Intellectual Property & How to Protect It

Sandra Thompson, PhD, Esq.Buchalter Nemer

Where to Begin

Vision Goals Objectives Strategies Tactics Metrics

Where to Begin Vision: Make better vegans

Goals: Provide accessible resources for new vegans

Objectives: Online resources, tailored/customizable resources by the end of 2014; subscription model by 2015

Strategies: Develop or identify web-platform that can fit needs of customization and resource management; Develop and solidify branding; identify various partnership groups

Tactics: On-line advertising or endorsement of a brand through celebrities; put together resources from respected nutritionists, vegan athletes and vegan celebrities.

Metrics: page views, subscriptions

Where to Begin

Structure– Corporate, Ownership, Taxes

Money– Venture, SBA, Loans, Grants

Intellectual property

What are the forms of IP?• Patents

• Trade Secrets & Know How

• Copyrights

• Trademarks, Service Marks & Trade Dress

• Domain Names

What do the forms of IP protect?

• Patents – Protect ideas: new, useful and non-obvious inventions.

• Trade Secrets & Know How – Protect ideas and information.

• Copyrights – Protect the expression of ideas.

• Trademarks – Protect against confusion as to source or origin of goods or services.

• Domain Names – Your address on the Internet.

Examples• Trademarks

COCA-COLA HP PFIZERINTEL INSIDE “Swoosh”

• Service MarksGOOGLEBANK OF AMERICA

• Trade DressCoca-Cola BottleMcDonald’s “Golden Arches”

Restaurants

Patent Examples• Trade Secrets

Coca-Cola FormulaSearch engine algorithms

• CopyrightsMovies, Websites, Paintings, Books, Photos, Articles, Computer Programs, Music

• PatentsFood Processor No. 4,541,573

Cheesecake Wedge No. D300,380Compounds No. 3,790,670

Who owns IP (initially)?

• Patents – Inventors• Trade Secrets & Know How – Creators and controllers• Copyrights – Authors• Trademarks – User of the mark• Domain Name – Registrant

How long does protection exist?

• Patents – Utility – 20 years from filing date• Trade Secrets & Know How – As long as it remains secret• Copyrights – Life of Author + 70 years or 95 years from creation• Trademarks – For as long as the mark is in use• Domain Names – For as long as registration is maintained

Where to Begin Vision: Make better vegans

Goals: Provide accessible resources for new vegans

Objectives: Online resources, tailored/customizable resources by the end of 2014; subscription model by 2015

Strategies: Develop or identify web-platform that can fit needs of customization and resource management; Develop and solidify branding; identify various partnership groups

Tactics: On-line advertising or endorsement of a brand through celebrities; put together resources from respected nutritionists, vegan athletes and vegan celebrities.

Metrics: page views, subscriptions

Small/Mid-Size Business New Business Few or No Employees Intellectual Property/Trade Secrets Protecting Your Inventions Limited Budget/Limited Resources

Small/Mid-Size Business Independent Contractors Agreements

– California and the “Work for Hire” Provision

Employment Agreements– Intellectual Property Assignments– Leaving the Company Issues

Your Business Considerations– Marriage In, Divorce Out

Corporate Disclosure Process

Corporate/Intellectual Property Committee Meets regularly Reviews new/proposed intellectual property,

employment and contractor decisions Reviews invention disclosures Reviews current and long term IP budget Tracks decisions

Corporate/IP Committee Management, Sales, Patent Counsel, Technical Meets Regularly Reviews potentially patentable developments Strategizes as to importance, resources, viable

prosecution routes, enforceability, freedom to practice

Document inventions, disclosures, trade shows and meetings, presentations, sales pitches and samples

Agreements and contracts

Review Contracts and Agreements

Employee agreements Intellectual property agreements Independent contractor agreements Assignments to company License Agreements

Other Information

Offered for Sale? Sampled? Upcoming/Past Meeting/Tradeshow? Collaboration? Date of completion of form Signatures of technical team & witness

Invention Disclosure System

Form based Web based (good for multiple locations) Individual number assigned to each one Easily tracked Easily referred to in minutes Key words, grouping inventors

Classification of Information Patent application Continuing patent application Defensive publication Trademark Copyright Trade secret

Trade Secrets Designed to keep some processes or materials

from the public long term Saves money with respect to IP budget Employee turnover Proof of “leak” – usually circumstantial Proof that company protected secret (normal

business practices) AIA now encourages use of trade secrets

Provisional Patent Application Not Examined by USPTO Not Published Allows Applicant to use “Patent Pending” Only pending for 1 year from filing Does not count toward 20-year patent term

Utility Patent Application Considered “typical” patent application Background, Detailed Description, Examples, Claims Best Mode Necessary Assigned to Technology Group & Examiner Published 18 months after filing

The Inventor(s) Should you call them “Inventors”? Consider “Technical Team” or “Technical Contributors” Order isn’t significant with respect to USPTO or foreign

patent offices Home addresses, good contact information Alternate E-mail addresses Itemize Employment Agreements, consider keeping

with disclosures

Inventorship “Who are the inventors?” What is on the disclosure form? Incorrect inventorship = can be corrected, can result

in invalidating issued patent (court looks at intent) Inventorship is also linked to ownership of the patent

– each owner has an undivided interest in the patent – no matter the % contribution, unless otherwise modified between the patent owners.

Community Property State? Transfer of Ownership?

Review Contracts and Agreements

Employee agreements Intellectual property agreements Independent contractor agreements Assignments to company License Agreements

Inventorship Inventorship v. Peer Review Inventors for Joint Agreements Company President?? Group leaders? Inventor who has left the company? Is this person

listed on the company disclosure?

Proving Inventorship

Laboratory Notebooks Meeting/collaboration notes E-mails/memos Computer files Publications/journals Abstracts/meeting presentations

The Idea or Concept• You do not need to reduce it to practice• You should not publicize it – publish, local or national meeting,

internet• You should report it to the right place at the Company or University

and use the right format/form • You should document your work, who you worked with and who

made what contributions to the concept or invention• If you know of any journal articles, work or patents that are close or

in the same field as what you are doing – keep a list and submit it with your invention disclosure

What a Company or University Needs in Place

• Policy Framework• Intellectual Property Committee that meets regularly• Online, web-based system for inputting and date-stamping invention

disclosures• Internal or External system for tracking submitted and published

articles, internet publications, presentations and meetings attended by professors and graduate students

• Regular training and “IP Alerts”

Thank you!! Sandra Thompson, PhD, Esq. Buchalter Nemer sthompson@buchalter.com (949)224-6282 (direct) (949)224-6203 (fax) www.Buchalter.com