Protection of Intellectual Property: Safeguarding Your Ideas

1. Protection of Intellectual Property: Safeguarding Your Ideas Sharon R. Klein, Esq.(949) 567-3506kleins@pepperlaw.com

2. IP Protection Preliminaries • Maintain • Confidences • Ownership • IP asset/valuation • Competitive advantage

3. Basic Forms of Intellectual Property (IP) • Trade secrets • Confidential information • Trademarks • Copyrights • Patents

4. What is a Trade Secret? • Formula, pattern, business information, customer information, methodology, strategic plans, etc. • Commercial value • Unlimited duration as long as secret • Automatically granted - no legal action required

5. Trade Secret Notice • This [program, manual, etc] is proprietary to Pepper and may be used only as authorized in a license agreement controlling such use • For RFP Responses and confidential product information, the notice should read as follows: • This [manual, document] is proprietary to Pepper and may be disclosed to third parties only with the prior written permission of Pepper

6. What is Confidential Information? • Trade secret • Oral or in writing • Given in confidence

7. What is Not Confidential? • Public domain • Already known • Independently obtained

8. Agreements? • Confidentiality and Non Disclosure • Work for Hire • Non Competitive • Assignment of Inventions

9. What is a Trademark? • Any word, design or device which identifies and distinguishes products/ services of one company from another • Rights originate upon use in U.S. • No “significant” legal action required

10. What is a Trademark? • Types of Marks - There are three types of marks, which are used as follows: ® - the mark has been registered with the Patent Office; it may be a service mark or a trademark  - an unregistered trademark; used for equipment, software, etc SM - an unregistered service mark; used for services and some software

11. Types of Marks? • Word marks • Design marks • Slogans • Initials • Trade dress

12. What is a Copyright? • Original work of authorship • Software code, manuals • Exists from the moment created • Protects “expression” not functionality • No “significant” legal action required

13. Databases • Compilation protected under copyright • Order, form, arrangement • Not substance of database

14. What is a Patent? • Legal right to a new, innovative idea or invention • Entitles inventor to exclude others from making, using or selling • Must be granted by government

15. Business Method Patent Patent which protects the practical application of a formula, calculation or process to produce a useful, concrete and tangible result.

16. IP Pitfalls • Incomplete Documentation • Sloppy Operating Procedures • Lack of Training • No Culture of Confidentiality

17. IP Ownership • Patents are owned by the inventors • Unless assigned to company or other entity • Copyrights are owned by the creators • Unless assigned or created by an employee as a “work for hire” • Multiple creators/developers = joint owners

18. Risks Of Joint IP Ownership • Each party has full rights • Unless one party agrees to give up rights, all parties can use the invention/work and license it to others • Difficult to enforce rights against others • All owners must agree to be co-plaintiffs in infringement litigation • For patent applications, difficult to prosecute with USPTO

19. Research Funded By U.S. Government Agencies • Must disclose inventions to the funding agency • Must file a patent application • Funding agency retains a license • Funding agency has “march-in rights” • Must (try to) manufacture the invention in the U.S.

20. Action Plan • Prioritize the Innovations • Decide on the Best Suited IP Tool • Inform and Educate People • Create and Follow Standard Operating Procedures • Seek Advice on Documentation • File for Relevant Protections