©2006 Genworth Financial, Inc. All rights reserved. Finding and Managing Intellectual Property...
-
Upload
zoie-mullenax -
Category
Documents
-
view
212 -
download
0
Transcript of ©2006 Genworth Financial, Inc. All rights reserved. Finding and Managing Intellectual Property...
©2006 Genworth Financial, Inc. All rights reserved.
Finding and Managing Intellectual Property Assets2006 Virginia State Bar Meeting
2
Keys for a Successful Intellectual Property Program• Identify
• Protect
• Leverage
• Respect
3
Four Basic Types of Intellectual Property (IP)
• Trademarks – branding – protect corporate good will
• Copyright– protect unauthorized copying of software – not function
• Trade Secrets– protect secret processes
• Patents– monopoly on functionality
4
Trademarks
TM®
SM
5
What is a Mark?
• Any word, name, symbol or device
• Serves as an indication of origin
• Houses goodwill
• Can be common law or federally registered
6
Why are Trademarks Important?
• Brand identity is a valuable corporate asset
• Need to control trademarks both internally and by third parties
• Product naming should include trademark search to avoid infringement
7
Copyrights
©
8
Copyright Law
A U.S. copyright protects original works of authorship which have been fixed in a tangible medium of expression.
9
A Copyright Protects
• Computer programs
• Musical works
• Dramatic works
• Pantomime and choreographic works
• Pictorial and graphic works
• Sculptural works
• Literary works
• Motion pictures
• Sound recordings
• Architectural works
10
Copyright Owner May Control
• Reproduction
• Distribution
• Adaptation
• Public display
• Public performance
11
Why Important
• We need to protect our copyrights– Sales materials, software, training materials
• Respect the copyrights of others– Photos, music, software, print media
– Use only with appropriate permission
12
Patents
13
What Is a Patent?
• The right to exclude others from making, using, selling or offering to sell
• Viewed favorably by courts
• Patent portfolios = a strong company asset
14
U.S. Patent Requirements
• § 101 – patentable subject matter
• § 102 – novelty
• § 103 – non-obviousness
15
§101 - Patentable Subject Matter
• New and useful process, machine, manufacture, or composition of matter
• Any new and useful improvement
16
Examples of Software Features that are Patentable• Overall System/Method
• New Functions/Processes (Steps)
• New Implementation Of Existing Functions/Processes
• Graphical User Interface
• Algorithms/Implementation of Algorithms
• Data Structures
• Objects
• Neural Networks
17
Patentability of Business Methods
• State Street Bank case clarified that "business methods" are patentable
• Business methods are not required to be computer-implemented in order to be patentable under U.S. law (European protection may differ)
18
Considerations for Filing for Patents on Business Methods• Would you be able to detect if others were infringing?
• What is the value to the company of the method?
• Will the method be used in a commercial product/service?
• Are there licensing opportunities?
19
§102 - Novelty
• Known or used by others, or described in a publication before date of invention
• “Public use” or “on sale” more than 1 year before U.S. filing date - disclosure
• Abandonment, concealment
• Important distinctions between US and non-US regimes
20
Examples of Events That May Start §102 Grace Period• Publication of idea on Internet, in trade journals
• Disclosure to third party for purposes of commercialization
• Offering system for sale in this country
• Publicly displaying the system such as at a trade show or convention
21
§103 - Non-obviousness
• Non-obvious to a person of “ordinary skill in the art”
• At the time of invention
22
Document Inventive Activity
• Keep accurate log books and other materials to demonstrate dates of conception and reduction to practice
• Importance of “diligence”
• Experimental or environmental testing
23
Confidentiality Agreements
• Must be signed by all outside parties
• Should clearly identify subject matter – specific better than general
• Helps avoid disclosure problems
24
Independent Contractors
• Use engagement letters
• Use confidentiality agreements
• Use assignment agreements - ensure that any inventions discovered by an independent contractor working for Genworth becomes Genworth’s property
25
In contrast….Trade Secrets as Alternative to PatentsAny formula, pattern, device or combination of information which is used in a business and, because it is unknown to others, gives the business a competitive advantage.
