IP Strategies for IP Strategies for Start-Up CompaniesStart-Up Companies
Scott HerveyScott HerveyWeintraub Genshlea ChediakWeintraub Genshlea Chediak
Law CorporationLaw Corporation400 Capitol Mall, 11400 Capitol Mall, 11thth Floor Floor
Sacramento, CA 95814Sacramento, CA 95814www.weintraub.comwww.weintraub.com
[email protected]@weintraub.com(916) 558-6065 (direct dial)(916) 558-6065 (direct dial)
© Weintraub Genshlea Chediak 2007© Weintraub Genshlea Chediak 2007
What is Intellectual Property?What is Intellectual Property? The intangible assets The intangible assets
of a companyof a company– May comprise the May comprise the
majority of the value of a majority of the value of a start-up companystart-up company
– The competitive The competitive advantage of the advantage of the companycompany
– The reputation/goodwill The reputation/goodwill of the companyof the company
Types of Intellectual PropertyTypes of Intellectual Property
PatentsPatents– InventionsInventions– DesignsDesigns
TrademarksTrademarks– BrandsBrands– Trade namesTrade names– Trade dressTrade dress
CopyrightsCopyrights– PhotographsPhotographs– SoftwareSoftware– Web pagesWeb pages– DatabasesDatabases
Trade SecretsTrade Secrets– Secret InventionsSecret Inventions– MethodsMethods– Customer ListsCustomer Lists– ToolsTools
PatentsPatents
What are Patents?What are Patents? Invention protectionInvention protection
– Complete and operative ideaComplete and operative idea
A governmental grant of rights to exclude others for A governmental grant of rights to exclude others for period of yearsperiod of years
Public disclosure of ideaPublic disclosure of idea
Public policy to stimulate inventionPublic policy to stimulate invention– Legal monopolyLegal monopoly– Education of marketplaceEducation of marketplace
What are Patents?What are Patents?
U.S. grants 20 year rights to exclude others U.S. grants 20 year rights to exclude others
– 14 years for design patents14 years for design patents
– From filing dateFrom filing date
– To exclude others from being able to make, use, sell, To exclude others from being able to make, use, sell, offer to sell and import to the U.S.offer to sell and import to the U.S.
Types of PatentsTypes of Patents
Utility (most common)Utility (most common)– New, original, functional, inventionNew, original, functional, invention
DesignDesign– New, original, ornamental designs for articles of New, original, ornamental designs for articles of
manufacturemanufacture– Protects appearance not functionalityProtects appearance not functionality
PlantPlant– Distinct new varietiesDistinct new varieties
Requirements for Utility PatentsRequirements for Utility Patents Invention must:Invention must:
– Be usefulBe useful
– Novel and non-obviousNovel and non-obvious
Does not include inventions that:Does not include inventions that:
– Existed prior to date when inventor conceived the invention, Existed prior to date when inventor conceived the invention, if was diligent in reducing to practiceif was diligent in reducing to practice
– Were disclosed one year before the date of filingWere disclosed one year before the date of filing
Requirements for Utility PatentsRequirements for Utility Patents– Fall within one of five statutory subject mattersFall within one of five statutory subject matters
ProcessProcess
MachineMachine
Article of manufactureArticle of manufacture
Composition of matterComposition of matter
Improvement of inventionImprovement of invention
All patents are not equalAll patents are not equal– Consider claimsConsider claims
Patent ProcessPatent Process
FilingFiling– Patent attorney/Patent agentPatent attorney/Patent agent– Each inventor owns equal Each inventor owns equal andand undivided interest undivided interest– All inventors must sign oath or declaration All inventors must sign oath or declaration – Ownership rights may be assigned or licensedOwnership rights may be assigned or licensed
Provisional FilingsProvisional Filings– Establish early filing dateEstablish early filing date– 12 months to convert to regular filing12 months to convert to regular filing
TrademarksTrademarks
®®
™™
What is a Trademark?What is a Trademark?
