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

Intellectual Property (Creations of the Mind) Inventions Inventions Literary and artistic works Literary and artistic works Company and product names Company and product names Product designs Product designs Commercially valuable, secret business information Commercially valuable, secret business information

Types of Intellectual Property Patents Patents Trade secrets Trade secrets Copyrights Copyrights Trademarks Trademarks

The Value of Intellectual Property U.S. IP is worth between $5 trillion and $5.5 trillion equivalent to 45% of U.S. GDP and greater than the GDP of any other nation U.S. IP is worth between $5 trillion and $5.5 trillion equivalent to 45% of U.S. GDP and greater than the GDP of any other nation copyright industries (music, publishing and software) accounted for 6% of the U.S. GDP - $600 billion copyright industries (music, publishing and software) accounted for 6% of the U.S. GDP - $600 billion Intangibles account for 70% of the current value of equities in the U.S. Intangibles account for 70% of the current value of equities in the U.S.

What is a Trade Secret? Any formula, pattern, physical device, idea, process or compilation of information that both: Provides a competitive advantage in the market place Provides a competitive advantage in the market place Is treated by the owner in a way that can reasonably be expected to prevent the public or competitors from learning about it Is treated by the owner in a way that can reasonably be expected to prevent the public or competitors from learning about it Examples of information protectable as trade secrets: Engineering technology Engineering technology Customer lists Customer lists Novel laboratory processes Novel laboratory processes

Common Trade Secret Mistake Failure to take precautions to ensure secrecy Failure to take precautions to ensure secrecySolutions: Confidentiality agreements Confidentiality agreements –Business partners –Employees/consultants Physical measures to ensure secrecy Physical measures to ensure secrecy –Computer system security –Segregation of secret information –Limited disclosure of secret information

What is a Patent? Patentable Subject Matter: Any new and unobvious substance, product, apparatus, method of making something or method of doing something Any new and unobvious substance, product, apparatus, method of making something or method of doing something Design Patents Design Patents Plant Patents Plant Patents

Inventorship Conception of an idea Conception of an idea Formulation in the mind of a definitive way of realizing that idea (ie – a concrete and complete solution to a problem) Formulation in the mind of a definitive way of realizing that idea (ie – a concrete and complete solution to a problem)

Who Is Not An Inventor? Individuals that merely act as technicians under the direction of the actual inventors Individuals that merely act as technicians under the direction of the actual inventors

What Constitutes Public Disclosure? Websites Websites Advertisements Advertisements Publications Publications Discussions/Presentations – not under confidentiality agreement Discussions/Presentations – not under confidentiality agreement

The Easiest Way to Protect Your Invention January 1, 2007 – Disclose January 2, 2007 – Patent BAD

The Easiest Way to Protect Your Invention January 1, 2007 – Patent January 2, 2007 – Disclose GOOD

Provisional Patent Application Advantages Preserves international filing rights Preserves international filing rights Defers substantial patent costs Defers substantial patent costs Permits inventions to be marked as patent pending Permits inventions to be marked as patent pending

Provisional Patent Application Limitations Not examined by the U. S. Patent and Trademark Office (USPTO) Not examined by the U. S. Patent and Trademark Office (USPTO) Lapses in 12 months Lapses in 12 months Does not form the basis for enforceable patent protection Does not form the basis for enforceable patent protection

Provisional Patent Application Costs $100 USPTO filing fee $100 USPTO filing fee Minimal fees for legal services Minimal fees for legal services What you can do to keep those costs from escalating What you can do to keep those costs from escalating

Provisional Patent Application What We Need From You More than a generalized description of the invention and/or its performance More than a generalized description of the invention and/or its performance Legally sufficient disclosure (ie - what you are doing, lab results, working papers, drawings/diagrams) Legally sufficient disclosure (ie - what you are doing, lab results, working papers, drawings/diagrams)

What Happens After the Provisional Application is Filed? At the USPTO… nothing At the USPTO… nothing Provisional applications are never published by the USPTO Provisional applications are never published by the USPTO Patentability Search Patentability Search Analysis Analysis

