Intellectual Property
Overview - Do You Own
It?
BioEnterprise
Georgia Yanchar
April 25, 2017
Agenda
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Overview of Intellectual Property
Patents
Trade Secrets
Trademarks
Copyrights
© Calfee, Halter & Griswold LLP 2015
Objective of this Presentation: Help
You Recognize and Protect IP Assets
> Intellectual Property Rights Come in a Variety
of Flavors:
– Patents - protect products and processes used to make and
sell products
– Trademarks - protect names and images related to identity
(including product brands and domain names)
– Copyrights - protect materials fixed in paper or
electronically (including all advertising or web content)
– Trade Secrets - protect anything of value used in business
that is kept a secret
© Calfee, Halter & Griswold LLP 2015
Overview of Intellectual Property
> Patents
– “Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of
matter, or any new and useful improvement
thereof, may obtain a patent therefor . . . “
– Patents protect a concept or "invention" from use
by others
– Patents do not protect “abstract ideas” or laws of
nature
© Calfee, Halter & Griswold LLP 2015
Overview of Intellectual Property
> Design Patents
– Protect ornamental features
– Useful for icons and screen displays
© Calfee, Halter & Griswold LLP 2015
Ownership of Patents
> Absent any written agreement, each inventor is
a joint owner of a patent
– Anyone who contributes to the conception
> Inventor(s) are owners, sharing an indivisible
interest in the whole subject to each other
> Each joint owner can license or sell their
ownership interest in the patent to 3rd Parties
without the consent of the other joint owners
© Calfee, Halter & Griswold LLP 2015
Ownership of Patents
> All rights of an inventor can be transferred by
contract; for patents, ownership does not shift
to employer by virtue of employment
> Company policy should be that inventors are
obliged to transfer ownership to company in
exchange for receipt of salary, benefits, and
possibly other consideration
© Calfee, Halter & Griswold LLP 2015
Overview of Intellectual Property,
ctd.
> Trade Secrets/Know-how
– Protects confidential information of owner
– Identifies competitive advantage
> Need not be registered
> Need to be protected by taking precautions to
keep them secret
© Calfee, Halter & Griswold LLP 2015
Overview of Intellectual Property
(Cont.)
> Trademarks
– Protects reputation of product or service and
manufacturer or provider
– Identifies source or origin or product
– Can protect product design and "trade dress“
© Calfee, Halter & Griswold LLP 2015
Overview of Intellectual Property
(Cont.)
> Copyrights
– Protects author's specific expression
– Strong remedies for infringement
– Rights last a very long time
© Calfee, Halter & Griswold LLP 2015
Copyrights
> A copyright is a monopoly property right for any original work
of authorship that is fixed in any tangible medium of
expression
• Manuals, advertisements, collateral material used to sell
products (sell sheets), white papers, websites, etc.
• software code
• screen displays
• documentation
© Calfee, Halter & Griswold LLP 2015
Ownership of Copyrights
> Eligible works created by you in course of your employment -copyright automatically belongs to employer
> Works created by vendors or contractors do NOT belong to
employer absent either an assignment or a proper work for hire
agreement (only limited things can be works for hire)
© Calfee, Halter & Griswold LLP 2015
How to Protect Copyrightable
Material?
> Make sure you know who owns what
– who wrote text, who took photos, where did graphs/charts come from?
– attribution for factual information derived from other materials
> Consider registration with Copyright Office
–Stronger remedies available if you register and someone infringes
–Not expensive
© Calfee, Halter & Griswold LLP 2015
How to Protect Copyrightable
Material?
>Use copyright notices. Preferable to have copyright notice
affixed to all published works of authorship. Notice should
include:
a)
b)
c)
d)
The word "copyright" or the symbol "©"
The year of first publication
The name of the copyright owner
The phrase "All Rights Reserved“
Beware of Copyright Trolls!
© Calfee, Halter & Griswold LLP 2015
When Should IP Assets be Protected?
> Timing is important! - Think about IP when:
– A new employee is hired
– A new product is being developed - either internally or
with a third party - Pre-market phase
– Hiring a consultant or third party service provider
– Your information is going out to a third party (is a
confidentiality or other agreement required?)
– Information from a third party is coming into your
possession (are you obligated to protect it?)
– Product is going to market - Product Clearance Phase
– New product packaging, logo, or marks
© Calfee, Halter & Griswold LLP 2015
Non-Disclosure Agreements (NDAs)
Purposes of NDAs
> To enable disclosure on a confidential basis
> To define the type of information disclosed or
covered
> To avoid loss of patent and trade secret rights
> Does NOT typically define ownership of any
IP rights
© Calfee, Halter & Griswold LLP 2015
NDAs
Key provisions of Confidentiality Agreements
> Agreement not to disclose or use
"confidential" information except for approved
purposes
> Defines protected information
> Term of agreement and confidential period
> Exceptions for disclosure
> Terms for return of information
© Calfee, Halter & Griswold LLP 2015
Before Collaborating
- Considerations
> Does non-public info need to be shared?
> How much disclosure is really necessary to
have an effective meeting?
> Is there an NDA or other contract in place?
– What protection is afforded by it?
© Calfee, Halter & Griswold LLP 2015
Before Collaborating
- Actions
> Document all ideas with drawings, schematics,
photographs, etc.
– Signed, witnessed & dated in advance
– Document even if an NDA is going to be signed
– Documentation helps establish what you disclosed
to the 3rd Party
> Submit invention disclosure forms (even if
patent protection is not sought)
© Calfee, Halter & Griswold LLP 2015
Before Collaborating
- Actions
> Label all documents that will be taken to the
meeting "CONFIDENTIAL" and
"PROPRIETARY"
> If the information to be disclosed is important
to you, contact appropriate management about
possible IP protection (Patent, Copyright or
Trade Secret)
© Calfee, Halter & Griswold LLP 2015
Before Collaborating
- Actions
> File Patent Applications on Important Ideas
– Preserves your rights, even if the 3rd Party
breaches a confidentiality agreement
– Clearly establishes that the idea was developed by
you before it was disclosed to the 3rd Party
© Calfee, Halter & Griswold LLP 2015
During Collaborating
- Documenting
> Assign someone to take notes
– Identify the person that suggested each idea
– Copy any drawings or sketches and identify the
contributors
– A copy of the notes should be signed, dated and
kept by each Party
– Label any paper, computer file, etc. left or
generated at the meeting as "CONFIDENTIAL"
and "PROPRIETARY" and identify the
contributors
© Calfee, Halter & Griswold LLP 2015
Summary
> Know your rights
> Protect your rights
– secure ownership
– provide appropriate notices
– timely register
> Don’t waive your rights
> Be mindful of others’ rights
© Calfee, Halter & Griswold LLP 2015
Thank You
Thank you for your time today.
Georgia Yanchar
216.622.8233 or [email protected]
© Calfee, Halter & Griswold LLP 2015