Intellectual Property Law & The Employer

Slides:

Advertisements

Similar presentations

Intellectual Property Protection – Critical Issues to Consider in Business Ventures John F. Letchford, Esquire Archer & Greiner, P.C.

Advertisements

Intellectual Property Fundamentals Ed Genocchio - Principal of Spruson & Ferguson - Mechanical Group Presentation to The Australian Technology Showcase.

Wolf, Greenfield & Sacks, P.C. | 600 Atlantic Avenue | Boston, Massachusetts | | fax | wolfgreenfield.com Communicating.

So you’ve invented something? A Guide for UMass Faculty, Researchers and Students.

First Steps to Create and Protect Value for the Emerging Technology Company.

Intellectual Property Workshop Patents and WPI’s Policies November 12, 2003 William W. Durgin Associate Provost for Academic Affairs Vice President for.

Intellectual Property Boston College Law School February 13, 2008 Trade Secret – Part 3.

Intellectual Property and Commercializing Technology Identifying, Protecting, Growing and Commercializing Intellectual Property in both Academic and Commercial.

IP=Increased Profits How to Make Your IP Work For You Rachel Lerner COSE Fall 2006.

Cochran Law Offices, LLC Patent Procedures Presented by William W. Cochran.

Intellectual Property

0 Charles R. Macedo, Esq. Partner. 1 Brief Overview of Priority Under AIA Implications for Public Disclosures and Private Disclosures Role of Provisional.

Protecting Confidential Information and Trade Secrets Protecting Confidential Information and Trade Secrets Presented by Michael C. Sullivan Denise N.

Intellectual Property, Nondisclosure agreements, Electronically Monitored Workplaces, And high level thinking questions.

Verification Analyst Qualifications Verification Agencies Workshop 5-8 September 2006 Facilitator: Theo Lombard.

Overview OTL Mission Inventor Responsibility Stanford Royalty Sharing Disclosure Form Patent View Inventor Agreements Patent.

“Today, the Department of Veterans Affairs takes credit for the work our researchers did in the past and will do in the future.” Anthony J. Principi Secretary.

The Business of Technology Baker & McKenzie LLP Tamsen Valoir, Ph.D. Baker & McKenzie International is a Swiss Verein with member law firms around the.

Investing in research, making a difference. Patent Basics for UW Researchers Leah Haman Intellectual Property Associate WARF 1.

3 Intellectual Property and You Carl Mahler Director of Intellectual Property CMU Center for Technology Transfer.

1 Knowledge | Innovation | Technology Overview of Risk Management in University Technology Transfer David N. Allen, Ph.D. Associate Vice President for.

Contract Drafting Class 14 Thurs. Mar. 1 University of Houston Law Center D. C. Toedt III.

Technology-Business-Legal Some Critical Intersections Getting Started Legally IP Protection Licensing Mark J. Sever, Jr., Esquire Deborah A. Hays, Esquire.

LEE BURGUNDER LEGAL ASPECTS of MANAGING TECHNOLOGY Third Ed. LEGAL ASPECTS of MANAGING TECHNOLOGY Third Ed.

New York Washington, DC Silicon Valley May 8, 2010 Charles Weiss Kenyon & Kenyon LLP (212) Southern Area Entrepreneur's.

Initial "Inventor" Interview (Practical Legal And Business Considerations) Greg Allen 3M Innovative Properties Company 1 August 26, 2010 AIPLA’s Practical.

ALEX STEWART INTERNATIONAL’S CODE OF PROFESSIONAL CONDUCT.

Zheng Liu January 18, 2015 Intellectual Property Law For Startups.

Custom Software Development Intellectual Property and Other Key Issues © 2006 Jeffrey W. Nelson and Iowa Department of Justice (Attach G)

Developing Value through Intellectual Property November 6, 2013 SALT LAKE CITY 1 Developing Value through Intellectual Property Loren R. Hulse Partner,

LEGAL ASPECTS OF FRANCHISING 18 April 2009 ALBERTO ECHARRI.

Policies Promoting IP Development in Universities and Higher Institutions of Learning In Africa OGADA Tom WIPO National Workshop on Intellectual Property.

Elements of a Workable Intellectual Property Policy OPIC IP Roundtable Noel Courage Bereskin & Parr November 21, 2007.

New Sections 102 & 103 (b) Conditions for Patentability- (1) IN GENERAL- Section 102 of title 35, United States Code, is amended to read as follows: -`Sec.

Commercializing Scientific Research and development Legislation, Contracts, Royalty rates Anne K. S. Jensen Senior Examiner, M. Sc. EE Danish Patent and.

