legal counsel of unauthorized third party uses
US rights are based on use
◦ Therefore Registration is optional but
recommended
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Nationwide presumption of ownership
Nationwide constructive notice
Federal Court Jurisdiction
Can be used as basis for obtaining foreign registration
Registration may be filed with U.S. Customs Service to
prevent importation of infringing goods
Pitfalls in Employer/Employee Relationship
◦ Ownership of Intellectual Property developed by Employees
 Copyright
 “Work for Hire”
 Patent
 “employed to invent” doctrine
 “shop right”
• Trade Secrets
 NDA
Bottom Line:
◦ Use appropriate written IP Ownership and Confidentiality
Agreements to ensure that your
“IP-House” is in Order