From an Entrepreneur perspective

October 7, 2013

Intellectual Property (IP)

Hieu (Tony) D. NgoAssociate Technical FellowIntellectual Property ManagementThe Boeing Company

Wayne R. HoweAssociate Technical FellowIntellectual Property ManagementThe Boeing Company

• Wayne R. Howe – Associate Technical Fellow in Network and Systems. Wayne leads Intellectual Property Strategy and Protection for the Boeing Network & Space Systems (N&SS) business with Boeing Defense, Space and Security (BDS). Wayne has over 20 years of significant accomplishments in IP, strategy, cyber, network and communications technology architecture, R&D, specifications, requirements, architecture, performance, strategic planning, business development, and patents. Wayne holds a Doctor of Jurisprudence (Law), an MBA, MS in Computer and Information Science, M.A. in Electrical Engineering, and a B.S. in Electrical Engineering

• Hieu (Tony) D. Ngo - Associate Technical Fellow in System Engineering. Tony leads Intellectual Property Management Policy, Protection, and Planning Integration. Tony holds a Doctor of Jurisprudence (Law), an MBA, and a B.S. in Engineering. Tony is licensed to practice law in the State of California and is also registered to practice before the U.S. Patent and Trademark Office (USPTO).

Innovation = Business + Invention

Value of strong IP protection will be worth much more than the cost of obtaining it.

Innovation Challenge’s Journey

You

Team

Mentor

Advisory / EvaluationCommittee

Award Event / Winner Announced

Supplier / 3rd Party

Why IP Is Important?

• IP has VALUE

• IP provides a COMPETITIVE ADVANTAGE

• Misuse or lack of awareness of IP can put you at RISK

IP create a barriers of entry by competitors

• VALUE Google paid $12.5 B for Motorola Smartphone patents

• COMPETITIVE Numerous high profile trade ADVANTAGE secret thefts over past 5 years

“Chinese company uses leaked photos to copy, patent

iPhone 5 design” (http://bgr.com/2012/09/05/iphone-5-design- copied-patented-goophone-i5)

• RISK Huge Jury Verdict against Samsung

What If You Don’t Protect Your IP?

Without IP Protection, Competitors Win

Top 10 Largest Initial Adjudicated Damages Awards (‘05 – ’13)

Source: 2013 Patent Litigation Study, PWC.

What is Intellectual Property?

• A product of the mind or intellect, in a concrete or abstract form, in which one can assert ownership rights.

• Each of these types of IP have unique requirements and offer different legal protections.

Trademarks Patents Trade Secrets Copyrights

Copyright Patent

-Software

-Books

-Photos

-Music / Recordings

-Motion Pictures

-Chemical compositions, Electrical, and Mechanical products and processes

-Biotechnology

-Business processes and methods

-Software – Algorithms Executing on computer

Trademark

-Words, Symbol, Slogans used to identify & distinguish one’s products or services

-Valuable information that is not publicly known

(Technical, financial, marketing, formulas, know-how, etc.)

Trade Secret

Range of IP Protection Approaches

Product

Methods, Processes, or Techniques

Flow Chart, SourceCodes

Name / Graphics / Logos

Algorithms

Business Plan

Marketing / Product Launch Time Table

Designs, Drawings, etc.

IllustrationTrade Secret

Trade Secret

Patent

Copyright

Patent

Trade Secret

TradeSecret

Trade Secret

Trademark

Copyright

Copyright

Copyright

Trade Secret

Copyright

CopyrightPatent

What’s Trademarks?

Trademarks are words, symbols or slogans used to identify & distinguish one’s products or services from others

Minimize confusions

APPLE

How To Obtain a Trademark?

• Simply using a name or symbol as an identifier for your products or services Limited to geographic area in which the mark is used

• Register your Trademark with the U.S. Patent and Trademark office Legal presumption of ownership

Exclusive right to use the mark nationwide

Prerequisite to brining an action concerning the trademark’s in federal court.

Recommendation: Early Registration

What Is Trade Secret?

