© Mirick, OConnell, DeMallie & Lougee, LLP, 2010. M ARLBOROUGH B USINESS I NNOVATION S UMMIT Showcasing Marlborough as a Center for Key Industry Clusters.

© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.

MARLBOROUGH BUSINESS INNOVATION SUMMITMARLBOROUGH BUSINESS INNOVATION SUMMIT

Showcasing Marlborough as a Center for Key Industry Clusters and Innovation Capacity

Co-sponsored by:

Presented by:

Roger P. [email protected]

UNDERSTANDING THE IP CYCLE: MAXIMIZING RETURN WHILE

MINIMIZING COST

800.922.8337www.mirickoconnell.com

WORCESTER | WESTBOROUGH | BOSTONMIRICK, O’CONNELL, DEMALLIE & LOUGEE, LLP

MARLBOROUGH BUSINESS INNOVATION SUMMIT


PURPOSE OF AN IP STRATEGY Identify, develop and protect IP that adds value to your

business

Identify and avoid infringing IP owned by third-parties that may obstruct your business

Leverage Your IP through collaboration, which may include joint development projects, manufacturing, distribution or other strategies to commercialize IP

Enforce IP strategically, when necessary, to achieve your business purposes


KEYS FOR IMPLEMENTING AN IP STRATEGY

The IP strategy must reflect and implement your Business Strategy

Develop an IP strategy: define your goals and know the level of patent, trademark and copyright protection you need at each step

Obtain information: get your attorney to give you a clear overview of the filing process, waiting periods and costs involved in obtaining and maintaining IP protection


FORMS OF INTELLECTUAL PROPERTY PROTECTION

Patents

Trademarks

Copyrights

Trade Secrets


Patent: Keep Secret Until Filing; Term Limited to 14 (Design), 17 or 20 Years

Trademark: Use In Trade (Or ITU); Renew Indefinitely Unless Unused

Copyright: Author Has It When Fixed; Notice, Registration; Terms: Various

Trade Secret: Lost If Disclosed or Discovered Independently, Indefinite Term


IP CYCLE


FOUNDATIONS OF IP: INTERNAL SECURITY Create appropriate internal policies and procedures

Secure signed agreements from key employees and vendors including confidentiality, ownership of inventions and covenants not to compete

Maintain appropriate security in the workplace, including in company computers

Identify IP as it is created, and then designate and secure it

Conduct periodic audits to assure compliance


IP AND COLLABORATIONS Determine the scope of access to the other party’s IP

needed for the joint project

Identify the parties’ respective relevant IP at the start of the joint project

Agree on the disposition of the IP developed jointly during the project

• Who owns it? Who pays for getting IP protection?

• Who can or must be involved in enforcement?

• Who is the inventor (patents) or author (copyright)?


IP CYCLE


THE PATENT DEAL:A limited period of exclusive rights as defined by the claims

In Exchange For

An enabling description of comparable scope of any new & useful [& non-obvious] “process, machine, manufacture, or composition of matter, or any new & useful [& non-obvious] improvement thereof”


IP CYCLE


BASIC PATENT ISSUES

Is It Patentable & Useful? 35 U.S.C. §101

Is It New? 35 U.S.C. §102

Is It Non-Obvious? 35 U.S.C. §103

As Of When? Priority Date

Is It Described & Enabled? 35 U.S.C. §112

Who Invented It? Who Owns It?


HOW LONG DOES IT TAKE TO GET

A U.S. UTILITY PATENT?