I Need A Lawyer! Legal Issues for the Entrepreneur Built by Stambaugh/2009 Jeff Stambaugh Dillard College of Business/Rm 257A

Mason & Shephard The Ugly, the Bad and the Good Sean Arend April 2007.

Developing/Protecting Your Idea Peter H. Durant Nixon Peabody LLP March 30/31, 2005 Copyright © 2005 Nixon Peabody LLP.

NATIONAL CONFERENCE Intellectual Property Policies for Universities and Innovation dr. sc. Vlatka Petrović Head, Technology Transfer Office Acting Head,

Luke Montoya. Vendor Services Agreement Description and Structure Agreement for vendor to provide services (and often deliverables) (e.g., maintain website,

Intellectual Property at USC October 27, 2003 Dr. Michael Muthig.

The Legal Checklist for a Successful Business Launch Matthew Donahue Eno Martin Donahue, LLP

Fundamentals of Intellectual Property

Chapter 6 – Legal Issues for the Entrepreneurs. Business Law Wide range of decisions and issues for the entrepreneur to consider Wide range of decisions.

Intellectual Property for start-ups Innovation ACT Canberra - 23 August 2016 Matthew Lee Assistant Director – Start-up and small business engagement.

Technology Transfer Office

Brief Overview of Research Intellectual Property (IP)

Patents Amy Bilton Knowledge Transfer Officer.

So you’ve invented something?

INTELECTUAL PROPERTY RIGHTS

ECE362 Principles of Design

Intellectual Property Owner’s Manual

ECE362 Principles of Design

Astrachan Gunst Thomas, P.C.

Patent law update.

Conflicts of Interest in IP: Particularities of IP Practice

Dräger US – Trade Secrets CAP Training

Christian W. Appelt German and European Patent and Trademark Attorney

Agreements OSR Symposium

Professor Steven Litt Non-Disclosure Agreements: Key Elements In addition to typical contract elements (date, specific names.

Finland Non-competition clauses in employment contracts

Privacy Policy the Law….

IP and legal issues Super-project.eu.

Intellectual Property

What are the types of intellectual property?

Intellectual Property Considerations in Forming and Scaling a Business

Jonathan D’Silva MMI Intellectual Property 900 State Street, Suite 301

Presentation transcript:

Intellectual Property Law & The Employer Ownership of Intellectual Property in the Employment Context

#OWNIT

Part 1: Principles at Issues 1 AGENCY 2 PROPERTY RIGHTS

Agency

Property Rights

Part 2: Understanding the Tension in Your Business Policies Must Support the Model, are you… The whole business? (Inventor is the company) Owning all employee ideas/solutions? Owning only certain employee ideas/solutions?

Abraham Lincoln: "First Annual Message," December 3, 1861

SAMPLE FLOWCHART FOR INNOVATIONS (2) DISCLOSE (Document + signed, witnessed, dated) (3) REPORT (to supervisor) (1) INVENT/CREATE (4) ANALYZE (Marketable, useful) NO (7) PATENT SEARCH YES NO NO Results Favorable? Experience with Prior Art? Is there offer for sale? (5) GET IP ATTORNEY YES (8) FILE PROVISIONAL PATENT APP YES Pay maintenance fees until patent expires NO (9) INNOVATION PERFORMING? YES (10) FILE NON-PROVISIONAL PATENT APP YES APP ALLOWED? Argue/amend until allowed or cost prohibits NO

Part 3: Implementing Solutions For the Inventor who is the business…

SAMPLE FLOWCHART FOR INNOVATIONS (1) INVENT/CREATE

(Document + signed, witnessed, dated) SAMPLE FLOWCHART FOR INNOVATIONS (2) DO NOT DISCLOSE (Document + signed, witnessed, dated)

Agreements (NDA, typically) Confidentiality Obligations… Surviving Provisions Definitions Confidentiality Nonuse/Nondisclosure Ownership Former clients Conflicts 3rd Party Noncompete Return of materials Work-for-hire (if employment status not applicable) Ownership of all IP Work-for-hire (for contractors) Assignment obligation Independent contractor status Further Assurances Scope of services Pre-existing Materials Attorney-in-fact provisions Conflicting Agreements; Substantially Similar Designs Noncompetition/Nonsolicitation Term/Termination

(2) TIMING OF DISCLOSURE matters, particularly external disclosures SAMPLE FLOWCHART FOR INNOVATIONS (2) TIMING OF DISCLOSURE matters, particularly external disclosures

#BADTIMING

SAMPLE FLOWCHART FOR INNOVATIONS (go to 1…) (3) ANALYZE (Marketable, useful) YES (go to 4…)

(4) GET IP ATTORNEY CALL ME!

