PRESENTED BY HARVEY S. KAUGET PHELPS DUNBAR LLP

HARVEY.KAUGET@PHELPS.COM

IP IN GENERAL

PATENTS

TRADE SECRETS

TYPES OF PATENTS

UTILITY PATENTS

PROVISIONAL
NONPROVISIONAL

PURPOSE OF A PATENT

A PATENT IS A BUSINESS TOOL USED TO EXCLUDE OTHERS FROM PRACTICING AN INVENTION FOR ANY ONE OF A NUMBER OF REASONS:

DEFENSIVE — FREEDOM OF ACTION
OFFENSIVE — ASSERT TO THWART COMPETITION
LICENSING — LEASE TO OR FROM OTHERS
IMPRESS INVESTORS — ATTRACT MONEY
INCREASE VALUATION — PATENTS AS ASSETS

INTELLECTUAL PROPERTY KNOW HOW AND WHY

PATENT REQUIREMENTS

1 YEAR FROM:

NO GRACE PERIOD!
ABSOLUTE NOVELTY

GENERALLY AVAILABLE TO THE PUBLIC

PATENT PRIORITY

UNITED STATES

FIRST TO CONCEIVE

FOREIGN COUNTRIES

FIRST TO FILE

DOCUMENTING OF THE INVENTION

ACTUAL
CONSTRUCTIVE

INVENTION DISCLOSURE

FULL AND COMPLETE ENABLING DISCLOSURE
BEST MODE

PATENT APPLICATION

REGULAR UTILITY PATENT APPLICATION

PROVISIONAL PATENT APPLICATION

REJECTIONS
AMENDMENTS TO CLAIMS

ISSUANCE

PATENT TERM

PATENTABILITY OPINIONS

COMPUTER SEARCHES
PATENT OFFICE SEARCHES
PATENTABILITY OPINIONS

PROSECUTION HISTORY

VALIDITY

OF A FAILURE TO SATISFY THE LEGAL REQUIREMENTS
THE EXAMINATION PROCESS IS NOT RIGOROUS

VALIDITY & INFRINGEMENT OPINIONS

PATENT OWNERSHIP

HIRED TO INVENT

INDEPENDENT CONTRACTORS

REQUIRE AGREEMENT TO ASSIGN TO THE COMPANY

INTELLECTUAL PROPERTY KNOW HOW AND WHY

PATENT EXAMPLES

INTELLECTUAL PROPERTY KNOW HOW AND WHY

PATENT EXAMPLES

INTELLECTUAL PROPERTY KNOW HOW AND WHY

TRADE SECRETS

WHAT IS A TRADE SECRET?

TRADE SECRET ELEMENTS

DERIVES INDEPENDENT ECONOMIC VALUE

NOT READILY ASCERTAINABLE

REASONABLE EFFORTS TO PRESERVE SECRECY

TRADE SECRET MISAPPROPRIATION

INTELLECTUAL PROPERTY KNOW HOW AND WHY

TRADE SECRET REMEDIES

FIRST INVENTOR DEFENSE

REDUCED TO PRACTICE FOR 1 YEAR
COMMERCIALLY USED EVEN SECRETLY

TRADEMARKS & SERVICE MARKS

INTELLECTUAL PROPERTY KNOW HOW AND WHY

TRADEMARK SELECTION

TRADEMARK PRIORITY

UNITED STATES

FIRST TO USE THE TRADEMARK

FOREIGN COUNTRIES

FIRST TO REGISTER

INTELLECTUAL PROPERTY KNOW HOW AND WHY

TRADEMARK CLEARANCE

INTELLECTUAL PROPERTY KNOW HOW AND WHY

TRADEMARK REGISTRATION

TRADE DRESS

TRADE DRESS REFERS TO CHARACTERISTICS OF THE VISUAL APPEARANCE OF A PRODUCT OR ITS PACKAGING (OR EVEN THE FACADE OF A BUILDING SUCH AS A RESTAURANT) THAT MAY BE REGISTERED AND PROTECTED FROM BEING USED BY COMPETITORS IN THE MANNER OF A TRADEMARK. THESE CHARACTERISTICS CAN INCLUDE THE THREE-DIMENSIONAL SHAPE, GRAPHIC DESIGN, COLOR, OR EVEN SMELL OF A PRODUCT AND/OR ITS PACKAGING.

