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Bullet Proof IP Perkins Coie LLP.  Full Service Firm slanted towards high tech companies  700 lawyers; 14 offices  Named one of the "Best 100 Companies"

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Presentation on theme: "Bullet Proof IP Perkins Coie LLP.  Full Service Firm slanted towards high tech companies  700 lawyers; 14 offices  Named one of the "Best 100 Companies""— Presentation transcript:

1 Bullet Proof IP Perkins Coie LLP

2  Full Service Firm slanted towards high tech companies  700 lawyers; 14 offices  Named one of the "Best 100 Companies" by FORTUNE magazine  6th consecutive nomination  Recognized as a leading US technology law firm  Represent:  Fortune 100 companies  Start-ups from around the world  Market leaders in cutting-edge technology Perkins Coie Overview

3 Menlo Park Office  45+ lawyers & patent agents  42% hold advanced technical degrees  26% PhDs  Exceptional and focused expertise  Areas of practice  Corporate  Patent Prosecution  Patent Litigation  Computer Law

4 Some Relevant Forms of IP  Copyright – protects original expression  Trademark – protects branding  Trade Secret – protects commercially sensitive and important business information  Patent – protects functionality

5 What is a Copyright?  Copyright protects an "original work of authorship fixed in any tangible medium of expression."  The right to exclude any other person from reproducing, preparing derivative works, distributing, performing, displaying, or using the work covered by copyright for a specific period of time.  Copyright inherent to original work, but benefits to registration  Registration relatively inexpensive, rights tend to be "thin" for technology, high for information

6 What is a Trademark?  An identification of a source of origin of a good or service.  Typically a word, name, symbol, device or combination that helps consumers identify the product or service and distinguish from competitors product or service.  Rights inherent once you begin branding under the trademark, improved rights gained through registration.

7 What is a Trade Secret?  Any information that can be used in the operation of a business or other enterprise and that is sufficiently valuable and secret to afford an actual or potential economic advantage over others.  E.g. Formula, pattern, device, compilation of information  Low threshold of originality – a trade secret cannot be generally known  No public registration process  Liability requires misappropriation – a bad actor

8 What is a Patent?  A grant from the U.S. Government to exclude others from making, using, selling, importing the patented invention  Rights are territorial  Not a license to use  Must obtain public registration  High threshold of originality  No "bad actor" requirement for liability  Best bet for protecting original technology

9 Designing an Intellectual Property Protection System  Identify competitive and/or commercially sensitive technology, material, documents and information  Determine appropriate area(s) of law to be used to protect the company's technology, material, documents and information  Establish and implement necessary corporate policies and procedures

10 Entrepreneurs Budget Strategy  Identify innovation  Interview several law firms (free lunch and free advice!)  Prepare provisional patent application(s) covering innovation  eFile provisional application(s) before public disclosure  Select firm for drafting regular utility patent application

11 Provisional Patent Applications  Less Expensive  No required format—use provisional template, white paper, or any form you feel comfortable with, just get the information in there  Must be converted in one year  Locks in priority date  Helps quantify innovation  Enables disclosure to third-parties without jeopardizing patent rights  Electronic filing at www.uspto.gov https://sportal.uspto.gov/secure/portal/efs-unregistered

12 Questions? Thank You


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