(5) PRIOR ART or OFFER FOR SALE you are aware of? SAMPLE FLOWCHART FOR INNOVATIONS NO (5) PRIOR ART or OFFER FOR SALE you are aware of? YES ATTORNEY’s step

(7) FILE PROVISIONAL PATENT APP SAMPLE FLOWCHART FOR INNOVATIONS NO (6) PATENT SEARCH Results Favorable? NO YES YES (7) FILE PROVISIONAL PATENT APP ATTORNEY’s step

(8) INNOVATION PERFORMING? SAMPLE FLOWCHART FOR INNOVATIONS (8) INNOVATION PERFORMING? NO YES

(9) FILE NON-PROVISIONAL PATENT APP SAMPLE FLOWCHART FOR INNOVATIONS (9) FILE NON-PROVISIONAL PATENT APP ATTORNEY’s step

SAMPLE FLOWCHART FOR INNOVATIONS REMEMBER … (2) TIMING OF DISCLOSURE matters, particularly external disclosures

#GOODTIMING

SAMPLE FLOWCHART FOR INNOVATIONS Pay maintenance fees until patent expires (10) APP ALLOWED? YES NO Argue/amend until allowed or cost prohibits ATTORNEY’s step

#OWNIT

Part 3: Implementing Solutions For the Company who owns ALL employee ideas…

SAMPLE FLOWCHART FOR INNOVATIONS (1) INVENT/CREATE EMPLOYEE’s step

(Document + signed, witnessed, dated) SAMPLE FLOWCHART FOR INNOVATIONS (2) DISCLOSE (Document + signed, witnessed, dated) EMPLOYEE’s step

Agreements (NDA, typically) Confidentiality Obligations… Surviving Provisions Definitions Confidentiality Nonuse/Nondisclosure Ownership Former clients Conflicts 3rd Party Noncompete Return of materials Work-for-hire (if employment status not applicable) Ownership of all IP Work-for-hire (for contractors) Assignment obligation Independent contractor status Further Assurances Scope of services Pre-existing Materials Attorney-in-fact provisions Conflicting Agreements; Substantially Similar Designs Noncompetition/Nonsolicitation Term/Termination

SAMPLE FLOWCHART FOR INNOVATIONS (2) Timing of disclosure matters, particularly external disclosures – aka, DON’T disclose externally…

#BADTIMING

(3) REPORT (to supervisor) SAMPLE FLOWCHART FOR INNOVATIONS EMPLOYEE’s step

(Marketable, patentable, useful) SAMPLE FLOWCHART FOR INNOVATIONS NO (go to 1…) (4) ANALYZE (Marketable, patentable, useful) YES (go to 5…) EMPLOYER’s step

(5) GET IP ATTORNEY CALL ME! EMPLOYER’s step

(6) PRIOR ART or OFFER FOR SALE you are aware of? SAMPLE FLOWCHART FOR INNOVATIONS NO (6) PRIOR ART or OFFER FOR SALE you are aware of? YES ATTORNEY’s step

(8) FILE PROVISIONAL PATENT APP SAMPLE FLOWCHART FOR INNOVATIONS NO (7) PATENT SEARCH Results Favorable? NO YES YES (8) FILE PROVISIONAL PATENT APP ATTORNEY’s step

(9) INNOVATION PERFORMING? SAMPLE FLOWCHART FOR INNOVATIONS (9) INNOVATION PERFORMING? NO YES EMPLOYER’s step

(10) FILE NON-PROVISIONAL PATENT APP SAMPLE FLOWCHART FOR INNOVATIONS (10) FILE NON-PROVISIONAL PATENT APP ATTORNEY’s step

SAMPLE FLOWCHART FOR INNOVATIONS REMEMBER … (2) TIMING OF DISCLOSURE matters, particularly external disclosures

#GOODTIMING

SAMPLE FLOWCHART FOR INNOVATIONS Pay maintenance fees until patent expires (11) APP ALLOWED? YES NO Argue/amend until allowed or cost prohibits ATTORNEY’s step

#OWNIT

Part 3: Implementing Solutions For the Company who owns CERTAIN employee ideas…

EMPLOYER’s step

SAMPLE FLOWCHART FOR INNOVATIONS (1) INVENT/CREATE EMPLOYEE’s step

(Document + signed, witnessed, dated) SAMPLE FLOWCHART FOR INNOVATIONS (2) DISCLOSE (Document + signed, witnessed, dated) EMPLOYEE’s step

