IP=Increased Profits How to Make Your IP Work For You Rachel Lerner COSE Fall 2006.

IP=Increased ProfitsIP=Increased ProfitsHow to Make Your IP How to Make Your IP

Work For YouWork For You

Rachel LernerRachel LernerCOSECOSE

Fall 2006Fall 2006

IP…….Who Knew?IP…….Who Knew?

Intellectual Property (“IP”) is often Intellectual Property (“IP”) is often one of a company’s most valuable one of a company’s most valuable assetsassets

--Builds brand identity--Builds brand identity

-Fosters consumer confidence-Fosters consumer confidence

-Distinguishes you from competitors-Distinguishes you from competitors

-Protects Company investments-Protects Company investments

What Is Intellectual What Is Intellectual Property?Property?

IP is intangible property that is the IP is intangible property that is the result of result of creativitycreativity such as – such as –

-trademark-trademark

-copyright -copyright

-patents-patents

-trade secrets-trade secrets

What is a Trademark?What is a Trademark?

A trademark is a word, symbol, A trademark is a word, symbol, design, or combination of a word and design, or combination of a word and design which serves to identify and design which serves to identify and distinguish the goods or services of distinguish the goods or services of one source from those of another.one source from those of another.

Can be a sound (Harley Davidson)Can be a sound (Harley Davidson) Smell (Yarn)Smell (Yarn) Color (insulation)Color (insulation)

Examples of TrademarksExamples of Trademarks

Trademarks: What They DoTrademarks: What They Do

Identify and designate the source and origin Identify and designate the source and origin of products or servicesof products or services

Represent a particular standard of qualityRepresent a particular standard of quality Distinguish products and services bearing a Distinguish products and services bearing a

company’s marks from those of other company’s marks from those of other companiescompanies

Symbolizes the GOODWILL of a company Symbolizes the GOODWILL of a company Protects a company’s investment in the Protects a company’s investment in the

development and promotion of its productsdevelopment and promotion of its products Ensures consumers who want a company’s Ensures consumers who want a company’s

products get that company’s productsproducts get that company’s products

TM AgreementsTM Agreements

TM License In; Use of 3TM License In; Use of 3rdrd party mark party mark TM License Out; 3TM License Out; 3rdrd party uses your party uses your

markmark Advertising/Marketing AgreementAdvertising/Marketing Agreement Co-Brand AgreementCo-Brand Agreement Partnership AgreementPartnership Agreement Joint Development AgreementJoint Development Agreement

What Is Copyright?What Is Copyright?

Original work of authorshipOriginal work of authorship

Fixed in a tangible medium of Fixed in a tangible medium of expression expression Not idea onlyNot idea only

What Works AreWhat Works AreProtected Not ProtectedProtected Not Protected

Literary WorksLiterary Works Musical Musical

CompositionsCompositions Sound RecordingsSound Recordings Visual ArtsVisual Arts Audiovisual WorksAudiovisual Works etc.etc.

Unfixed works; Unfixed works; ideasideas

Titles, names, short Titles, names, short phrases, slogansphrases, slogans

Words with no Words with no original authorshiporiginal authorship

etc.etc.

Internet and Wireless Internet and Wireless ContentContent

CONFIDENTIAL AND PROPRIETARY INFORMATION OF AmericanGreetings.co m 2003This work contains information that is confidential, privileged and proprietary information to AmericanGreetings.com. Removal o f this notice, and use, examination,

disclosure, transfer, and copying of all or part of this work ar e prohibited, except with the express written consent of America nGreetings.com

Copyright Owner Has Copyright Owner Has Exclusive Rights Exclusive Rights “Bundle of Sticks”“Bundle of Sticks”

To reproduce the workTo reproduce the work To prepare derivative worksTo prepare derivative works To distribute copies of the workTo distribute copies of the work To perform the work publiclyTo perform the work publicly To display the work publiclyTo display the work publicly To perform sound recordings To perform sound recordings

publicly by publicly by digital audio digital audio transmissiontransmission

Copyright AGREEMENTSCopyright AGREEMENTS

Independent Contractor Independent Contractor Content LicenseContent License Content OwnershipContent Ownership AdvertisingAdvertising SponsorshipSponsorship Web DevelopmentWeb Development Software DevelopmentSoftware Development

PATENTSPATENTS

The exclusive right of a creator to The exclusive right of a creator to manufacture, use, license or sell an manufacture, use, license or sell an invention for a number of years.invention for a number of years.

