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Daliah Saper presents on “Intellectual Property And Business Process Implications Involved With Adopting Next Generation Technologies And Business Models For Optimizing Revenues”
By Saper Law | September 18, 2008
If you missed Daliah Saper’s presentation at the Delivered Innovation Seminar, please download the presentation slides below.
Topics discussed include identifying Intellectual Property rights, differences between the various types of Intellectual Property, advice for exploiting your IP rights for a profit, management and protection of copyrights, trademarks, patents, and trade secrets, and others.
Intellectual Property And Business Process Implications Involved With Adopting Next Generation Technologies And Business Models For Optimizing Revenues Introduction · About Saper Law:· Saper Law is an intellectual property and business law firm with significant transactional and both federal and state litigation experience. We primarily specialize in the following areas of law: · Trademarks· Copyrights· Trade Secrets· Corporate· Internet and Cyber Space· Entertainment· Defamation· IP Licensing· Advertising· Media· Sponsorship and Advertising Agreements Intellectual Property 101 · Identify· Register· Maintain/Protect· Exploit Step 1: Identify · Identify what intellectual property your business possesses. · Types of Intellectual Property· Copyright?· Patent?· Trademark/Servicemark?· Trade Secret? Copyright · Applies to any work that is an original work of authorship fixed in a tangible medium of expression.· copyright owners enjoy the exclusive right to · make copies of the work, · distribute copies of the work to the public, · prepare derivative works, · perform the work publicly, · and display the work publicly. Copyright - Software · What is copyrightable in Software?· Source Code· Look and feel of the interface· Websites can be copyrighted too You can not copyright FACTS, or LISTS OF GENERAL INFORMATION, TRADEMARKS, IDEAS (Patents) Patent · You get a patent if you invent something that is a:· New (no prior art)· Useful (has a function or purpose) and· Non-Obvious….(everyone didn’t already think of this)· Process or Program· Machine· Article of manufacture· Composition of matter (biological patents)· If you get a patent you earned the exclusive right to prevent or exclude others from making, using, selling, offering to sell or importing the invention. Note, it’s a right to “exclude”—not a right to use. Patent–Software · Software is patentable if the invention utilizes a computer to manipulate numbers that represent concrete, real world values, and the invention is a process relating to those real world concepts.· To ensure patentability: the software or data structure should be operated by a computer or stored on a computer readable media.· TALK TO A PATENT LAWYER TO EXPLAIN THIS. Trademark/Servicemark · A trademark is a source identifier. It can be a· Word · Name· Tagline· Symbol/logo· Even smell or sound! · When a trademark is used in relation to services rather than products, it may sometimes be called a Service Mark. · To get a trademark, you need to USE IT in COMMERCE. · The law is primarily intended to protect the consumer from confusion. Trademark - Software Getting a trademark is the same for Software as it is for any other good or service. Trade Secret · A trade secret is information that:· Is not generally known to the public;· Confers some sort of economic benefit on its holder· Is the subject of reasonable efforts to maintain its secrecy. · A trade secret is information that is valuable to the owner as a secret, and therefore must be protected as such. If the owner’s competitors generally know or could easily discover the secret information, the owner could lose his competitive edge. Homework · Look at your business and IDENTIFY what ….
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<!–[endif]–>· Copyrights· Patents · Trademarks and/or· Trade Secrets · ….your business owns. Step 2: Register Yay, I have IP! Now what? · Take Steps to REGISTER Your Work· Copyright: www.copyright.gov· Patent: www.uspto.gov· Trademark: www.uspto.gov· No registration for trade secrets· Note: you may register your copywritten code as a trade secret by redacting important portions of it. Step 3: Maintain and Protect · Registration is not enough. You need to Maintain and Protect your IP portfolio. Maintain and Protect - Copyright · Once you register, you don’t have to worry about renewal fees or loss by abandonment. · However, you need to make sure you took the proper steps to own the copyright. Maintain and Protect - Copyright Copyright Work Made for Hire Contracts are crucial. Make sure you license your rights—don’t assign your rights away! (We’ll discuss licensing and assignment in more detail later.)
