intellectual property law 101 for small businesses featuring armstrong teasdale attorneys: jennifer...

© 2014 Armstrong Teasdale

LLP


LLP

Intellectual Property Law 101

For Small Businesses

Jennifer Hoekel, Nicholas Clifford,

and Jeff Schultz

Presented By


LLP

What is Intellectual Property (“IP”)?

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Creations of the

mind

Inventions

Literary works

Artistic works

Designs

Symbols

Names/images used

in commerce

http://www.google.com/url?sa=i&rct=j&q=&esrc=s&frm=1&source=images&cd=&cad=rja&uact=8&docid=h5PdnnuerwyPnM&tbnid=BdRkhgBT0aCxoM:&ved=0CAUQjRw&url=http://www2.le.ac.uk/offices/ebd/commercialisation/ip&ei=2BnNU7nxE8SlyAT8jYGwCA&bvm=bv.71198958,d.aWw&psig=AFQjCNEzqzBzxNexPzoXMlYQU8m6WXSZ5g&ust=1406036648561280

http://www.google.com/url?sa=i&rct=j&q=&esrc=s&frm=1&source=images&cd=&cad=rja&uact=8&docid=h5PdnnuerwyPnM&tbnid=BdRkhgBT0aCxoM:&ved=0CAUQjRw&url=http://www2.le.ac.uk/offices/ebd/commercialisation/ip&ei=2BnNU7nxE8SlyAT8jYGwCA&bvm=bv.71198958,d.aWw&psig=AFQjCNEzqzBzxNexPzoXMlYQU8m6WXSZ5g&ust=1406036648561280


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Why is IP Important?

IP Rights Promote and Protect Innovation

• Incentivizes economic growth

IP Assets Are A Company’s Most Valuable Property

• Must be diligently protected or the rights may be lost.

IP Is Protected Against Unauthorized Use by Law

• Legal rights are based in the U.S. Constitution

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Types of IP Protection

Trade Secrets• Business technologies or competitive information with economic value

that is protected against disclosure to third parties

Patents• Exclusive property right granted to an inventor in exchange for a detailed

disclosure of the invention

Trademarks/Trade Dress• A name, logo, design or expression used to identify or distinguish

products or services of a particular source from products or services sold

by others

Copyrights• Protection for the tangible form of expression for original works of

authorship

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IP Rights

Protection

Enforcement

Groundbreaking

Products

Advances in

Technology

Innovative Solutions to

Problems

IP Strategy


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Confidential Information -versus-

Trade Secret Information

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Trade Secrets-versus-

Patents

Trade Secrets

Patents(secret) (publicly

available)

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What is Confidential Information?

Information, documents, communications provided to

or made in confidence with another.

Business examples:

• Customer lists

• Pricing

• Technical information

• Business strategy

• Contracts

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Confidentiality

Usually based on a contractual obligation.

• Non-disclosure agreement

• Employment agreement

• Settlement agreement

• Contracts

Can be based upon status.

• Employee

• Trustee

• Officer/director

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What Do You Need to Do?

Protect Your Company’s Confidential

Information/Documents

• Handle in accordance with contractual obligations

• Keep secure

• Do not make unnecessary copies

• Provide only to employees who need access

• Do not provide to non-employee personnel

− Exception: is there a non-disclosure agreement in

place?

• Avoid unnecessary electronic communications

• Pay close attention to email recipients

• Place CONFIDENTIAL on “Re” line and in body

• When in doubt: ASK! 10


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What Do You Need to Do?

Protect Confidential Information Received from

Others

• Certain information/documents the company receives

from business partners which must be treated as

confidential by agreement

• Under some agreements, confidential information

must be designated with a “CONFIDENTIAL” stamp

• Must treat with the same protections as your own

confidential information

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Consequences

What can happen if there is a breach of

confidentiality?

• Loss of its confidentiality (i.e. it becomes public)

• Breach of contract

• Lawsuit: attorneys’ fees, damages, injunction

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What Is a Trade Secret?

General requirements:

• Information (including formulas, patterns,

compilations, programs, devices, methods,

techniques, or processes) that is not generally known

or readily ascertainable

• Has economic value from being secret

• Is the subject of reasonable

efforts to maintain its secrecy

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Examples

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Possible Trade Secrets?

Business Information

• Examples?

Technical Information

• Examples?

R&D

• Examples?

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Is It Really Secret?

Is the information known outside your business?

Who knows the information in your business?

What steps are taken to guard its secrecy?

What is its value to your business and to others?

What did your business do to develop it? Efforts?

$$?