TRADE DRESS PROTECTION

TRADEMARK INFRINGEMENT

CONFUSING SIMILARITY

SOUND
MEANING
APPEARANCE

RELATED GOODS

UNFAIR COMPETITION

INTELLECTUAL PROPERTY KNOW HOW AND WHY

COPYRIGHTS

MULTINATIONAL TREATIES

UCC
BERNE

COPYRIGHTABILITY

INTELLECTUAL PROPERTY KNOW HOW AND WHY

CREATION OF PROTECTION

INTELLECTUAL PROPERTY KNOW HOW AND WHY

COPYRIGHT OWNERSHIP

DURATION OF COPYRIGHT

INTELLECTUAL PROPERTY KNOW HOW AND WHY

COPYRIGHT NOTICE

COPYRIGHT REGISTRATION

ALTHOUGH SINCE 1978 COPYRIGHT VESTS AT THE MOMENT OF FIXATION IN A TANGIBLE MEDIUM, REGISTRATION OF YOUR COPYRIGHT WITH THE US COPYRIGHT GOVERNMENT OFFICE IS IMPORTANT FOR SEVERAL REASONS:

COPYRIGHT REGISTRATION ESTABLISHES A PUBLIC RECORD OF THE COPYRIGHT CLAIM.
COPYRIGHT REGISTRATION IS A PREREQUISITE TO FILING AN INFRINGEMENT SUIT IN THE U.S.
COPYRIGHT REGISTRATION IS A PREREQUISITE FOR STATUTORY DAMAGES (WHICH CAN BE AS HIGH AS $150,000) AND ATTORNEY’S FEES.

COPYRIGHT INFRINGEMENT

FAIR USE

INTELLECTUAL PROPERTY KNOW HOW AND WHY

RIGHT OF PUBLICITY

TRADE DISPARAGEMENT

INTELLECTUAL PROPERTY LICENSING

PATENT LICENSING

A PATENT PROTECTS:

ANY NEW AND USEFUL PROCESS, MACHINE, ARTICLE OF MANUFACTURE OR COMPOSITION OF MATTER (UTILITY PATENT)
ANY NEW, ORIGINAL AND ORNAMENTAL DESIGN FOR AN ARTICLE OF MANUFACTURE (DESIGN PATENT)
ANY DISTINCT AND NEW VARIETY OF PLANT (PLANT PATENT)

PATENT LICENSING

A PATENT IS A PURELY LEGAL CONSTRUCT

DOES NOT CONFER ANY RIGHT TO PRACTICE THE PATENTED INVENTION
ONLY ALLOWS THE PATENT OWNER TO EXCLUDE OTHERS FROM PRACTICING THE INVENTION; I.E, A RIGHT TO SUE

PATENT LICENSING

PATENT LICENSING

PATENT LICENSING

ROYALTY-BEARING PRODUCT IS ONE THAT WOULD INFRINGE A “VALID CLAIM”

ISSUED CLAIMS ARE PRESUMED VALID
PENDING CLAIMS (consider reduced or no royalty)

PATENT LICENSING

DEMONSTRATION/EVALUATION
CLINICAL TRIALS

PATENT LICENSING

PATENT LICENSING

PATENT LICENSING

WHO HAS CONTROL OF THE PATENT PROSECUTION?

IT IS TYPICAL FOR AN EXCLUSIVE LICENSEE TO HAVE SOME CONTROL OF THE PROSECUTION

PATENT LICENSING

WHO HAS CONTROL OF PATENT ENFORCEMENT?

EXCLUSIVE/NON-EXCLUSIVE RIGHTS
INFRINGEMENT IN THE FIELD/TERRITORY
COMMERCIALLY SIGNIFICANT INFRINGEMENT
DEFINE HOW PROCEEDS WILL BE SHARED
ALWAYS NEED RIGHT TO JOIN OTHER PARTY AS A PARTY, AND SHOULD HAVE COOPERATION CLAUSE

PATENT LICENSING

REPRESENTATIONS AND WARRANTIES

LICENSOR HAS RIGHT TO GRANT LICENSES, AND LICENSOR HAS NOT GRANTED AND WILL NOT GRANT OTHER CONFLICTING RIGHTS
PRACTICING INVENTION WILL NOT INFRINGE THIRD PARTY PATENTS -OFTEN LIMITED TO LICENSOR'S KNOWLEDGE
WARRANTY AS TO LIST OF EXISTING PATENT RIGHTS

PATENT LICENSING

REPRESENTATIONS AND WARRANTIES

LICENSOR OWNS NO OTHER PATENTS/APPLICATIONS THAT WOULD NECESSARILY BE INFRINGED BY PRACTICE OF LICENSED PATENT
NO THIRD PARTY CLAIMS RE PATENTS
DISCLAIMERS
NO WARRANTY AS TO ISSUANCE OF APPLICATIONS OR VALIDITY OF PATENTS

