ACC Europe’s 2007 Corporate Counsel University

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107 Protecting Trademarks, Patents & Know-How

Jonathan Armstrong Technology Lawyer Eversheds

Joren de Wachter General Counsel FRS Global

Reini van Leeuwen Managing Counsel IP Shell International B.V.

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Protecting technology developments

Reini van LeeuwenACC Europe Corporate Counsel UniversityAmsterdam 4th -6th March 2007

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IP RIGHTS-VISUALISATION

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Patents

What are they

Issues in technology protection

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What is a patent

A right to prevent others from practicing (I.e. making,using and selling) the protected invention

Granted by a national or international authority

The right is limited :

Geographically to those countries where the patent is filed; and

In time (maximum term 20 years, subject to payment of annualrenewal fees)

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Patentability requirementsNOVELTY - not disclosed in “PRIOR ART”

INVENTIVITY - not obvious over “PRIOR ART”

UTILITY - Susceptible of Industrial application

State of the art (“Prior Art”) shall be held to comprise everything madeavailable to the public by means of a written or oral description, byuse, or in any other way, before the date of filing of the patentapplication

“USE” is ANY Public Use, including market trials , or testing byoutside parties – unless under secrecy

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What is patentable

Process (including business methods/software linked to a physicalprocess or machine)

Machine

Manufacture

Composition of Matter

Improvements to any of the above

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Why bother with patents

Exclusivity - to prevent third parties from applying the

invention

Freedom of Action - to prevent competitors filing patent

applications which could block own activities

Licensing - to support possible licensing

negotiations/contracts

Sales Aid - to show one is active in a certain area

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Secrecy vs. publication

Objective Means Advantage/Disadvantage

Publish in Open Competition free to use; noLiterature proprietary rights; low cost

Freedom to Use Apply for a Proprietary rights andPatent freedom; competition

informed early and costly iffiled widely

Protection

Keep Secret Independent discovery bycompetition might blockown use; leakage risk

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Protecting know-how

Joren De Wachter

ACC Europe Corporate Counsel University

Amsterdam 4th -6th March 2007

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Protecting Know-HowWhat is “know-how”?

How can it be protected?

Case study

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Protecting Know-HowWhat is “know-how”?

Products

Services

Knowledge

People

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Protecting Know-HowHow to protect Know-How?

Established IPR’sCopyrightGeographical designation(Industrial) Design rightsSemiconductor designPatents (Software patents?)Personality rightsTrademarksService marksDatabase rightsInternet domain name

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Protecting Know-HowHow to protect Know-How?

Less established IPR’sSoftware PatentsInternet domain namesTrade namesKnowledgeIdeasSoftware AlgorithmLogic

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Protecting Know-HowHow to protect know-how?

Misnamed IPR’s:Competition law (distribution, agency, partnerships,etc...)

Employment law

Contract law (customers, suppliers)

Confidentiality

Governance and compliance

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Protecting Know-HowCase Study

Software

Core engine + local parameters

Developed by two separate entities – need eachother

Parallel development of competing, similarproduct, using know-how

Dispute on ownership

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Protecting Know-HowCase Study

Solution: a new agreement

Underlying issue: market development

Underlying issue: product

Underlying issue: people

The real issue

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Protecting Know-HowSome guidance:

Know your products

Know your markets

Know your people

Learn the law

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Protecting Your Brand in the Online World

Jonathan Armstrong

ACC

Europe Corporate Counsel University

Amsterdam

4th – 6th March 2007

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Branding

• The marketing dilemma

• Internationalisation

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Failed brands

• Colon Plus liquid detergent (Spain)

• Green Piles lawn fertilizer (Japan)

• Homo Sausage beef jerky (Japan)

• Krapp toilet paper (Sweden)

• Last Climax paper tissues (Japan)

• Mucos soft drink (Japan)

• Pansy men's underwear (China)

• Pipi orangeade (Yugoslovia)

• Plopp chocolate bar (Sweden)

• Shitto hot spiced pepper sauce (Ghana)

• Skinababe baby cleanser (Japan)

• Zit lemon-lime soft drink (Greece)

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Internationalisation

“One jail term is worth a lot

of compliance officers.

And it doesn’t require you

to create a whole new

bureaucracy. It’s why I

like what we’re doing”

Eliot Spitzer

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Example: Helpline issues

• ‘Mandated’ by SOX

• Privacy cases in France

• Works Council issues in

Germany

• Whistleblower protection in

UK

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Threats: P(h)ishing

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Threats: Phishing

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Phishing

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Security Breaches

• Large scale awareness in

Europe - little legislation

• Mandatory reporting

legislation in US +

willingness to prosecute

• Class actions

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Threats: Reputational Risk

• ‘Billboard for the world’

• Reputation = biggest asset

• Direct impact on share

price

• Concerned shareholders

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Reputation: Website Attacks

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Reputation: Hijacking

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Reputation: Cybersmearing

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Reputation: Paid for Search Engines

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Reputation: Paid for Search Engines

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Reputation: Paid for Search Engines

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New dangers - Blogs

• only 0.1% of players

affected

• Shares dropped 4.4%

• $2bn stock value wiped out

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Counter-measures

Don’t do nothing

Access agreements on sites

Employment policies

Third party relationships

Look at your own presence

Domain and chatroom watch-

outs

More details are on page 88

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The Future?

• The wireless world

– BlackBerries

– RFID

– Wireless LANs

– Wi-Max

• Trust

– Phising will remain an issue

– Shared servers

• More globalisation

• Threats from Russia, China

• More private actions

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