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Intellectual Property Law & The Employer
Ownership of Intellectual Property in the Employment Context
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#OWNIT
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Part 1: Principles at Issues
1 AGENCY 2 PROPERTY RIGHTS
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Agency
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Property Rights
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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?
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Abraham Lincoln: "First Annual Message," December 3, 1861
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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
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Part 3: Implementing Solutions
For the Inventor who is the business…
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SAMPLE FLOWCHART FOR INNOVATIONS
(1) INVENT/CREATE
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(Document + signed, witnessed, dated)
SAMPLE FLOWCHART FOR INNOVATIONS (2) DO NOT DISCLOSE (Document + signed, witnessed, dated)
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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
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(2) TIMING OF DISCLOSURE matters, particularly external disclosures
SAMPLE FLOWCHART FOR INNOVATIONS (2) TIMING OF DISCLOSURE matters, particularly external disclosures
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#BADTIMING
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SAMPLE FLOWCHART FOR INNOVATIONS
(go to 1…) (3) ANALYZE (Marketable, useful) YES (go to 4…)
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(4) GET IP ATTORNEY CALL ME!
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(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
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(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
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(8) INNOVATION PERFORMING?
SAMPLE FLOWCHART FOR INNOVATIONS (8) INNOVATION PERFORMING? NO YES
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(9) FILE NON-PROVISIONAL PATENT APP
SAMPLE FLOWCHART FOR INNOVATIONS (9) FILE NON-PROVISIONAL PATENT APP ATTORNEY’s step
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SAMPLE FLOWCHART FOR INNOVATIONS
REMEMBER … (2) TIMING OF DISCLOSURE matters, particularly external disclosures
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#GOODTIMING
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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
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#OWNIT
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Part 3: Implementing Solutions
For the Company who owns ALL employee ideas…
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SAMPLE FLOWCHART FOR INNOVATIONS
(1) INVENT/CREATE EMPLOYEE’s step
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(Document + signed, witnessed, dated)
SAMPLE FLOWCHART FOR INNOVATIONS (2) DISCLOSE (Document + signed, witnessed, dated) EMPLOYEE’s step
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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
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SAMPLE FLOWCHART FOR INNOVATIONS
(2) Timing of disclosure matters, particularly external disclosures – aka, DON’T disclose externally…
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#BADTIMING
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(3) REPORT (to supervisor) SAMPLE FLOWCHART FOR INNOVATIONS
EMPLOYEE’s step
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(Marketable, patentable, useful)
SAMPLE FLOWCHART FOR INNOVATIONS NO (go to 1…) (4) ANALYZE (Marketable, patentable, useful) YES (go to 5…) EMPLOYER’s step
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(5) GET IP ATTORNEY CALL ME! EMPLOYER’s step
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(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
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(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
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(9) INNOVATION PERFORMING?
SAMPLE FLOWCHART FOR INNOVATIONS (9) INNOVATION PERFORMING? NO YES EMPLOYER’s step
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(10) FILE NON-PROVISIONAL PATENT APP
SAMPLE FLOWCHART FOR INNOVATIONS (10) FILE NON-PROVISIONAL PATENT APP ATTORNEY’s step
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SAMPLE FLOWCHART FOR INNOVATIONS
REMEMBER … (2) TIMING OF DISCLOSURE matters, particularly external disclosures
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#GOODTIMING
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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
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#OWNIT
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Part 3: Implementing Solutions
For the Company who owns CERTAIN employee ideas…
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EMPLOYER’s step
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SAMPLE FLOWCHART FOR INNOVATIONS
(1) INVENT/CREATE EMPLOYEE’s step
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(Document + signed, witnessed, dated)
SAMPLE FLOWCHART FOR INNOVATIONS (2) DISCLOSE (Document + signed, witnessed, dated) EMPLOYEE’s step
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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
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SAMPLE FLOWCHART FOR INNOVATIONS
(2) Timing of disclosure matters, particularly external disclosures – aka, DON’T disclose externally…
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#BADTIMING
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(3) REPORT (to supervisor) SAMPLE FLOWCHART FOR INNOVATIONS
EMPLOYEE’s step
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GERMANE TO BUSINESS? SAMPLE FLOWCHART FOR INNOVATIONS (4a) ANALYZE
EMPLOYER’s step
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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
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EMPLOYEE’s step
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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
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(5) GET IP ATTORNEY CALL ME! EMPLOYER’s step
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(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
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(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
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(9) INNOVATION PERFORMING?
SAMPLE FLOWCHART FOR INNOVATIONS (9) INNOVATION PERFORMING? NO YES EMPLOYER’s step
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(10) FILE NON-PROVISIONAL PATENT APP
SAMPLE FLOWCHART FOR INNOVATIONS (10) FILE NON-PROVISIONAL PATENT APP ATTORNEY’s step
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SAMPLE FLOWCHART FOR INNOVATIONS
REMEMBER … (2) TIMING OF DISCLOSURE matters, particularly external disclosures
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#GOODTIMING
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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
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#OWNIT
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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
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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
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Agreements (NDA, typically)
Confidentiality Obligations… Definitions Nonuse/Nondisclosure Former clients 3rd Party Return of materials
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Agreements (NDA, typically)
Scope of services Ownership of IP Assignment obligation Further Assurances Pre-existing Materials Attorney-in-fact provisions
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Agreements (NDA, typically)
Conflicting Agreements; Substantially Similar Designs Noncompetition/Nonsolicitation Term/Termination
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Agreements (NDA, typically)
Surviving Provisions Confidentiality Ownership Conflicts Noncompetition/Nonsolicitation Indemnifications Dispute resolution
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Agreements (NDA, typically)
Work-for-hire (for contractors) Independent contractor status
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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?
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#OWNIT
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Questions?
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