PATENT LICENSING

TERMINATION

GENERALLY, TERM IS FOR LIFE OF PATENTS/APPLICATIONS, LAST TO EXPIRE/BE ABANDONED
TERMINATION ON BREACH BY LICENSEE
TERMINATION FOR CONVENIENCE
BANKRUPTCY ISSUES

PATENT LICENSING

MISCELLANEOUS

ASSIGNMENT
CONFIDENTIALITY
IMPROVEMENTS
PATENT MARKING PROVISION
NO CONSEQUENTIAL DAMAGES
INFRINGEMENT INDEMNITY

DEVELOPING AN IP STRATEGY

WHAT ARE YOUR BUSINESS PURPOSES AND OBJECTIVES?

ULTIMATE GOALS
WHAT ARE YOU TRYING TO ACHIEVE?
WHAT KIND OF COMPANY ARE YOU?
WHO ARE YOUR REAL COMPETITORS?

DEVELOPING AN IP STRATEGY

MAIN ROLES OF AN IP STRATEGY

TO DRIVE A COMPANY’S IP PROCESSES IN A SUSTAINABLE WAY TO CREATE IP HAVING MAXIMUM BUSINESS VALUE
TO GUIDE DECISION-MAKING FOR IP MATTERS
TO CONNECT YOUR IP TO YOUR BUSINESS

DEVELOPING AN IP STRATEGY

GOALS OF AN IP STRATEGY

MAXIMIZE BUSINESS VALUE OF YOUR IP
GENERATE MORE, HIGHER QUALITY IP
MINIMIZE BUSINESS VALUE OF OTHERS’ IP
INCREASE EFFICIENCY OF IP PROCESSES
RAISE LEVEL OF IP SOPHISTICATION
INCREASE MARKET SHARE
AVOID IP LITIGATION
ASSIST IN EXECUTING BUSINESS PLAN

DEVELOPING AN IP STRATEGY

IP ISSUES

HOW IS THE STRENGTH OF IP DETERMINED?
HOW IS THE BUSINESS VALUE OF IP MEASURED?
HOW DOES ONE CREATE BULLET-PROOF IP?
HOW DOES A COMPANY DEAL WITH COMPETITORS’ BOGUS IP? WEAK IP? STRONG IP?
WHAT IP PROCESSES SHOULD A COMPANY USE?
HOW DOES A COMPANY SUSTAIN ITS IP EFFORTS?
HOW DOES A COMPANY KNOW WHAT TO PATENT?
HOW TO ACHIEVE IP GOALS WITH LIMITED RESOURCES?

DEVELOPING AN IP STRATEGY

IMPLEMENTATION CONSIDERATIONS

NEED TO KEEP INVENTING AHEAD OF COMPETITION; OTHERWISE, VALUE OF CORE IS ERODED
IMPLEMENTING WILL LEAD TO ADDITIONAL IP
NEED PROCESS TO CAPTURE, DOCUMENT AND REVIEW
SOME IP MAY BE TRADE SECRET IP
PROSECUTION OF PENDING APPLICATION

DEVELOPING AN IP STRATEGY

IMPLEMENTATION CONSIDERATIONS

PROSECUTION OF PENDING APPLICATION
MANAGE SO THAT CLAIMS MEET BUSINESS GOALS

PRIOR TO ISSUANCE OF PATENT

DEVELOPING AN IP STRATEGY

IMPLEMENTATION CONSIDERATIONS

COMPETITORS MIGHT “PATENT AROUND”

DEVELOPING AN IP STRATEGY

IMPLEMENTATION CONSIDERATIONS

USE DEFENSIVE PUBLICATIONS

PUBLISH IMPROVEMENTS AROUND THE CORE

PREVENTS OTHERS FROM PATENTING AROUND
OTHER FREE TO USE IMPROVEMENTS,

BUT USELESS WITHOUT THE CORE PATENT

PUBLISHING OPTIONS

THE USUAL TECHNICAL PUBLICATIONS
US PATENT APPLICATION PUBLICATION

DEVELOPING AN IP STRATEGY

IMPLEMENTATION CONSIDERATIONS

PATENT AROUND THE CORE

ELECTRONICS, OPTICAL, SOFTWARE, ETC.
USE CIP APPLICATIONS FROM EXISTING APPLICATION
FILE NEW APPLICATIONS
CREATE A PATENT PORTFOLIO

DEVELOPING AN IP STRATEGY

IMPLEMENTATION CONSIDERATIONS

LICENSING

E.G., TRANSLUCENT MATERIAL

DEVELOPING AN IP STRATEGY

PRODUCT CLEARANCE -CAN AVOID INFRINGEMENT IF YOU:

KNOW THE IP SPACE
PERIODICALLY MONITOR THE IP SPACE
PERFORM PRODUCT CLEARANCES
HAVE IP WORTH ENFORCING

DEVELOPING AN IP STRATEGY

INFRINGEMENT LITIGATION RISK?

