Tips for Managing Intellectual Property Camille L. Urban BrownWinick 666 Grand Avenue, Suite 2000 Des Moines, IA Telephone: Facsimile:

Intellectual Property You May Not Realize You Have Copyright protects creative expression Trade Secret protects valuable corporate info Patentable Invention excludes others from your invention Trademark exclusively identifies your service or good

Copyrights Protects original works of authorship that are fixed in a tangible medium Term Cost Maintenance Rights attach Infringement Ownership

Copyrights (cont.) Joint Works Collective Works Work For Hire TIPS: Agreements with contractors and employees make ownership simple! Notice is free.

Tradesecret “The stuff of corporate espionage, great movies and pizza sauce“ Has independent economic value because not generally known, not readily ascertainable by proper means by one able to obtain economic value from it AND is the subject of reasonable efforts to maintain its secrecy.

Tradesecret What is protectable as a Trade Secret? How long does it last? What does it cost?

Tradesecret Identify the secret; assess the risk; reduce the risk— Create a plan Execute the plan Enforce the plan

Inventions Protect as a Trade Secret or Patent? Level of prior disclosure? Can it be kept a secret and still provide economic value? Or will secrecy be too difficult/expensive? How long with the invention have value?

Patents How long does it last? How much does it cost? General process? When do we have to decide?

Patents Ownership of underlying invention? Tricky. Joint. Pre-negotiation simpler than post Use agreements Include limited power of attorney

Patents That joint inventorship thing…. Friends and Neighbors Testing company Help from the university Help from independent contractor Help from independent contractor connected with a university

Patents UNIVERSITY OWNED: 1. MIT, Stanford model – post nonnegotiable licenses 2. Milestones typical 3. Scientific Inventor Rights: In the absence of agreement between university and its inventor 4. Other Institutions: May also have rights. Scientists transfer. Universities collaborate.

Trademarks Used in commerce to identify a source Infringement: When a mark causes consumer confusion as to a source of goods or service When used correctly, increases in value over time

Trademarks How long does it last? How much does it cost? General process? When do we have to decide?

All together now… What are the sources of IP Patents? Copyright? Trade Secret? Trademark? Is Protection for valuable IP in place? Have patents been filed? Trademarks? Policing strategy? Has copyrighted material been registered? Is there a strategy in place for protecting trade secrets? Are ownership issues resolved? Are there multiple inventors/authors? Have proper assignment documents been signed? Have contractors signed work to hire agreements?

Negotiating IP Deals The value in an IP-driven deal is typically largely based on rights to use, rights to change, rights to modify, rights to sell

Common Deal Terms Ownership v. license Working relationship and contributions Timelines Features/character/object of services Payment: how, when, triggers License for pre-existing On-going support

Common Deal Terms (cont. ) Territory/geographic bounds? Improvements? Ownership? License back? Joint developments? Expires with patent right or with term? Indemnification – infringement, product liability Termination for cause

Negotiating Categorize each term on the continuum: negotiable→ barely negotiable→ nonnegotiable Create realistic expectations for each term Determine room to maneuver, basis for maneuverability, and factors affecting same

Negotiating: COMPONENTS OF VALUE APPROACH Consider the key terms only first e.g. royalty, overall use rights, ability to modify, development services. Then fill in the remainder without re- negotiating any of the key terms if possible.

Negotiate Realistically Determine “walk away” Concede if reasonable, but make sure every concession has meaning Watch out for “last minute” demands Know when to stop

Negotiating: NOTHING IS AGREED ON UNTIL ALL IS AGREED ON Be willing to re-open a clause in order to negotiate another clause within the agreement.

…. NEGOTIATION IS A TEAM SPORT!! DON’T BURN BRIDGES!!

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