Ann G. Fort June 8, 2016 · Ann G. Fort June 8, 2016 ... partners and investors Advantages of IP Protection. 3 ... introducing new product or implementing new technology. !

© 2016 SUTHERLAND ASBILL & BRENNAN LLP / SUTHERLAND (EUROPE) LLP

IP for the “Started-Up”: Best Practices for Early-Stage Operating Companies

Ann G. Fort

June 8, 2016

NSF SBIR/STTR 2016 Phase II Grantee Conference

2© 2016 SUTHERLAND ASBILL & BRENNAN LLP / SUTHERLAND (EUROPE) LLP

IP for the “Started-Up”

An Offensive Technological Sword ! exclude competition ! stake market share ! reap licensing revenue within or outside your market, or both

A Defensive Technological Shield ! deter competitors from entering market ! cross-license with partners or competitors or both ! block competitors’ patenting efforts ! enable disclosure of your discoveries without loss

Market Power Results ! enhance product recognition and convey technological prowess ! asset value ! market stature to consumers, competitors, partners and investors

Advantages of IP Protection



! Protecting IP Assets

! Avoiding IP Liability

! Leveraging IP

Best Practices For . . .



! Cultivating a patent portfolio

! Protecting trade secrets/confidential business information

! Building a brand

Protecting IP Assets: Beyond the First Patent



Marking/Notice: section 287 ! Mark product as “Patent Pending” while a U.S. patent application is

pending at the U.S. Patent Office, but not before.

! Mark a product as “Patented U.S. Patent #,###,###” during the life of a U.S. patent covering the product or process, but not before.

! If multiple patents planned, set up website for “virtual marking” that lists pending and granted patents; print on packaging “Patent [insert url]”

Maximizes damages; minimizes “innocent infringement”

Your First Patent: Making the Most of It



Use continuations: ! Refine your claims to reach competitors ! If supported by existing disclosure ! Pros: efficient; retains original priority if done correctly ! Cons: shorter term than a new invention; terminal disclaimer likely required

Consider speeding up examination ! Prioritized Examination/“Track One”

! Nonprovisional, max 4 independent claims, max 30 dependent claims ! Fee $4000/$2000/$1000 based on entity size

! Accelerated Examination/Petition to Make Special ! Applicant age (65+) or health; invention certified as particularly important to

government; inventions with environmental preservation, energy conservation, or counter-terrorism impact

! Applications with specified streamlined conditions also can qualify ! Additional fee may or may not apply

Cultivating a Patent Portfolio



Patent Mapping and Landscaping! Identify, compare and contrast leaders/competitors by technology

! Identify most commonly patented technologies

! Identify “white spaces”: gaps in current IP coverage in the industry

! Identify potential IP acquisition, licensee, and enforcement targets

! Identify potential IP right to use issues

Many software tools available to help – “OpenSource Patent Analytics,” Poldham.github.io/overview-open-tools.

Cultivating a Patent Portfolio



Trade Secret ! Subject Matter Protected – Information

! Criteria for Protection - Not commonly known or publicly available, has economic value, and there are reasonable efforts to maintain its secrecy

! To Obtain Protection - Maintain the criteria for protection – make reasonable efforts to keep secret

! Protects Against – Misappropriation, theft

! Duration of Protection - Indefinite until it becomes commonly known or publicly available.

! Caution - No recourse if another party develops the technology or information independently; Failure to keep secret forfeits protection; There is cost associated with keeping secret.

Trade Secrets/Confidential Business Info



! Protects software, formulas, manufacturing methods. Avoids the public disclosure of patenting, protects inventions not patentable

! CBI can be product plans, marketing plans, pricing, supplier info that doesn’t meet TS definition

! Employees/contractors need to sign comprehensive IP agreements that cover TS and CBI along with inventions

! Agreements cannot contain time limits that later allow disclosure or use of TS or CBI; whole point is perpetual protection

! State laws and new federal law apply; alternate ways to enforce.

! New federal Defend Trade Secrets Act includes employee notice provision




! Label documents “CONFIDENTIAL”

! Restrict access to Trade Secret records and facilities at which Trade Secrets are in use

! Lock facilities, display signs stating the the contents are CONFIDENTIAL, and strictly apply sign in/sign out procedures

! Don’t disclose every aspect of the trade secret. Only disclose information on a Need to Know basis.

! When in doubt, Don’t Disclose.