26
Considerations for Filing for Patents on Business Methods• Should the "business method“ be kept as a trade secret?
– Can others detect it?
– Can you maintain it in secrecy?
– What is the useful life of the business method?
– Are competitors likely to file for patents on similar methods?
27
Strategies for Trade Secret Protection
• Identify Genworth’s valuable trade secrets
• Written trade secret protection policy
• Educate employees about trade secret protection policy and monitor compliance
• Restrict trade secret access to employees with a legitimate, business related, need to know
• Mark documents containing trade secrets
• Physically isolate and protect most important trade secrets
28
….Strategies for Trade Secret Protection
• Maintain computer secrecy
• Restrict public access to your facilities
• Deal cautiously with third parties - use confidentiality agreements
• Be careful and consistent with unsolicited submissions
29
Strategic Reasons for Implementing Formal IP Program
30
Offensive Reasons
• Market advantage – Leverage exclusive rights to Genworth’s developments, sue to obtain injunction and/or damages
• Injunctions – Ability to shut down infringer
• License to obtain royalties or other business benefit
• Marketing advantage – real/apparent
• Enhance/maintain first mover advantage
• Protect investment in R&D
• Occupy field in and/or surrounding key standards
31
Defensive Reasons
• Defend against patents of competitors
• Cross license if accused of infringing
• Counter sue if sued – use as bargaining chip
• Bolster settlement position
• Partners/investors want to know if “idea” is protected
• Competitor who independently develops idea can obtain IP rights
32
Importance of Formal IP Program
• Convey importance of IP to all employees
• Educate employees on steps necessary to benefit from IP/avoid loss of rights/reduce liability
33
Goals of IP Program
• Protect technology and market position
• Exploit IP – Use as a business tool/source of revenue
• Avoid or reduce liability
34
Essentials for Successful IP Program
• Technical – must identify inventions; comply with procedures
• Business/Sales/Marketing – must be aware of what can cause loss of rights; know about technology that can be exploited
35
The IP Program
• Create and distribute/make accessible patentability and program reference
• Use online collaborative workroom to enhance inventor/counsel interaction
• Provide access to and instructions for completing invention disclosure forms
• Use procedure for receiving, logging and tracking invention disclosure forms
• Involve key business personnel– IP council
– Management support
36
IP Program Considerations
• Employee issues (existing employees, new hires, departing employees)
• Contractors and Consultants (ensure ownership of IP, confidentiality, etc.)
• Manufacturers, distributors, joint ventures
• Indemnity
• Mechanisms for identifying IP– Submission procedures
– Status chart
37
IP Program Considerations
• Documentation (notebooks, invention disclosures, etc.)
• Pre-release reviews – avoid loss of rights (speeches, publications, trade shows, etc.)
• Avoiding liability
• Insurance
• Clearance process for new products and processes – non-infringement options
38
Identifying and Harvesting Inventions
• Identify business units that may generate inventions
• Identify key personnel in each business unit to monitor handling of inventions
• Educate and train key personnel regarding patentability and key issues
• Provide seminars for other personnel to enlighten and inspire
• Reward and recognition program for inventors
39
Identify Existing IP
• For existing IP that is not protected, immediate attention should be directed to determining whether and how it may be protected, and if protectable, deciding whether to protect it.
• Critical to do this to avoid inadvertent loss of rights.
40
Identifying IP
• Identify IP being developed and any timing issues
• Identify key areas of development early – sometimes broad ideas can be protected and details added later
41
IP Protection – Implementation
• Review audit list
• Develop strategy (what to protect, how, etc.)
• Prioritize, group, budget
• Decide
• Prepare and file applications
• Avoid infringement of third party rights
• Get indemnities
• Consider insurance
• Conduct clearance search, obtain opinion if necessary
42
IP Protection – Implementation
• For mergers, acquisitions, investment, partnerships: IP due diligence can be critical to:– Ensure protection
– Identify potential liability
– Valuation
43
IP Protection - Respect
• Respect the IP rights of third parties
• Educate associates
• Documented corporate guidelines
• Part of Integrity Program
44