UTSA Colleges of Business and Engineering October 5, 2013 TAKE YOUR TECHNOLOGY TO THE LIMIT! 2014 Technology Entrepreneurship Boot Camp – Intellectual Property Sponsored by Jackson Walker

William R. Borchers Partner: Intellectual Property The University of Texas at Austin B.S. in Aerospace Engineering University of Virginia Juris Doctorate

Objectives Define the term “intellectual property” and describe its importance Understand and distinguish the major forms of intellectual property protection Develop an understanding of how to determine whether a particular piece of intellectual property is worth the time and expense of protecting

What is Intellectual Property ? Intellectual property is created by the mind –Inventions –Accumulations of pertinent data –Writings –Compositions –Drawings Four major forms of intellectual property protection –Patents –Trade Secrets –Trademarks –Copyrights

Why should you protect your IP ? Protect your innovations/proprietary data from competitors Investors will want an IP protection plan Protect and build your good name Add value to company if ever want to sell IP assets can evaporate if they are not protected Cost of IP protection is small compared to potential value

Employee, Customer and Supplier Goodwill Common Law Trademark and Trade Secret protection Building, Equipment, Inventory Registered - Trademarks, Trade Dress, Copyrights Patents – Utility, Design, Plant IP assignments and noncompetes - employees and contractors Formal Trade Secret Protection Form contracts - suppliers and customers ASSETS Soft Assets Hard Assets Extra Assets

Common Mistakes With IP Not properly identifying all of the intellectual property Not fully recognizing the value of the intellectual property Not legally protecting the intellectual property that needs protecting Not using the intellectual property as part of the overall plan for success

Types of Intellectual Property Protection Patents -- gives right to exclude others from making, using, selling, or importing the invention Trade Secrets/Know How – protects ideas/data if kept secret Trademarks/Service Marks -- identifies a unique source of goods or services Copyrights -- protects from copying of original works (music, books, drawings, software, databases)

PATENTS

Patents Definition: A patent is a grant from the U.S. government allowing its owner to exclude others from making, using, offering to sell, selling, or importing his invention No right to practice There are three types of patents: –Utility patents - protect useful inventions –Design patents - protect ornamental designs –Plant patents – protect asexual plant varieties Utility patents are the most common

Any new and useful –Process –Machine –Article of manufacture –Composition of matter Improvements on existing things Other areas (in flux) –Software –Methods of doing business What’s Patentable?

Three Basic Requirements For Utility Patents

Generally 20 years from earliest U.S. filing date Generally 20 years from earliest U.S. filing date –Can be extended for delays in USPTO and FDA –15 year for designs Outside of U.S. – generally 20 years from earliest filing dataOutside of U.S. – generally 20 years from earliest filing data Maintenance fees must be paid to keep patents in forceMaintenance fees must be paid to keep patents in force How long do patents last ?

When can you patent ? When it is clear the invention will work Conception –When inventor has completely performed the mental part of the invention ― every feature claimed in the patent application Reduction to Practice –Invention built and sufficiently tested to demonstrate that it will work for its intended purpose Reduction to practice not necessary if it is clear from drawings and description that the invention will work

When should you apply for a patent ? US underwent major transformation in March 2013 with the America Invents Act (AIA) US is now a first-to-file country Expands the amount of prior art that can prevent patenting –You will now be beaten by someone who invents later but files before you File as early as possible

Absolute Last Dates to Apply for Patents For U.S. patent: application will be barred if not filed within one year of the first: –Public use –Public disclosure (e.g., printed publication) –Sale/Offer for sale For foreign patents: application will be barred if not filed somewhere before any public disclosure of the invention anywhere Best policy: File prior to any public disclosure

Provisional Patent Applications Viewed as inexpensive and quick way to get an invention on file Can follow up with regular application within 12 months and maintain priority date Expect to see a rise in use with AIA Can be a trap because they must enable the invention to be of effect

Foreign Patents Patents are issued on a country-by-country basis –A U.S. patent will not stop someone in another country from exploiting the invention No “international patent” –Patent Cooperation Treaty (PCT) only provides additional time to make decision regarding which countries to file in In general, pursuing foreign patents is quite expensive, so do so with a clear purpose

Inventor owns patent unless otherwise agreed Shop Right –Company may get if the inventor used company resources in creating the invention –Only right to use, not ownership Companies should put assignment provisions in employee agreements Who owns a patent ?

Can I get a patent ? (Prior art search) –Compares your idea against what has been already been disclosed –Searches can be performed relatively cheaply and quickly –Provides some comfort that a patent is obtainable Can I practice my invention ? (Freedom to Operate search) –Compares your proposed product against other patents’ claims –More comprehensive and time consuming –Provides comfort that you will not infringe anybody else’s patent Will my patent exclude others from competing designs ? Should you pursue a patent/product ?

