IP: What Every Lawyer & Every Client Must Understand (Series: Intellectual Property 101)
0 likes•65 views
The document outlines a webinar series on intellectual property (IP) aimed at attorneys, accountants, and business professionals, highlighting the significance of IP rights including copyrights, trademarks, patents, and trade secrets. It covers essential knowledge about IP ownership, protection, and the legal nuances surrounding it, emphasizing the importance of proper management and strategy for organizations. The faculty includes experienced legal professionals who bring insights into navigating complex IP matters, and the series aims to educate participants in an engaging and accessible manner.
IP: What Every Lawyer & Every Client Must Understand (Series: Intellectual Property 101)
- 1. 1
- 2. 2 Practical and entertaining education for attorneys, accountants, business owners and executives, and investors.
- 3. Disclaimer The material in this webinar is for informational purposes only. It should not be considered legal, financial or other professional advice. You should consult with an attorney or other appropriate professional to determine what may be best for your individual needs. While Financial Poise™ takes reasonable steps to ensure that information it publishes is accurate, Financial Poise™ makes no guaranty in this regard. 3
- 4. Meet the Faculty MODERATOR: Eugene Goryunov - Haynes and Boone LLP PANELISTS: Sanjay Prasad - Appleton Luff Brent Ray - King & Spalding 4
- 5. About This Webinar What Every Lawyer & Every Client Must Understand Intellectual property or “IP” is a term used to describe certain types of intangible property. Like other forms of property, such as real estate and personal property, IP can be owned, purchased or transferred. How ownership is determined differs according to the type of IP. This webinar discusses the importance of certainty in ownership of IP, how ownership of IP is entangled with areas of corporate law and employment law, and it defines the key types of IP. 5
- 6. About This Series Intellectual Property 101 - 2020 Intellectual property (IP) rights constitute an important asset class. Indeed, the “information economy” and high tech have made this asset class go from one that few understood and even fewer invested in to one watched and invested in by millions. IP includes patents, trademarks, copyrights, and trade secrets. How do you create rights in one of these assets? How do you protect those rights? How do you transfer them (or have them transferred to you)? How do the interact with each other? This information-packed webinar series focuses on the intricacies of IP rights as they relate to the specific areas of brand protection, IP transactions, internet marketing, and other IP issues that are critical when representing innovators and inventors. Each Financial Poise Webinar is delivered in Plain English, understandable to investors, business owners, and executives without much background in these areas, yet is of primary value to attorneys, accountants, and other seasoned professionals. Each episode brings you into engaging, sometimes humorous, conversations designed to entertain as it teaches. Each episode in the series is designed to be viewed independently of the other episodes so that participants will enhance their knowledge of this area whether they attend one, some, or all episodes. 6
- 7. Episodes in this Series #1: IP-What Every Lawyer & Every Client Must Understand Premiere date: 1/25/21 #2: Copyrights, Patents, and Trademarks...Oh My! Premiere date: 2/25/21 #3: Leveraging & Protecting Trade Secrets in the 21st Century Premiere date: 3/25/21 7
- 8. Episode #1 What Every Lawyer & Every Client Must Understand 8
- 9. Presentation Overview • What is intellectual property (IP)? • Basic IP Rights: Copyrights Trademarks Patents Trade Secrets • How do you protect your IP and avoid infringement? 9
- 10. Types of Property • Under the law, property is generally categorized as: Real property – buildings and land. Personal property – all other property, including: o Tangible property (e.g., office equipment and furniture) and o Intangible property (e.g., stocks, bonds, and intellectual property). 10
- 11. What is Intellectual Property? • Intellectual property (IP) refers to intangible creations of the mind. • There are four main types of IP: Copyrights – protect works of authorship, such as books, music, or pictures. Trademarks – protect company identifiers, such as logos or package designs. Patents – protect new and useful inventions and discoveries. Trade Secrets – protect commercially valuable protected information, such as business plans, formulas, or customer information. 11
- 12. Why is Intellectual Property Important? • Intellectual property can be a company’s greatest asset. For example, intellectual property: Builds brand loyalty and awareness; May be sold, licensed, or leveraged for profit; and Protects interests in inventions, technology, goods, and services used and sold by companies. 12
- 13. What is a Patent? • A patent is a right granted by the U.S. government to an inventor for a limited time to exclude others from: Making, using, offering to sell, or selling the patented invention; or Importing the patented invention into the United States. • Patents protect inventions and discoveries, including new and useful processes, machines, products, compositions, or manufactures. Types of patents include design, utility, and plant patents. 13
- 14. Patent Eligibility Requirements • For an invention to be patentable, the invention must fall within a category of patentable subject matter and must be useful, new, and non-obvious. Patentable subject matter excludes abstract ideas, laws of nature, and natural phenomena. Usefulness or utility New or novelty Non-obviousness 14