Agreements (NDA, typically) Confidentiality Obligations… Surviving Provisions Definitions Confidentiality Nonuse/Nondisclosure Ownership Former clients Conflicts 3rd Party Noncompete Return of materials Work-for-hire (if employment status not applicable) Ownership of all IP Work-for-hire (for contractors) Assignment obligation Independent contractor status Further Assurances Scope of services Pre-existing Materials Attorney-in-fact provisions Conflicting Agreements; Substantially Similar Designs Noncompetition/Nonsolicitation Term/Termination

SAMPLE FLOWCHART FOR INNOVATIONS (2) Timing of disclosure matters, particularly external disclosures – aka, DON’T disclose externally…

#BADTIMING

(3) REPORT (to supervisor) SAMPLE FLOWCHART FOR INNOVATIONS EMPLOYEE’s step

GERMANE TO BUSINESS? SAMPLE FLOWCHART FOR INNOVATIONS (4a) ANALYZE EMPLOYER’s step

SAMPLE FLOWCHART FOR INNOVATIONS if it IS NOT germane to business… Give it back TO THE EMPLOYEE! The agreements should reflect this position EMPLOYER’s step

EMPLOYEE’s step

SAMPLE FLOWCHART FOR INNOVATIONS if it IS germane to business… NO (go to 1…) (4b) ANALYZE (marketable, patentable, useful) YES (go to 5…) EMPLOYER’s step

(5) GET IP ATTORNEY CALL ME! EMPLOYER’s step

(6) PRIOR ART or OFFER FOR SALE you are aware of? SAMPLE FLOWCHART FOR INNOVATIONS NO (6) PRIOR ART or OFFER FOR SALE you are aware of? YES ATTORNEY’s step

(8) FILE PROVISIONAL PATENT APP SAMPLE FLOWCHART FOR INNOVATIONS NO (7) PATENT SEARCH Results Favorable? NO YES YES (8) FILE PROVISIONAL PATENT APP ATTORNEY’s step

(9) INNOVATION PERFORMING? SAMPLE FLOWCHART FOR INNOVATIONS (9) INNOVATION PERFORMING? NO YES EMPLOYER’s step

(10) FILE NON-PROVISIONAL PATENT APP SAMPLE FLOWCHART FOR INNOVATIONS (10) FILE NON-PROVISIONAL PATENT APP ATTORNEY’s step

SAMPLE FLOWCHART FOR INNOVATIONS REMEMBER … (2) TIMING OF DISCLOSURE matters, particularly external disclosures

#GOODTIMING

SAMPLE FLOWCHART FOR INNOVATIONS Pay maintenance fees until patent expires (11) APP ALLOWED? YES NO Argue/amend until allowed or cost prohibits ATTORNEY’s step

#OWNIT

SAMPLE FLOWCHART FOR INNOVATIONS (2) DISCLOSE (Document + signed, witnessed, dated) (3) REPORT (to supervisor) (1) INVENT/CREATE (4) ANALYZE (Marketable, patentable, useful) NO (7) PATENT SEARCH YES NO NO Results Favorable? Experience with Prior Art? Is there offer for sale? (5) GET IP ATTORNEY YES (8) FILE PROVISIONAL PATENT APP YES Pay maintenance fees until patent expires NO (9) INNOVATION PERFORMING? YES (10) FILE NON-PROVISIONAL PATENT APP YES APP ALLOWED? Argue/amend until allowed or cost prohibits NO

Agreements (NDA, typically) Confidentiality Obligations… Surviving Provisions Definitions Confidentiality Nonuse/Nondisclosure Ownership Former clients Conflicts 3rd Party Noncompete Return of materials Work-for-hire (if employment status not applicable) Ownership of all IP Work-for-hire (for contractors) Assignment obligation Independent contractor status Further Assurances Scope of services Pre-existing Materials Attorney-in-fact provisions Conflicting Agreements; Substantially Similar Designs Noncompetition/Nonsolicitation Term/Termination

Agreements (NDA, typically) Confidentiality Obligations… Definitions Nonuse/Nondisclosure Former clients 3rd Party Return of materials

Agreements (NDA, typically) Scope of services Ownership of IP Assignment obligation Further Assurances Pre-existing Materials Attorney-in-fact provisions

Agreements (NDA, typically) Conflicting Agreements; Substantially Similar Designs Noncompetition/Nonsolicitation Term/Termination

Agreements (NDA, typically) Surviving Provisions Confidentiality Ownership Conflicts Noncompetition/Nonsolicitation Indemnifications Dispute resolution

Agreements (NDA, typically) Work-for-hire (for contractors) Independent contractor status

Agreements (NDA, typically) When should you sign? What agreement(s) should the terms appear in? Do all employees need one? What happens if an employee DOESN’T SIGN one? How do you recover rights not subject to an agreement?

#OWNIT

Questions?