A Patent May Have Huge or Little Commercial Value

My Invention A. Cup B. Handle C. Metal Disc D. Magnet

PATENTABILITY ANALYSIS Patentability Operation Invention ABCD Your Description Novelty subtraction Leaves Obviousness subtraction Leaves --A --AB ABC ABCD --ABC ABCD Combinations obvious “to a person having ordinary skill in the art” are not patentable (§ 103) Prior art combinations are not patentable (§ 102) Combinations novel to your invention Combination that might be patentable

INFRINGEMENT ANALYSIS Patent Claim Claim’s Elements Accused Devices Patent Infringement A A AB ABC Yes AB ABC A AB ABC A AB ABC No Yes No Yes Claim Value High value Moderate value Low value

ABC … XYZ Invention ABC … XY Prior Art ABC … XYZ Patentable Combination Everything new is patentable (almost) – if you add enough elements to the claim

SCOPE OF CLAIM 1 WITH ELEMENT A High Value A Boundary Infringements

SCOPE OF CLAIM 2 WITH ELEMENTS A AND B Moderate Value Infringements A+B Boundary A B

SCOPE OF CLAIM 3 WITH ELEMENTS A, B AND C A+B+C Low Value Boundary A B C Infringements

SCOPE OF A CLAIM WITH ELEMENTS A, B, C... Z SCOPE OF A CLAIM WITH ELEMENTS A, B, C... Z. Z Easy to get / but tiny infringement value. No competitors’ accused devices or methods have all elements A,B,C... Z Boundary A+B+C+Z A B C.Z

PATENTABILITY VS. INFRINGEMENT 1.Everything new is patentable (almost) - if you add enough elements to the claim. 2. But the more elements needed to get a patent, the less its value (maybe zero) - because fewer accused devices and methods infringe.

TRADE SECRETS

Trade Secrets Definition: A trade secret consists of any information not generally known to others that gives its owner a competitive advantage and for which reasonable steps are taken to maintain its secrecy Can be technical or commercial in nature Can be useful for data and processes Not typically good for products themselves

Patents vs. Trade Secrets Pros: –Patents protect against independent development and reverse engineering –Trade secrets can protect a broad range of information and can last a long time (e.g., indefinite) Cons: –Patents have a limited life (20 yrs), are more expensive to obtain, and only protect certain things –Trade secrets are harder to maintain and cannot protect against independent development and reverse engineering

Trade Secret Protection Methods Physical Measures For Protecting Trade Secrets –Restricting access to confidential material Only disclose to need-to-know employees Force employees and outsiders to execute NDAs –Labeling documents – e.g., proprietary –Password protecting confidential computer files –Maintaining log books for visitors –Maintaining log books for sensitive material Maintaining adequate overall security measures

YOUR TRADE SECRETS ARE ONLY PROTECTABLE IF THE JURY FINDS THAT: The items were relatively secret; and The defendant knew the items were secret (mark, mark, mark) Enforcing Trade Secrets

TRADEMARKS

Trademarks Definition: a trademark is a word, name, symbol, device or combination thereof that identifies and distinguishes one’s goods and services from other’s Technically, a trademark is used to identify a good or product and a service mark is used to identify a service

Example Name is trademarked Symbol is trademarked Slogan is trademarked

What is Protectable? Words Numbers and letters Designs or logos Sounds Fragrances Shapes Colors Trade dress

TYPES OF MARKS Generic – Unprotectable (soda for a beverage or TV for a television) Descriptive - May be protectable (such as “Tax Preparation Software” for a software program that enables users to prepare tax returns) Suggestive – Protectable (such as Greyhound for bus services and Jaguar for automobiles, with both marks suggesting the speed of their products; 7-ELEVEN for convenience stores) Arbitratory or Fanciful - Very protectable (such as Kodak, Starbucks, Verizon, Exxon)

Exclusions from Trademark Protection Immoral or scandalous matter Deceptive matter –For example, a food company couldn’t register the name “Fresh Florida Oranges” if the oranges weren’t from Florida. Surnames –A trademark consisting primarily of a surname, such as Anderson or Smith, is typically not protectable.

The Process of Obtaining a Trademark

Establishing Trademark Rights Trademarks rights naturally arise through use of a mark –Simple use of a mark grants rights in the mark against later uses on similar products in the area of use –Federal registration, although not required, protects the mark nationwide against later confusingly similar uses Trademarks can be reserved before use if there is a good faith intent to use Trademark rights can last as long as a mark is used

COPYRIGHTS

Copyrights Definition: Copyright protects original works of authorship from being reproduced Applies to a wide variety of works, including literary, musical, dramatic, graphic, sculptural and architectural works, motion pictures, and sound recordings Not just critically acclaimed works Extends to advertising brochures, computer programs, and databases

What is Protected By a Copyright? Literary works Computer software Pantomimes and choreographic works Musical compositions Dramatic works Pictorial, graphic, and sculptural works Does not extend to ideas, procedures, processes, systems, concepts or mere slogans, titles or blank forms

Copyright Protection How copyrights arise: –Copyright protection exists from the moment a work is created –No registration is required (but helps enforce) Copyrights last for a long time –Author’s life plus 70 years –In the case of works created by employees for their employers, the shorter of 95 years from publication or 120 years from creation

Enhancing Copyright Protection The following steps can be taken, however, to enhance copyright protection Copyright protection can be enhanced by attaching the copyright notice, or “copyright bug” to something Registering the work with the U.S. Copyright Office –Statutory damages –Attorney’s fees –Cheap and easy

PATENTS – Evaluate and file early to protect TRADE SECRETS – Identify and create good facts TRADEMARKS – Use and register COPYRIGHTS – Register Jackson Walker L.L.P. Austin  Dallas  Fort Worth  Houston  San Angelo  San Antonio