Source:D. Crouch, Patently-O, 15 February 2007


PROS & CONS OF PATENTS Patents prevent others from using the

patented invention or design for the duration of the patent

Patents have a limited duration of 17 to 20 years for a device or method, and 14 years for a design

Patents often have substantial value and may increase the value of the owner’s business and help attract investment

The application process is slow and expensive, and the application may be narrowed or rejected

Patents may provide a valuable bargaining chip to negotiate licenses or cross-licenses with other parties

Other patents may block the right to practice the patent, or may limit the scope of use

Notice of a patents will usually deter other parties from infringing the patented technology

Other parties may seek to “design around” the patent, or may attack it by applying for reexamination

Federal Courts enforce patent rights Patent litigation is complex and expensive

Patent applications, when published, disclose the invention


PROS & CONS OF TRADEMARKS Trademarks can become protectable

without registration by use that is sufficient to establish “secondary meaning” (i.e., consumer recognition demonstrated by consumer surveys, etc.)

Proof of secondary meaning for common law trademarks is difficult and expensive

Trademark registration creates presumptions that the registrant owns the mark and that the mark has secondary meaning

The registration process, although generally quite efficient, still involves time and expense

Trademarks can protect a variety of distinctive features including names, logos, distinctive packaging and decorative features on the product

The “strength” of the mark can vary depending on the degree of distinctiveness within a particular field


IP CYCLE


KEYS FOR IMPLEMENTING AN IP STRATEGY Adapt your filing strategy to your real business

needs: do not patent everything and everywhere. Be selective and determine which ideas and markets are worth protection

Revise your patent portfolio continuously: filter out patents with no business perspective, either for your own exploitation or for licensing


PROTECTING IP IN THE GLOBAL ECONOMY IP rights are usually limited to the country where they are

obtained

Treaties make it possible to obtain IP rights in other countries on a reasonably efficient basis, but at some expense

The IP strategy should include identifying other countries where appropriate protection will promote the business plan


IP CYCLE


HOT TOPICS IN IP ENFORCEMENT When to sue: A demand letter may give the other party

the right to seek declaratory judgment in an inconvenient forum

Where to sue: In addition to the factor of geographic convenience, some federal courts have special rules to manage patent cases

How to respond to a patent that blocks your business plan: Reexamination is an increasingly attractive alternative


REMEDIES FOR PATENT INFRINGEMENT Actual damages, which may include either the patent

owner’s lost profits, disgorgement of the infringer’s profits, or a “reasonable royalty” based on a “hypothetical negotiation”

Injunctions upon proof of irreparable harm

Treble damages and attorneys fees in case of willful infringement.


REMEDIES FOR TRADEMARK INFRINGEMENT Actual damages, which may include trademark owner’s

lost profits or disgorgement of infringer’s profits

Injunctions upon proof of irreparable harm,

Treble damages and attorneys’ fees in “exceptional cases”

Statutory damages and/or criminal penalties in case of counterfeiting a registered trademark


IP CYCLE


IP LICENSING Licensor agrees to permit activities by licensee that

would otherwise be infringing

May be limited to a geographic area and/or a field of use of the IP

Who can or must be involved in enforcement?

Revenue stream

• Upfront and milestone payments

• Royalties

Audit & police the licensing agreement


IP CYCLE


KEYS FOR IMPLEMENTING AN IP STRATEGY Start a technology and competitor watch process:

use cost-free patent information and other sources (e.g. scientific publications, trade journals) both to inspire yourself and to identify potential infringers as soon as possible

Identify and cultivate potential partners and licensees who may collaborate to realize the value of your IP


IP CYCLE


KEYS FOR IMPLEMENTING AN IP STRATEGY Communicate pro-actively: communicating the

protection of your IP is a cost-efficient mean to reduce the potential risk of loss of trademark rights or infringement

Keep in touch with your licensee: regular contact and meetings provide you with information on your licensee’s activities and thus can prevent potential problems


IP CYCLE


BRIAN M. [email protected]

ROGER P. [email protected]

© Mirick, OConnell, DeMallie & Lougee, LLP, 2010. M ARLBOROUGH B USINESS I NNOVATION S UMMIT Showcasing Marlborough as a Center for Key Industry Clusters.

Documents

demallie lougee

ip c ycle slide

ip strategy

ip protection

partys ip

invention slide

compliance slide

f oundations of ip