FIRST, NEED TO ASSESS INFRINGEMENT
MUST SEEK OPINION OF COUNSEL
DON’T ASSUME INFRINGEMENT W/O PROPER LEGAL ANALYSIS
ASSESS VALIDITY OF PROBLEMATIC CLAIMS

DEVELOPING AN IP STRATEGY

OPTIONS IN THE FACE OF BOGUS OR WEAK PATENT

IGNORE / WHAT ARE THE CHANCES OF BEING CAUGHT?
GET A WELL-INFORMED VALIDITY OPINION FROM ATTORNEY
RE-EXAMINATION BY USPTO
LICENSE FOR NOMINAL FEE AND FAVORABLE TERMS
DESIGN AROUND

DEVELOPING AN IP STRATEGY

DESIGNING AROUND PATENTS

WATCH FOR PATENTEE SEEKING REISSUE PATENT
ELIMINATE CLAIM ELEMENT IN ITS ENTIRETY
USE AN “EQUIVALENT” ELEMENT GIVEN UP IN PROSECUTION HISTORY
EVALUATE RANGE OF EQUIVALENTS AND AVOID
ADOPT TECHNOLOGY DISCLOSED BUT NOT CLAIMED

DEVELOPING AN IP STRATEGY

DESIGNING AROUND PATENTS

INVOLVES INTENSE SCRUTINY OF PATENT
INTERPRETATION OF CLAIMS
DETAILED REVIEW OF FILE HISTORY
REQUIRES ASSISTANCE OF ATTORNEY
COORDINATION OF ATTORNEY AND TECHNICAL STAFF
COSTLY BUT GENERALLY WORTH IT WHEN COMPARED TO LITIGATION COSTS AND/OR LICENSING COSTS

IP VALULATION

BASIC IP VALUATION APPROACHES

COST APPROACH
MARKET APPROACH
INCOME APPROACH
RELIEF-FROM-ROYALTY APPROACH

IP VALULATION

DETERMINING ROYALTY

ANALYTICAL APPROACH

IMPLEMENTING AN IP STRATEGY

THE SIX KEYS TO SUCCESS

COMMITMENT
RESOURCES
CHANGE
EDUCATION
INTEGRATION
TOOLS

IMPLEMENTING AN IP STRATEGY

COMMITMENT

CEO & SENIOR MANAGEMENT BUY-IN

IMPLEMENTING AN IP STRATEGY

RESOURCES

IMPLEMENTATION TAKES T.I.M.E.

CAN ONLY DO WHAT YOU CAN AFFORD AND SUPPORT
RESOURCE ISSUES = BIGGEST OBSTACLE
MAY REQUIRE RESOURCE BALANCING/REALLOCATION

IMPLEMENTING AN IP STRATEGY

IT IS ALMOST ALWAYS WORTH AVOIDING LITIGATION

BY AVOIDING INFRINGING OTHERS’ IP
BY BEING READY TO LICENSE OR CROSS-LICENSE
BY ACHIEVING AN APPROPRIATE LEVEL OF IP SOPHISTICATION

EXCEPTIONS

OUTRIGHT EXTORTION
ROCK-SOLID CASE AND HUGE UPSIDE

LITIGATION

WIN THE CASE AT LEAST COST?

CONTINGENT FEES?

EARLY TRIAL VS. INTERIM ORDERS

VENUE SELECTION

DAMAGES VS. INJUNCTIVE RELIEF

MARKET SHARE AND “EXPENDABLE” IP

LITIGATION

APPROXIMATE FEES AND COSTS PATENT………....$1,000,000 TO $5,000,000 TRADE SECRET…$500,000 TO $1,000,000 TRADEMARK……$300,000 TO $600,000

LITIGATION

WHAT DO YOU KNOW ABOUT YOUR TARGET?

FINANCIAL STRENGTH
LITIGATION REPUTATION
TARGET’S OWN IP

LITIGATION

HOW DID TARGET’S PRODUCT COME TO HAVE TARGETED FEATURE?

