Developing an Intellectual Property Strategy Marie Jones Bank of America Asst. General Counsel, SVP CCWC Career Strategies Conference Sept. 21, 2016

 Types of Intellectual Property Rights  Ensuring Company Owns the Intellectual Property Rights  Developing an Intellectual Property Strategy (Patent Emphasis) Overview 21 September 20162Bank of America

 Trade Secrets -Information + economic value because it is generally not known (formulas, industrial processes, devices, business information)  Patents (most common utility patents) -Inventions (processes, machines, devices, compositions) -Right to exclude others from making, selling, or using the invention  Trademarks -Identify the source of products and services (words, phrases, symbols, sounds) -Right to use the mark  Copyrights -Works of authorship fixed in a tangible medium (literary works, music, artistic works, software) -Exclusive right to reproduce, adapt, and distribute Types of Intellectual Property Rights 21 September 20163Bank of America

 Trade Secrets vs. Patents -Trade Secrets - Economic value because it is kept confidential. -Patents – A quid pro quo. In exchange for the “monopoly,” you will share the information to the public.  A product may be covered by multiple intellectual property rights -Copyright -Trade Secret  Industrial process, customer list -Patent  Processes performed by portions of the software -Trademark  Branding 21 September 20164Bank of America

 Hiring Process (Employee) -Proprietary Rights Agreement clearly stating Ownership Rights of the Company  Contracts (Example, vendors) -Clearly ensure that contract has language indicating ownership of IP as intended. -What deliverables or work products do you envision the vendor will create?  Copyrights -Vendor creates software for your company; who owns such software? -Will there be a license to the other party?  Patents – Ideas -Brainstorming session; who owns such ideas? Ensuring Company Owns the Intellectual Property Rights 21 September 20165Bank of America

Considerations:  Company has a growing portfolio of patents (pending and granted)  What do we do now?  There must be a strategy rather than growth by accident  Determine Business Strategy; Align Patent Strategy to Business Strategy  Two Sides of a Coin: -Developing and Protecting Patent Rights  Sword - Build a patent portfolio -More patents, more swords, more territories -Avoiding Infringement Suits (Respecting the IP Rights of Others)  Shield – Mitigate Risks -How to Avoid Being Sued? Developing an Intellectual Property Strategy (Patent Emphasis) 21 September 20166Bank of America

 So how do you develop your patent portfolio?  Education -Dispel the “layman’s view” of patents (“flash of genius” not required) -Take the “bad thing” and turn it into a “good thing” (patent suit) -Repetition Helps – presentations, newsletters -Find other champions, e.g., other attorneys and business partners -Educate Sourcing/Contract Management  Close and Regular Communication between Business and Patent Team -Important that patent team understands business strategy -Communication -Who in the business side? Business and technology partners -What should be discussed?  Current products (protect current products)  Future products (file patents now for future protection)  Competitors  Patent Landscapes (areas where competitors are patenting) Developing and Protecting Patent Rights 21 September 20167Bank of America

 So how do you develop your patent portfolio?  Find Opportunities to Raise Development of Patent Rights -Product Development Checkpoint or IP Legal Consultation  Ask the questions: -Did you take the proper steps to vet if your ideas are suitable for patent protection? -What are your future plans? Suggest forward inventing sessions. Putting your patent stakes into the future.  Use this opportunity to ask other IP questions? -Is there a product name? Vetting the trademark for possible registration. Avoids delays in the event of name/mark change. -Are there trade secrets that we need to identify?  Make it Easy for Inventors to Submit Ideas or Disclosures -Use outside counsel -Software tools -Process Change Developing and Protecting Patent Rights 21 September 20168Bank of America

 Watch out for:  Inadvertent licensing or transfer of ownership rights -Have a review process if IP rights are going to be handled differently from your company’s standard IP strategy  Educating your sourcing/contract management -Example: A different line of business agreeing to IP not being owned by the company Think about:  Acquisition of other Patents -Fill in patent portfolio gaps  Monetization -Is this part of the business strategy? Developing and Protecting Patent Rights 21 September 20169Bank of America

 So how do you avoid being sued? Proactive Step (Patent Perspective)  Establish a Product Development Checkpoint or IP Legal Consultation -Serves dual purpose (Developing IP and Risk Mitigation)  Early enough to have sufficient time to -Obtain Product Clearance/Freedom to Operate Opinion -Develop a Design Around -Obtain a License  Consider a buy or build situation? -Buy from a vendor, negotiate for IP indemnification Look at financial viability of the vendor Avoiding Patent Infringement Suits (Respecting the Patent Rights of Others) 21 September Bank of America

 So how do you avoid being sued? Proactive Step (Other IP Perspective)  Establish a Product Development Checkpoint or IP Legal Consultation -Use this opportunity to vet other IP  Trademark -Vet to ensure not infringing other trademarks  Copyrights -Open Source -Ensure no unauthorized copyrights used (from previous employers or internet) -Provide proper guidance when developing software in-house Particularly when replacing a vendor product Avoiding Patent Infringement Suits (Respecting the Patent Rights of Others) 21 September Bank of America

 You received a demand letter. Now what? -Consider:  Is the letter from a competitor or a non-practicing entity (NPE)? -Strategy may be different  Do you ignore, wait, respond, or take other action? Who is sending the letter? Who have they sued? Quick settlements?  Take a license now?  Investigate for prior art?  Assess non-infringement? Avoiding Patent Infringement Suits (Respecting the Patent Rights of Others) 21 September Bank of America

 Now you have been sued for patent infringement. -Approach may be different, if suit is by NPE vs Operating Company -Check if you have indemnification from vendors (note notice requirement). -Consider AIA Reviews:  Inter Partes Review  Covered Business Method Review -Suit is by operating company or competitor  Patent portfolio for cross-licensing purposes? Avoiding Patent Infringement Suits (Respecting the Patent Rights of Others) 21 September Bank of America