• Any information that derives independent economic value, actual or potential

• Not being generallyknown or readilyAscertainable by proper mean

• Others person who can obtain• economic value from its• disclosure or use

Every company has trade secrets

Example of Trade Secrets

• Designs• Drawings• Specifications• Patterns• Plans• Compilations• Program devices

• Formulas

• Prototypes• Methods, Techniques,

Processes, and Procedures

• Flow Charts• Marketing timetables• Customers / Suppliers

List• …

Trade Secret protection is extremely valuable

Protecting Trade Secrets

•Take reasonable measures

of efforts to keep the information

secret

Varies with the nature of the information andother circumstances

• E-mails and Mobile Devices Need to have policy in place

• Employee and Consultant Confidentiality Agreement

• Investor Non-Disclosure Agreement.

• Document Proper Marking

• Access (physical or electronic) Access Control Policy

Protection Trade Secrets - Examples

What Is Copyright?

• Protect original work of authorship

• Examples:o Protectable: literary works,

a/v works, computer programs

o NOT Protectable: titles, slogans,

ideas, processes

Protect creative expression of ideas, not the ideas

©

• Are critical for high-tech companies that are developing software and multimedia

• Any business that has a presence on the Internet will want to protect the company’so Websiteo Photographo Musico Writingo Artwork

Copyright

A copyright automatically comes into existence when you create a work of authorship and fix it in a tangible medium

Rights in Copyright

• Exclusive rights to (or authorize others to)o Dictate who can copyo Copy - Reproduce a worko Modify or prepare a derivative worko Distribute copieso Publicly perform or display a work

• Exceptionso Criticismo Commentso News reportingo Teachingo Research

How To Protect Your Copyright

• Documents Copyright Legends

• Software Copyright Legends, Banner, or incorporating a “tell” into the software

• Respect the rights of othero Content and software off the Interneto Open Source Software

Having the means to prove ownership

How To Obtain a Copyright?

• Filing with the U.S. Copyright Office provides some important additional benefitso Statutory damages, Attorney fees

• Relatively inexpensive to registero $65.00 / applicationo $35.00 / application if file on-line

Copyright © XXXX Boeing.  All rights reserved.

Patent

• A patent is ao grant issued by the U.S.

Patent and Trademark Office (USPTO)

o giving inventors the right to exclude all others from making, using, or selling their inventions

o within the United States, its territories, and possessions

o for up to 20 years.

• Utility Patent Protect the function or “utility” of the invention

• Design Patent Protects the “ornamental design” or

appearance

• Plant Patent Protects distinct and new varieties of plants

Types of Patents

Patent

• A new, useful and non-obvious invention:

Machine

Composition of matter

Manufacturing Process

Business Method

• A useful improvement of any of these

How To Obtain A Patent?

• File a patent application with the USPTO before

• Cost is high - $10-15K / patent plus maintenance fees

Protecting Your Patent

• File prior to any discussions with anyone

o Provisional Patent Application - $260.00

o Non-Provisional Application - $1,600.00 + other fees

• Limit Public Disclosure

o Printed Publication

o Sale or Offer for Sale

*** Foreign Countries: Absolute Novelty – No public disclosure ***

• Acquire proper assignment of Invention

IP Ownership

Absent an Agreement to the contrary:

The creator of IP is its owner

Jointly created IP is jointly owned

Collaboration: Properly protect your existing IP with a Non-

Disclosure Agreement (NDA), and any newly created IP with a

Teaming Agreement

Summary (IP Rights Action Chart)

Last Thoughts

• Consider which types of intellectual property make sense in the context of your business, products, and/or services

• Intellectual Property Strategy:o Quality patentso Strong trademarko Protected trade secrets

• Defining and understanding your intellectual property strategy help you make better decisions and avoid pitfalls

A strong IP portfolio provides the company with an impression

of strength

Resources

U.S. Patent & Trademark Office (USPTO)…www.uspto.gov

U.S. Copyright Office…www.copyright.gov

CA Civil Code (trade secrets) 3426-3426.11…www.leginfo.ca.gov

State and Local Bar Associations

CA State Bar Association…www.calbar.ca.gov

LA Bar Association…www.lacba.org

OC Bar Association…www.ocbar.org

Libraries

Long Beach Law Library (West Ocean Blvd, Long Beach)

LA Law Library (1st Street, LA)

OC County Law Library (North Flower Street, Santa Ana)

Good Luck…