Future Developments When Additional Provisional Applications May Be Necessary

Non-provisional/Utility Application Must be filed within 1 year of the provisional application Must be filed within 1 year of the provisional application Formally examined Formally examined Provides enforceable patent protection if granted Provides enforceable patent protection if granted Considerable cost and time Considerable cost and time

If youve followed the Patent then Disclose doctrine and a patent issues… The Benefits are Numerous

What is a Copyright? Protects certain works that meet the following requirements: -Original -Sufficiently creative -Fixed in a tangible medium of expression Protects expression of ideas, not ideas Registration not necessary but affords additional rights -Legal presumptions of copyright ownership -Right to recover statutory (presumed damages) -Right to recover attorneys fees

What is a Copyright (cont.)? Examples of copyrightable works: Literary works, musical works, sound recordings, motion pictures, sculptures, paintings Examples of copyrightable works: Literary works, musical works, sound recordings, motion pictures, sculptures, paintings Grants author of the work the exclusive right to: Grants author of the work the exclusive right to: –Make copies –Make changes to –Distribute –Publicly perform (e.g., choreographic works) –Publicly display (e.g., sculptural works) Life of a Copyright is Long Life of a Copyright is Long –Authors life plus 70 years (works made for hire is 95 years from publication or 120 years from creation)

Copyright Notices Example: ©2007 Archer & Greiner, P.C. All Rights Reserved Example: ©2007 Archer & Greiner, P.C. All Rights Reserved Use of notice not required Use of notice not required Registration not necessary to use notice Registration not necessary to use notice

Common Copyright Mistake Work for Hire Doctrine - Absent agreement to the contrary: Copyright in work created by an employee within scope of employment is owned by employer Copyright in work created by an employee within scope of employment is owned by employer Copyright in work created by a third party is owned by the third party Copyright in work created by a third party is owned by the third party Solution: Written agreements confirming copyright ownership Website developers Website developers Marketing/PR Agency Marketing/PR Agency Software/technology developers Software/technology developers

Copyright Infringement Unauthorized copying of copyrighted work resulting in a substantially similar work Unauthorized copying of copyrighted work resulting in a substantially similar work –Can be exact copying of small portion of copyrighted work –Can be substantial paraphrasing of copyrighted work Fair Use Defense Fair Use Defense

What is a Trademark? An indicator of the source of goods (trademarks) or services (service mark) Any word, name, symbol, or device, or any combination that is used to identify and distinguish the goods of one seller from goods manufactured or sold by others, and to indicate the source of the goods. Any word, name, symbol, or device, or any combination that is used to identify and distinguish the goods of one seller from goods manufactured or sold by others, and to indicate the source of the goods. Examples of trademarks: Archer & Greiner Archer & Greiner Coca-Cola Coca-Cola ExxonMobil ExxonMobil

What is a Trademark (cont.)? Like copyrights, registration not necessary but affords additional rights –Legal presumptions of copyright ownership –Right to recover treble damages –Right to recover attorneys fees Trademark rights generally exist for as long as trademark is used in commerce Trademark rights generally exist for as long as trademark is used in commerce

Trademark Notices Examples: Examples: –ARCHER & GREINER® –ARCHER & GREINER Use of notice not required Use of notice not required Registration not necessary to use notice Registration not necessary to use notice

Trademark Infringement Generally prohibited from using a mark that is confusingly similar in use and appearance to another partys mark -Use may be prohibited even if two trademarks are not the same -Use may be permitted even if two trademarks are identical

Common Trademark Mistakes Registration of a corporate name or domain name does not mean the name does not infringe a third partys trademark rights Registration of a corporate name or domain name does not mean the name does not infringe a third partys trademark rights Solutions:. Trademark availability search. Trademark availability search. –Review of registered and unregistered marks Trademark registration. Trademark registration. –Helpful but not necessary for protection. (like copyrights).

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