Intellectual Property And Business Process

Implications Involved With Adopting Next

Generation Technologies And Business

Models For Optimizing Revenues

Presented by Daliah Saper

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:

TrademarksCopyrightsTrade SecretsCorporateInternet and Cyber SpaceEntertainment

DefamationIP LicensingAdvertisingMediaSponsorship 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 ….

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.)

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:1. Help you conduct an IP “Audit”2. Register your marks3. Assist you with protection and

enforcement strategies.4. Create the proper business structure and

appropriate contracts so that you don’t find yourself without any rights.

Questions?

Contact Info: www.saperlaw.com