Granted for a process, act or method Granted for a process, act or method that is new, useful and non-obviousthat is new, useful and non-obvious

Patent rights may be licensed, sold Patent rights may be licensed, sold or assignedor assigned

Patent RequirementsPatent Requirements

Applicant must satisfy at least 4 Applicant must satisfy at least 4 conditions for US PTOconditions for US PTO1. patentable subject matter1. patentable subject matter2. novelty; high threshold2. novelty; high threshold3. useful; low threshold3. useful; low threshold

4. No Prior Art: not obvious to one 4. No Prior Art: not obvious to one of ordinary skill in the art of having in of ordinary skill in the art of having in mind earlier work of othersmind earlier work of others

Types of PatentsTypes of Patents

Plant Patents; distinctive plantsPlant Patents; distinctive plants Design Patents; ornamental designsDesign Patents; ornamental designs Utility Patents; machine or processUtility Patents; machine or process Business Method Patents; methods of doing Business Method Patents; methods of doing

businessbusiness Computer SoftwareComputer Software

Cannot patent natural elements; Cannot patent natural elements; mathematical formulas; abstract ideasmathematical formulas; abstract ideas

Patent LicensesPatent Licenses

Patentee has exclusive right to Patentee has exclusive right to license patent and to exclude others license patent and to exclude others from using inventionfrom using invention

Can license rights to (1) make; (2) Can license rights to (1) make; (2) use; and (3) sell separatelyuse; and (3) sell separately

Potentially enormous revenue stream Potentially enormous revenue stream (especially for business method (especially for business method patents; technology patents)patents; technology patents)

Patent AgreementsPatent Agreements

Patent LicensePatent License Patent AssignmentPatent Assignment Development AgreementDevelopment Agreement Joint Development AgreementJoint Development Agreement Technology AgreementsTechnology Agreements

Trade Secrets Are UniqueTrade Secrets Are Unique

Unlike patents, trademarks and copyrights, Unlike patents, trademarks and copyrights, there is never a registration or certificate to tell there is never a registration or certificate to tell others a company is claiming info as a a trade others a company is claiming info as a a trade secretsecret

The only definitive way to determine whether The only definitive way to determine whether something is trade secret is to have a court something is trade secret is to have a court rulingruling

This makes it difficult for business planning but This makes it difficult for business planning but there are steps a business should take to there are steps a business should take to protect info as a trade secretprotect info as a trade secret

No Single DefinitionNo Single Definition

Trade secret Law is State driven; Each state has its on Trade secret Law is State driven; Each state has its on definitiondefinition

@43 states have adopted UTSA (including Ohio)@43 states have adopted UTSA (including Ohio) Factors Courts consider:Factors Courts consider: How widely known is the info?How widely known is the info? What security measures has company taken to protect What security measures has company taken to protect

info?info? How many people know the info?How many people know the info? How valuable is the info to a business and its competitors How valuable is the info to a business and its competitors

(coca-cola)(coca-cola) How much $ has company invested to develop the info?How much $ has company invested to develop the info? How hard is it for a competitor to duplicate the info using How hard is it for a competitor to duplicate the info using

proper methods?proper methods?

How To Protect Trade How To Protect Trade SecretsSecrets

Trade secret protection program to Trade secret protection program to protect trade secrets against protect trade secrets against misappropriationmisappropriation

Business premise security Business premise security Restrict disclosure only to those who Restrict disclosure only to those who

have need to knowhave need to know Mark confidential info as confidentialMark confidential info as confidential

Non Disclosure AgreementsNon Disclosure Agreements

EmployeesEmployees

Third PartiesThird Parties consultants/developers/service providersconsultants/developers/service providers

Potential Business PartnersPotential Business Partners

Venture CapitalistsVenture Capitalists

Bankers/AdvisorsBankers/Advisors

IP Agreements IP Agreements

TM License; Company nameTM License; Company name Copyright License; Company contentCopyright License; Company content Patent License; Company inventionPatent License; Company invention NDA; Confidential informationNDA; Confidential information Employment AgreementEmployment Agreement Non-CompeteNon-Compete Agreements with 3Agreements with 3rdrd parties parties

How Do I Remember All of This How Do I Remember All of This Stuff?Stuff?

Develop an IP Strategy including:Develop an IP Strategy including:

-Plan to Identify Company IP-Plan to Identify Company IP

-Plan to Register Core Company IP-Plan to Register Core Company IP

-Plan to Implement Company IP Policy -Plan to Implement Company IP Policy

-Use of Template Agreements for use -Use of Template Agreements for use of Company IPof Company IP

Thank You!Thank You!