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<!–[endif]–>Maintain and Protect - Trademark · File periodic affidavits and fees· Ways to lose protection:· Abandonment—ie, make sure you keep USING your trademark.· Improper licensing or assignment (lack of adequate quality control or supervision by TM owner)· Genericide - prevent TM from becoming generic—ie XEROX, or BAND-AID Maintain and Protect - Patent
Before Patent is issued: · Don’t disclose your invention or offer it for sale unless you have taken measures to file at least a provisional patent. · Talk to your patent attorney about Prior Art. Maintain and Protect - Patent · After Patent is Issued:· Pay maintenance fees· Go after infringers asap—otherwise you may be accused of “Laches”—-or sitting on your rights for too long. (That’s a defense!) General Protection Strategy · Determine an Appropriate Protection and Enforcement Strategy · Prevention:· Strong Contracts, Licensing Agreements, and Employment/Work-For-Hire Contracts. · Hire Monitoring or Watch Services · Enforcement: · Send Cease and Desist Letters· Litigation Step 4: Exploit · The term “Exploit” in the IP world is a GOOD word:· To utilize, esp. for profit; turn to practical account. to exploit a business opportunity. · The key to exploiting (MAKE $$$) off of your IP is to structure your business deals properly by understanding your ownership rights. Ways to bring your IP to market:
· Exploit your IP independently?· License it?· Joint Venture?· New Entity? · Sell your IP all together? · Each of these have different Intellectual Property ramifications. · There are also different nuances when the type of IP at issue is a copyright, vs a patent, vs a trademark. Quick run down of key terms:
LICENSE vs ASSIGNMENT
Licensing 101 · Define Licensing· A licensing agreement is a partnership between an intellectual property rights owner (licensor) and another who is authorized to use such rights (licensee).· The licensor still owns the intellectual property and therefore maintains control. · The agreement will often require the licensee to pay a royalty or fee for the permission to use the intellectual property. Licensing 101 · Licensing as Vehicle for Monetizing IP · Often this involves evaluating terms of license, sale or joint venture agreements to determine appropriate royalty rates and ownership percentages, depending on factors such as profitability, exclusivity and complementary assets required for production or sale. Assignment 101 · Define Assignment · An assignment is the selling or transferring of IP rights to another person.· Once you assign your IP rights, you can no longer control the registered IP; the assignee will have this control. Engaging a Freelancer OR Partner for Co-development/Joint Go-to-market What happens if you DON’T clearly define your rights up front with your freelancer, or business partner? · VERY BAD THINGS! Implied Licenses · If you hire a freelancer but don’t get him/her to sign a work for hire agreement, you don’t own the commissioned work.· At best, you will only have an Implied License to use the commissioned work.· The extent of what was “implied” often becomes the basis for lengthy and costly litigation. Implied Licenses, continued. · Avoiding the Headaches of Implied Licenses· Agreements should be put in writing and contain: · A statement identifying who owns the copyright· The full scope of work to be performed should be set forth in the agreement· Addressing the circumstances under which the owner will authorize others to use the copyrighted work· Where a license is issued, you should address the scope and limit of an indemnification provision so you are not held responsible for others’ misuse of the design. Co-Ownership/ General Partnership If you start a business without clearing defining the terms of the partnership you may fight about:· IP Ownership or possibly worse, · you may be Co-Owners in which case you will have to SHARE the IP even after the dissolution of your business Co-Ownership/ General Partnership · In the U.S. copyright co-owners (or “joint-authors”) are TENANTS IN COMMON.· Each owner holds an undivided share in the copyright.· There is no right of survivorship. That means that if one co-owner dies, the other co-owner doesn’t automatically get the remaining interest. The dead guy’s heirs get it. Co-owners · Rights and Responsibilities as a Co-owner· Each owner has the right to license the work or sell his proportional interest in the copyright without the permission of the others. However, you are required to account to the others for profits earned from licensing. · You may not unilateral take steps to effectively destroy the value of a copyright. But it is not clear what “destroy the value of a copyright” means. Organize your venture · Watch out for the legal implications of choosing a Sole Proprietorship or General Partnership structure. · To be shielded from personal liability, you need to form an actual entity (LLC,Corp,etc.) Engaging an IP/Licensing Attorney · A good IP attorney can help you:· Help you conduct an IP “Audit”· Register your marks· Assist you with protection and enforcement strategies.· Create the proper business structure and appropriate contracts so that you don’t find yourself without any rights.
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