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

IP…….Who Knew? Intellectual Property (“IP”) is often one of a company’s most valuable assets Intellectual Property (“IP”) is often one of a company’s most valuable assets --Builds brand identity -Fosters consumer confidence -Distinguishes you from competitors -Protects Company investments

What Is Intellectual Property? IP is intangible property that is the result of creativity such as – -trademark -copyright -copyright-patents -trade secrets

What is a Trademark? A trademark is a word, symbol, design, or combination of a word and design which serves to identify and distinguish the goods or services of one source from those of another. A trademark is a word, symbol, design, or combination of a word and design which serves to identify and distinguish the goods or services of one source from those of another. Can be a sound (Harley Davidson) Can be a sound (Harley Davidson) Smell (Yarn) Smell (Yarn) Color (insulation) Color (insulation)

Examples of Trademarks

Trademarks: What They Do Identify and designate the source and origin of products or services Identify and designate the source and origin of products or services Represent a particular standard of quality Represent a particular standard of quality Distinguish products and services bearing a company’s marks from those of other companies Distinguish products and services bearing a company’s marks from those of other companies Symbolizes the GOODWILL of a company Symbolizes the GOODWILL of a company Protects a company’s investment in the development and promotion of its products Protects a company’s investment in the development and promotion of its products Ensures consumers who want a company’s products get that company’s products Ensures consumers who want a company’s products get that company’s products

TM Agreements TM License In; Use of 3 rd party mark TM License In; Use of 3 rd party mark TM License Out; 3 rd party uses your mark TM License Out; 3 rd party uses your mark Advertising/Marketing Agreement Advertising/Marketing Agreement Co-Brand Agreement Co-Brand Agreement Partnership Agreement Partnership Agreement Joint Development Agreement Joint Development Agreement

What Is Copyright? Original work of authorship Original work of authorship Fixed in a tangible medium of expression Fixed in a tangible medium of expression Not idea only Not idea only

What Works Are Protected Not Protected Literary Works Literary Works Musical Compositions Musical Compositions Sound Recordings Sound Recordings Visual Arts Visual Arts Audiovisual Works Audiovisual Works etc. etc. Unfixed works; ideas Unfixed works; ideas Titles, names, short phrases, slogans Titles, names, short phrases, slogans Words with no original authorship Words with no original authorship etc. etc.

Internet and Wireless Content

Copyright Owner Has Exclusive Rights “Bundle of Sticks” To reproduce the work To reproduce the work To prepare derivative works To prepare derivative works To distribute copies of the work To distribute copies of the work To perform the work publicly To perform the work publicly To display the work publicly To display the work publicly To perform sound recordings publicly by digital audio transmission To perform sound recordings publicly by digital audio transmission

Copyright AGREEMENTS Independent Contractor Independent Contractor Content License Content License Content Ownership Content Ownership Advertising Advertising Sponsorship Sponsorship Web Development Web Development Software Development Software Development

PATENTS The exclusive right of a creator to manufacture, use, license or sell an invention for a number of years. The exclusive right of a creator to manufacture, use, license or sell an invention for a number of years. Granted for a process, act or method that is new, useful and non-obvious Granted for a process, act or method that is new, useful and non-obvious Patent rights may be licensed, sold or assigned Patent rights may be licensed, sold or assigned

Patent Requirements Applicant must satisfy at least 4 conditions for US PTO Applicant must satisfy at least 4 conditions for US PTO 1. patentable subject matter 2. novelty; high threshold 3. useful; low threshold 4. No Prior Art: not obvious to one of ordinary skill in the art of having in mind earlier work of others 4. No Prior Art: not obvious to one of ordinary skill in the art of having in mind earlier work of others

Types of Patents Plant Patents; distinctive plants Plant Patents; distinctive plants Design Patents; ornamental designs Design Patents; ornamental designs Utility Patents; machine or process Utility Patents; machine or process Business Method Patents; methods of doing business Business Method Patents; methods of doing business Computer Software Computer Software Cannot patent natural elements; mathematical formulas; abstract ideas Cannot patent natural elements; mathematical formulas; abstract ideas

Patent Licenses Patentee has exclusive right to license patent and to exclude others from using invention Patentee has exclusive right to license patent and to exclude others from using invention Can license rights to (1) make; (2) use; and (3) sell separately Can license rights to (1) make; (2) use; and (3) sell separately Potentially enormous revenue stream (especially for business method patents; technology patents) Potentially enormous revenue stream (especially for business method patents; technology patents)

Patent Agreements Patent License Patent License Patent Assignment Patent Assignment Development Agreement Development Agreement Joint Development Agreement Joint Development Agreement Technology Agreements Technology Agreements

Trade Secrets Are Unique Unlike patents, trademarks and copyrights, there is never a registration or certificate to tell others a company is claiming info as a a trade secret Unlike patents, trademarks and copyrights, there is never a registration or certificate to tell others a company is claiming info as a a trade secret The only definitive way to determine whether something is trade secret is to have a court ruling The only definitive way to determine whether something is trade secret is to have a court ruling This makes it difficult for business planning but there are steps a business should take to protect info as a trade secret This makes it difficult for business planning but there are steps a business should take to protect info as a trade secret

No Single Definition Trade secret Law is State driven; Each state has its on definition Trade secret Law is State driven; Each state has its on states have adopted UTSA (including states have adopted UTSA (including Ohio) Factors Courts consider: Factors Courts consider: How widely known is the info? How widely known is the info? What security measures has company taken to protect info? What security measures has company taken to protect info? How many people know the info? How many people know the info? How valuable is the info to a business and its competitors (coca- cola) How valuable is the info to a business and its competitors (coca- cola) How much $ has company invested to develop the info? How much $ has company invested to develop the info? How hard is it for a competitor to duplicate the info using proper methods? How hard is it for a competitor to duplicate the info using proper methods?

How To Protect Trade Secrets Trade secret protection program to protect trade secrets against misappropriation Trade secret protection program to protect trade secrets against misappropriation Business premise security Business premise security Restrict disclosure only to those who have need to know Restrict disclosure only to those who have need to know Mark confidential info as confidential Mark confidential info as confidential

Non Disclosure Agreements Employees Employees Third Parties Third Parties consultants/developers/service providers Potential Business Partners Potential Business Partners Venture Capitalists Venture Capitalists Bankers/Advisors Bankers/Advisors

IP Agreements TM License; Company name TM License; Company name Copyright License; Company content Copyright License; Company content Patent License; Company invention Patent License; Company invention NDA; Confidential information NDA; Confidential information Employment Agreement Employment Agreement Non-Compete Non-Compete Agreements with 3 rd parties Agreements with 3 rd parties

How Do I Remember All of This Stuff? Develop an IP Strategy including: Develop an IP Strategy including: -Plan to Identify Company IP -Plan to Register Core Company IP -Plan to Implement Company IP Policy -Use of Template Agreements for use of Company IP

Thank You! Thank You!