- 15. Patent Prosecution and Ownership • To obtain a patent on an invention, an inventor, patent agent, or patent attorney must file a patent application with the U.S. Patent & Trademark Office (USPTO). The process of filing a patent application and negotiating the patent application with the USPTO is known as patent prosecution. • A patent application is made in an inventor’s name, and the inventor is presumed to initially own rights in the invention. An inventor may assign (or may be required to assign) the patent application or patent to another party. 15
- 16. Patent Rights and Litigation • A patent provides a right to exclude others. It does not give the right to make, use, or sell the patented invention. • A party that practices an invention claimed in a patent without a license from the owner infringes the patent. Direct Infringement vs. Indirect Infringement Remedies 16
- 17. What is a Trademark? • A trademark identifies the source of a good or service used in commerce. Words, phrases, or letters (e.g., APPLE®, McDonald’s slogan I’m Lovin’ It, General Electric’s GE mark) Symbols or shapes (e.g., Nike’s , Pepsi’s ) Product, package, or store design (e.g., 7-Eleven store design, APPLE store design, adidas’ three stripes) Sounds, scents, colors, or patterns (e.g., NBC’s 3-note chimes, Tiffany’s blue packaging, Burberry’s plaid ) 17
- 18. Trademark Requirements • A trademark must be used in commerce and be distinctive. A hierarchy of distinctiveness exists to determine the strength of a mark. Coined (no commonplace meaning) (e.g., KODAK®) Arbitrary (e.g., APPLE® for computers) Suggestive (e.g., KOOL-AID®) Descriptive (cannot be registered unless the mark acquires distinctiveness) (e.g., NO SPOT RINSE SYSTEM®) Generic (can never be registered as a trademark) (e.g., BAKERY, SOAP, ICE CREAM) 18
- 19. General Rule for Trademarks The MORE information a trademark conveys about the associated product or service, the LESS useful and valuable it is as a trademark. 19
- 20. Trademark Ownership and Registration • Trademark rights and ownership are acquired through use of the mark in commerce. • Registration of a trademark is not necessary, but registration provides benefits to the owner. • Benefits include: Rights extend nationwide from the filing date of a trademark application, even if use is in a limited region; Constructive notice to the public of ownership; Legal presumption of ownership of the mark and the exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration; Use the U.S. registration as a basis to obtain registration in other countries; Right to use the registered trademark symbol “®” 20
- 21. What Can Be Protected by a Copyright? • Original works of authorship fixed in a tangible medium (the work to be perceived, reproduced, or otherwise communicated) • Protects the expression of an idea, but not the idea or concept itself • Copyright generally not available for: Words Symbols Slogans Common designs 21
- 22. What Types of Work Receive Copyright Protection? • Copyright protection available for work that contains sufficient originality and expressive elements. • Unlike in patent law, there is no requirement that a copyrightable work be sufficiently distinct from earlier creations. Independently created Possess a spark or minimal degree of creativity 22
- 23. What Types of Work Receive Copyright Protection? • Examples of copyrightable material include musical compositions, sculptures, and motion pictures. Logos, hangtags, labels, and even packaging that feature artwork or graphic design elements may be copyrightable. Copyright registration for trademarks that incorporate such artwork or graphic design elements can provide another layer of protection for the mark/logo. 23
- 24. Scope of Copyright Protection • A copyright protects the elements of a work that are original. • Public domain elements can be “selected, coordinated, and arranged in such a way as to render the work original.” 24
- 25. Copyright Ownership • Generally, the creator(s) of the work owns the copyright, except for: “Work Made for Hire” o A work prepared by an employee within the scope of his or her employment is owned by the employer. o Certain works specially ordered or commissioned are not owned by the creator, if the parties expressly agree in a signed writing that the work is a work made for hire. Sale of the entire copyright 25
- 26. Copyrights: 70, 95, 120 Years • Copyright protection (for works created after Jan. 1, 1978): 70 years after author’s death, or, if a work made for hire, 95 years from year of first publication or 120 years from year of creation • Assignment: Author retains right to terminate after 35 years (17 U.S.C § 203); If less than all rights conveyed, author may be able to exploit work in derivatives. 26
- 27. Copyright Rights and Registration • A copyright gives its owner the exclusive right to: Reproduce the work Prepare derivative works Distribute copies of the work Perform certain works Display certain works • Copyright registration is not necessary for protection, but registration provides certain benefits to owners. 27
- 28. Why Register a Copyright? • Copyright protection (for works created after January 1, 1978) vests as soon as the copyrightable work is fixed in a tangible medium • Obtaining a copyright registration enhances this protection • Evidence of ownership and facts in registration: If copyright application is filed within 5 years of publication, registration certificate will be prima facie evidence of the validity of the copyright and of the facts stated in the certificate 28
- 29. Why Register a Copyright? • Registration is generally a prerequisite for filing a copyright infringement lawsuit for works of U.S. origin. • Registration prior to infringement of the work, or within three months of the work’s publication, entitles copyright owner to seek statutory damages (in lieu of actual damages and profits) and attorneys’ fees. 29
- 30. What is a Trade Secret? • A trade secret is any information, including a formula, pattern, compilation, program, device, method, or process: That derives economic value from not being readily ascertainable; and Is the subject of efforts that are reasonable under the circumstances to maintain its confidentiality. • Example: KFC’s Fried Chicken Recipe. 30
