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Protecting and Commercializing Intellectual Property

Protecting and Commercializing Intellectual Property William A. McComas, Esquire Washington, D.C. June 16, 2009 “One of the tests of leadership is the ability to recognize a problem before it becomes an emergency.” Arnold Glasgow

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Protecting and Commercializing Intellectual Property

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  1. Protecting and Commercializing Intellectual Property William A. McComas, Esquire Washington, D.C. June 16, 2009

  2. “One of the tests of leadership is the ability to recognize a problem before it becomes an emergency.” Arnold Glasgow “I don’t know about technology and I don’t know about finance and accounting.” Bernard J. Ebbers, Former CEO of WorldCom, at his trial

  3. Types of Intellectual Property • Patents • Copyrights • Trademarks • Trade Secrets

  4. Patents • Subject Matter • Utility (process, machine, manufacturer, composition) • Design (original or amended design) • Plant • Utility Patent Requirements • Novel (not if already patented or invented; not filed within one year of sale) • Non-obvious to one reasonably skilled in the act • Rights • Exclude others from using, making, having made, offering for sale, selling, importing • Term • 14-20 years since exceptions • Obtained • Upon Issue by USPTO

  5. Copyrights • Subject Matter • Books, software, music movies • Requirements • Original work of authorship in fixed medium of expressions (not released) • Rights • Exclusive right • Reproduce • Prepare derivatives • Distribute • Perform • Display • Moral Rights (attribution) • Duration – Generally life of author plus 50 years • Obtained • Common law immediately • Federal protection by filing with Library of Congress

  6. Trade Secrets • Subject Matter • Formula, designs, software, etc. • Requirements • Economic value to secrecy • Secret generally • Reasonable efforts to keep secret • Rights • Right to exclude (if no exception) and license • Duration • For as long as it remains secret • Obtained • Statutory, contract and common law

  7. Trademarks • Subject Matter • (Word, name, symbol, etc.) that identifies the source of goods and services • Requirements • No one else is using it previously and not confusingly similar to others • Rights • Exclusive Right to use mark in a limited scope unless famous mark (may be broader) • Term • Indefinite so long as you renew • Obtained • Common law (immediately limited in scope) • Federally when filed and granted by the USPTO

  8. Ownership • Employer • When employee working within scope of employment • Employee • When outside scope of employment • Independent Contractor • Unless written agreement to the contrary • Employee v. Independent Contractor • Varies from jurisdiction to jurisdiction • Supreme Court – multi-factor test

  9. Commercializing • Assignment – Full Legal Title • License • Scope of license • Perpetual, exclusive, modifiable • Restrictions • Royalties

  10. Vehicles to Commercial • Creation • Individuals • Companies • Contract • Sponsored Research • Commercialization • Solo or form entity • Create joint ventures • Identify Shortcomings to Effectively Commercialize • Finance • Know-how • Market

  11. Questions

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