EMPLOYEE HIRE?
REVERSE ENGINEER?
LICENSE OR OTHER RESTRICTION?
INDEPENDENT DEVELOPMENT?

LITIGATION

EXEMPLARS/SAMPLES
MARKETING AND ADVERTISING MATERIALS
INFORMATION FROM WEBSITES

LITIGATION

WHAT ARE THE EXPECTED COUNTERCLAIMS?

PATENT MISUSE/ANTITRUST
UNFAIR COMPETITION
PATENT INFRINGEMENT COUNTERCLAIMS
UNENFORCEABILITY OF PATENT (INEQUITABLE CONDUCT)
TRADE SECRET MISAPPROPRIATION
TRADEMARK/TRADE DRESS

LITIGATION

EX PARTE VS. INTER PARTES REEXAMINATION

Ex Parte Inter Partes
Can be used any issued patent Only for issued patents with filing date on or after 11/29/1999
Initiated by anyone Initiated by third party
Requires substantial new question of patentability based on patents or printed publications Requires substantial new question of patentability based on patents or printed publications
If ordered, proceedings are ex parte in nature Third party requester can submit comments after patent owner’s response to each office action
No Preclusive effect Preclusive effect

LITIGATION

GENERAL ISSUES

CLAIM CONSTRUCTION
WILLFULNESS
DECLARATORY JUDGMENT

LITIGATION

DISCOVERY ISSUES

DOCUMENT RETENTION ISSUES
FREEZING OPPONENTS’ DOCUMENTS
MIRRORING HARD DRIVES/FORENSIC ISSUES
E-MAIL DUPLICATION

LITIGATION

WHO ARE THE POTENTIAL EXPERTS?

PERSONAL REFERRALS
JURY VERDICT SERVICES
REPORTED CASES
PROFESSIONAL DIRECTORIES
INTERNET
PATENTS

LITIGATION

AUDITIONING PROSPECTIVE EXPERTS

THE EXPERIENCED EXPERT
THE INEXPERIENCED EXPERT

LITIGATION

  • A COURT’S LOCAL RULES GOVERN THE ENE PROCESS.
  • TYPICALLY, THE PROCESS INVOLVES MAKING A PRESENTATION TO A COURT APPOINTED NEUTRAL WHO RENDERS A NONBINDING OPINION.
  • THE GOAL OF ENE IS TO GENERATE A REALISTIC OBJECTIVE ASSESSMENT OF THE CASE AND TO PROVIDE A “REALITY CHECK” FOR THE LAWYERS AND PARTIES.
  • THE MEDIATOR MAKES NO DECISIONS ON THE MERITS AND HAS NO AUTHORITY TO MAKE BINDING DECISIONS FOR THE PARTIES.
  • THE KNOWLEDGE GAINED BY A NEUTRAL DURING MEDIATION IS PROTECTED BY THE MEDIATION PRIVILEGE.

  • ARBITRATION IS ONE OF THE MORE FORMAL ADR TECHNIQUES.
  • ARBITRATION INVOLVES A HEARING PRESIDED OVER BY A ONE OR THREE MEMBER ARBITRATION PANEL.
  • THE PANEL RENDERS A DECISION REGARDING THE CASE, WHICH CAN EITHER BE BINDING OR NONBINDING UPON THE PARTIES.

LITIGATION – REAL LIFE

A coin operated amusement device comprising means defining a coin track to guide a rolling coin in a predetermined path, a payoff wheel positioned adjacent to said path and defining at least one payoff position at an angular position on said wheel, means to rotate said wheel on the axis of said wheel, and means to determine when a coin rolling in said path passes said wheel opposite said payoff position.

INTELLECTUAL PROPERTY KNOW HOW AND WHY

LITIGATION – REAL LIFE

INTELLECTUAL PROPERTY KNOW HOW AND WHY

LITIGATION – REAL LIFE

slidably engaging (rolling v. sliding)

PATENT INFRINGEMENT OF AN INTEGRATED COLUMN AND PILE

Issues:

  1. Contractor creates improvement as part of a VECP
  2. State uses improvement on subsequent projects
  3. Royalty determination

INTELLECTUAL PROPERTY KNOW HOW AND WHY

LITIGATION – REAL LIFE

TM INFRINGEMENT

Gulf v. Gull

INTELLECTUAL PROPERTY KNOW HOW AND WHY

LITIGATION – REAL LIFE

TM INFRINGEMENT

Surf Chick v. Chica Surf