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Bullet Proof IP Perkins Coie LLP
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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
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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
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Some Relevant Forms of IP Copyright – protects original expression Trademark – protects branding Trade Secret – protects commercially sensitive and important business information Patent – protects functionality
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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
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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.
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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
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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
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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
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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
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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
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Questions? Thank You
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