- 31. Trade Secret Requirements and Limitations • To receive trade secret protection, information must be: An actual secret; Protected by reasonable efforts; and Valuable as a secret. • Limitations on trade secret protection include: Independent discovery; and Reverse engineering 31
- 32. Is There a Trade Secret? • Is there a trade secret? 6 factors used in both common law & statutory jurisdictions: Extent of the measures used to protect the secrecy of the information Commercial value of the information to the business and to its competitors Extent to which those in the company knew about it Extent to which those outside the company knew about it Ease/difficulty with which it was developed Ease/difficultly with which it could be duplicated by another 32
- 33. Trade Secret Misappropriation • Trade secret misappropriation occurs when there is a wrongful use, disclosure, or acquisition of the trade secret by “improper means.” • Trade secret misappropriation typically occurs in the context of employer- employee relationships, but may also occur when any person or thing is given access to protectable information. 33
- 34. Protecting Trade Secrets • No need to file / register • But, you must be proactive: Stamp “confidential” on appropriate files Instruct employees to not disclose secrets Install security systems Use non-disclosure and confidentiality agreements • Duration: lasts until it becomes public knowledge 34
- 35. Best Practices for Protecting IP • Develop an IP company policy and portfolio • Obtain non-disclosure agreements and assignment agreements • Mark protected products and goods • Weigh costs and benefits of registering copyrights and trademarks and applying for patents • Weigh costs and benefits between potential patent and trade secret protection • Enforce rights against infringers 35
- 36. Best Practices for Avoiding Infringement • Perform research on existing IP • Question and understand how employees obtain and develop ideas, marks, or publications • Understand the marketplace prior to launching new products and services • Engage services to monitor new IP filings and perform infringement analysis 36
- 38. About The Faculty Eugene Goryunov - [email protected] Mr. Goryunov is an experienced trial lawyer that represents clients in complex patent matters involving many diverse technologies. He is deeply involved, as trial counsel, in all aspects of cases pending in Federal courts, at the U.S. International Trade Commission involving Section 337 investigations, and in appeals at the U.S. Court of Appeals for the Federal Circuit. He also regularly serves as first-chair trial counsel in post-grant review trials, on behalf of both Petitioners and Patent Owners, pending at the U.S. Patent & Trademark Office. To date, he has been involved in over one-hundred post-grant review trials. Mr. Goryunov is a regular contributor to intellectual property publications, including the Intellectual Property Magazine, The Patent Lawyer, and the IPO Law Journal. To date, he has published more than sixty articles, many of which discuss post-grant review trial practice. Mr. Goryunov also speaks about diverse issues of patent law and post-grant review trial practice. He also teaches patent law and intellectual property litigation at the Columbia University and previously at the University of Notre Dame. 38
- 39. About The Faculty Sanjay Prasad - [email protected] Sanjay Prasad draws from over twenty-five years of practice at the forefront of technology and intellectual property. He has extensive experience in advising entities on patent strategy including developing corporate patent strategy, advising on infringement matters, developing patent filing programs, patent acquisition and sales programs and patent and technology licensing, particularly in the high-tech sector including semiconductors, software, computer systems, internet, telecommunications and medical devices. 39
- 40. About The Faculty Brent Ray - [email protected] Brent Ray is a trial lawyer who has first-chaired multiple cases to verdict. He has served as lead counsel for industry-leading clients, such as IBM, JP Morgan Chase, Citibank and Kemper Insurance. Brent’s work has taken him to a wide variety of venues, including federal court, state court, the United States Patent and Trademark Office and the United States International Trade Commission. As a result of his diverse experience, Brent has been called upon to advise clients on the intellectual property and litigation aspects of corporate merger agreements and product acquisitions, and to develop and manage patent portfolios. Brent has also argued before the Court of Appeals for the Federal Circuit to defend a grant of summary judgment that he won below. Brent is an Adjunct Professor at Chicago-Kent School of Law teaching advanced Legal Writing focused on Intellectual Property issues. Brent is a member of the trial bar of the Northern District of Illinois. 40
- 41. Questions or Comments? If you have any questions about this webinar that you did not get to ask during the live premiere, or if you are watching this webinar On Demand, please do not hesitate to email us at [email protected] with any questions or comments you may have. Please include the name of the webinar in your email and we will do our best to provide a timely response. IMPORTANT NOTE: The material in this presentation is for general educational purposes only. It has been prepared primarily for attorneys and accountants for use in the pursuit of their continuing legal education and continuing professional education. 41
- 42. About Financial Poise 42 Financial Poise™ has one mission: to provide reliable plain English business, financial, and legal education to individual investors, entrepreneurs, business owners and executives. Visit us at www.financialpoise.com Our free weekly newsletter, Financial Poise Weekly, updates you on new articles published on our website and Upcoming Webinars you may be interested in. To join our email list, please visit: https://www.financialpoise.com/subscribe/