! Subject Matter Protected – Ornamental design of article

! Criteria for Protection - Novelty, Utility, and Non-obviousness

! To Obtain Protection - Review by USPTO; grant of patent

! Protects Against – Manufacture, use, sale, offer for sale, or import of article with appearance confusingly similar to the patented ornamental design

! Duration of Protection - 15 years from issuance of design patent

! Caution – Only protects ornamental design, not utilitarian aspects of article

Product Design: Design Patents





! Subject Matter Protected – Expression, not ideas

! Criteria for Protection - Originality

! To Obtain Protection – Fixation in Tangible Medium

! Protects Against – Unlawful copying

! Duration of Protection – Life of author plus 70 years; corporate works shorter of 95 years from publication/120 years from creation

! Caution – Only protects copying of expression, not underlying technology or ideas

Product Design: Copyright



! Designs protected by copyright law:

“an original design of a useful article which makes the article attractive or distinctive in appearance to the purchasing or using public”

! Default rule: designer is the owner, unless work prepared by an employee within scope of employment

! Need clear contract to ensure company is owner

! Advantage: longer duration than design patent

Product Design: Copyright



According to the U.S. Copyright Office:

! A “computer program” is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.

! Copyright protection extends to all the copyrightable expression embodied in the computer program. Copyright protection is not available for ideas, program logic, algorithms, systems, methods, concepts, or layouts.

! Same author/owner rules as other works

Software Protection: Copyright



! Copyright registration requires providing a copy of the work to the Copyright Office

! Process explained in “Copyright Registration for Computer Programs,” Circular 61 http://www.copyright.gov/circs/circ61.pdf

! Procedures permit protection of trade secrets, despite public deposit

! Screen content can be registered, too

Software Protection: Copyright



! Unlike copyrights, can cover ideas, program logic, algorithms, systems, methods, concepts, or layouts

! License software to users, with a non-disclosure clause

! See other advantages of trade secrets above

! Does not prevent independent development.

Software Protection: Trade Secrets



! Mark copyrighted works with a copyright notice including the words “Copyright [company name]” followed by the date of first publication. The copyright symbol © may be used in place of the word copyright.

! Registration not required, but provides enforcement/damages benefits

Brand Identity: Copyrights



Trademark

! Subject Matter Protected – Source-indicating word or symbol

! Criteria for Protection - Distinctiveness

! To Obtain Protection – Use in commerce

! Protects Against – Confusing use by others

! Duration of Protection – Indefinite with use

! Caution – Failure to register may allow others to adopt mark in geographic areas beyond scope of actual use

Brand Identity: Trademarks



! Use the symbol TM for unregistered trademarks and the

! Use registration symbol ® for registered trademarks where they appear.

Brand Identity: Trademarks



! Creative logos, package illustrations, artwork on website/in marketing collateral

! See above criteria

! Belongs to the artist unless in scope of employment or the artist assigns it to company

! Goes back to comprehensive IP agreement

! Beware of hiring contractors who want to license your IP back to you (photographers, freelance graphic artists)

Brand Identity: Copyrights



Trade Secret

! Comply with non-disclosure agreements covering trade secret information of others.

! Require employees to agree that they will not share trade secrets of prior employer with your company.

! Do not accept trade secret information from others unless expressly authorized by owner.

! Keep up to date record of your technology to prove independent development of technology.

! Monitor Agreement terms to avoid violating them or operating after expiration.

Avoiding IP Liability



Patent ! Conduct freedom to operate patent search and obtain legal opinion before

introducing new product or implementing new technology.

! Purpose is to avoid liability for infringing any patent of others.

! Reduce risk of willful infringement and increased damages.

! Owning your own patent or patent application is not a shield to infringing others’ patents; someone else may own a more dominant patent.




Patent Responding to patent demand letters & lawsuits ! Congratulations! A sign of your success ! Do not communicate with claimant about substance ! Contact your counsel immediately; stakes are high

! Defaulting in a lawsuit ! Willful infringement if letter becomes a suit

Many consideration, including ! Available indemnification/defense from supplier ! Your resources to defend ! Importance of patent to your business ! State demand letter regulations




Consider the Prairie Dog Rule – First one out of the den gets eaten!

Avoiding IP Liability: Patent Claims



Trademark & Copyright

! Conduct a freedom to use search on a mark before commercial use or any substantial investment in the mark.

! Do not copy others’ works of authorship without permission or conducting a copyright freedom to use search.

! Beware of website images. Use only original photos/art your company owns, or stock photos.

! Use of stock photos must comply with the license. Read it!




Questions?

Documents

Ann G. Fort June 8, 2016 · Ann G. Fort June 8, 2016 ... partners and investors Advantages of IP Protection. 3 ... introducing new product or implementing new technology. !