How easily could others acquire or duplicate it?

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What Do You Need To Do?

Establish and maintain reasonable procedures to

keep secrecy

Examples

• Limits on personnel who have access

• Logs

• Secured access (locks, security, cameras, etc.)

• Restricted copying

• Employment agreements

• Non-disclosure agreements17


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Consequences

What can happen if there is a failure to maintain

secrecy?

• Loss of trade secret status (i.e. it becomes public)

− No right to prevent competitors from using

• Trade secret misappropriation

• Lawsuit: attorneys’ fees, damages, injunction

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PatentsUtility Patents: Design

Patents

“How it works” “How it

looks”


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What Is a Patent?

A right to exclude others from:

• Making

• Using

• Offering for sale or selling

• Importing

A patent is a negative right to control others from

using your invention.

Misconception - A patent does not grant the

affirmative right to use your own product.

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Types of Patents & What They

Protect

Utility patents (most common)

• Protection for

− Machines/devices

− Processes and Article of Manufacture

− Compositions of Matter (including Improvements)

− Business Methods

Design patents

• Protection for the visual/ornamental characteristics of

an article

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Patents - What They Give

Expiration

• Utility patents – 20 years from priority date

• Design patents – 15 years from date of issuance

Legal Monopoly – Market Control

Royalties – Bargaining Power

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Patents - Requirements

Invention:

• Novel (i.e. new)

• Useful (i.e., useful purpose that it actually performs)

• Non-obvious

File Promptly

• First-to-file v. first-to-invent

• Provisional v. non-provisional

Costs - $25K to $40K in fees and filing costs, plus

maintenance fees

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No Patent If …

1 year or more before you file your application

(1) the same invention was patented or described in a

printed publication available anywhere in the world;

(2) the same invention was in public use in the U.S.;

(3) the same invention was on sale in the U.S.

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Patents - Process

Long Process

• 3+ years for utility patents; 1½ years for design

patents

Pending U.S. Applications Secret

• 18 Months after Filing, Published

• No Way to Know What Competitors Have Filed Until

Publication

International Filings

• Must File Multiple Applications

• Treaties (Paris Convention, PCT, EPC)

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Anatomy of a Patent

Title of the invention

Inventor

Assignee/owner

Application number and date

Related prior application

number and date

US Patent Number

Prior art references

Abstract

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Anatomy of a Patent

Claims

Specification:

- Written description

of invention

- Often includes discussion

of prior art

- Drawings

- Preferred embodiment(s)

- Must be enabling to persons

of ordinary skill in the art of the

invention

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Employment Agreements

• Assignment of inventions to employer

Invention Disclosures (see sample)

• Description of invention

• Business analysis

• Prior Art

Competitor monitoring/patent watch

Freedom to operate searches and clearances

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Consequences

No invention disclosure program?

• You may not be learning about patentable innovations

Failure to file for patents in timely manner

• Loss of potential patent rights

No organized competitive watch program?

• Missed opportunity for key business intelligence

• Missed opportunity for avoiding infringement

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Trademarks

A distinctive name, word, phrase, logo, symbol,

design, image, or a combination

Identifies source

Unlimited duration

Applied for at the USPTO


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Should register with the United States Patent and

Trademark Office

• Nationwide Protection

• Treble Damages

• Potential Recovery of Attorney Fees

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Copyrights

Gives the creator of an original work exclusive rights

for a limited time (decades).

Registered at the Library of Congress

Copyright exists as soon as the work is created

• There is no strict need to register, but you have fewer rights


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Registration

• What does it get you?

− the ability to file suit

− presumption of copyright validity

• If registered within 3 months of publication, will allow

statutory damages and attorney fees

− $750 - $30,000 per work

− Willful infringement – up to $150,000 per work

• Requires three things to be submitted to the Copyright

Office:

− (1) application, (2) fee, (3) copy or representation of the work

• Current fee for online registrations: $35

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IP Strategies

Protect what is important to the company

Protect what is important to your competitor

Keep private what can’t be easily reversed

engineered

Use non-disclosure agreements with vendors

Continue to periodically assess the IP portfolio

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Questions?

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Contacts

Jeff Schultz

PartnerArmstrong Teasdale

LLP314.259.4732 [email protected]

om

www.armstrongteasdale.c

om

Nicholas Clifford,

Jr.



m

www.armstrongteasdale.co

m

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Jennifer Hoekel



www.armstrongteasdale.co

m

Webinar CLE Confirmation Code: SHC1012

intellectual property law 101 for small businesses featuring armstrong teasdale attorneys: jennifer...

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