Word, saying, logo, Word, saying, logo, brand, sign, mark - even brand, sign, mark - even sound, color, or smellsound, color, or smell
Triggers association in Triggers association in the market with the market with owner/sourceowner/source
What is a Trademark?What is a Trademark?
Means of protecting Means of protecting goodwillgoodwill
The exclusive right to use The exclusive right to use a brand (mark) for a brand (mark) for products or servicesproducts or services
Types of MarksTypes of Marks
Common Law MarksCommon Law Marks– Arises from actual useArises from actual use– Protection in areas of use in Protection in areas of use in
commerce commerce
Registered MarksRegistered Marks– Federal registration Federal registration
(presumed ownership (presumed ownership throughout the nation)throughout the nation)
– State filing also availableState filing also available
Types of MarksTypes of Marks
TrademarksTrademarks Service MarksService Marks Certification MarksCertification Marks Collective MarksCollective Marks Trade Dress Trade Dress Foreign filingsForeign filings
Strength of TrademarkStrength of Trademark
Strength of trademark depends on the nature of Strength of trademark depends on the nature of the mark:the mark:– Fanciful/coined (Kodak)Fanciful/coined (Kodak)– Arbitrary (Yahoo, Apple)Arbitrary (Yahoo, Apple)– Suggestive (Roach Motel)Suggestive (Roach Motel)
Indicates nature quality or characteristicIndicates nature quality or characteristic
– Descriptive (Tahoe Plumbing, Park ‘N Fly)Descriptive (Tahoe Plumbing, Park ‘N Fly) Directly related to meaningDirectly related to meaning
– Generic (Escalator)Generic (Escalator) Common nameCommon name
Strength of TrademarkStrength of Trademark
Descriptive marks are generally not Descriptive marks are generally not registrable unless develop secondary registrable unless develop secondary meaning (acquired distinctiveness)meaning (acquired distinctiveness)
Generic marks are not registrableGeneric marks are not registrable Marks can become generic through usage Marks can become generic through usage
(Aspirin, Jet Way)(Aspirin, Jet Way) Certain marks are denied protection Certain marks are denied protection
(immoral, disparaging, State, etc.)(immoral, disparaging, State, etc.)
Protecting Trademarks Protecting Trademarks
Federal RegistrationFederal Registration– Constructive notice nationwide of the claim to ownershipConstructive notice nationwide of the claim to ownership– Evidence of ownership and priority of useEvidence of ownership and priority of use– Allows registration with US customs to prevent importationAllows registration with US customs to prevent importation– Domain name disputesDomain name disputes
ApplicationApplication– Use or intent to useUse or intent to use– Based on foreign application/registrationBased on foreign application/registration
Protecting Trademarks Protecting Trademarks
Requirements for registrationRequirements for registration
– Must distinguish goods/services from othersMust distinguish goods/services from others– Must not be merely descriptiveMust not be merely descriptive– Must not conflict with other registered mark/cause Must not conflict with other registered mark/cause
confusionconfusion– Examiner will reviewExaminer will review
Protecting TrademarksProtecting Trademarks TM and ® TM and ® Protecting against infringement/confusion Protecting against infringement/confusion
– Strength of markStrength of mark– Proximity of goods/servicesProximity of goods/services– Similarity of marksSimilarity of marks– Evidence of actual confusionEvidence of actual confusion– Marketing channelsMarketing channels– Type of goods and purchaser careType of goods and purchaser care– IntentIntent– Likelihood of expansionLikelihood of expansion
Famous marksFamous marks– Protection from dilution of distinctive quality of markProtection from dilution of distinctive quality of mark– Need not show presence of competition, likelihood of confusion, mistake or Need not show presence of competition, likelihood of confusion, mistake or
deceptiondeception
Internet and Domain NamesInternet and Domain Names
Internet use governed by Internet use governed by same rulessame rules– Similarity of marksSimilarity of marks– Relatedness of goodsRelatedness of goods– Simultaneous use of web as Simultaneous use of web as
marketing toolmarketing tool
Domain name registration Domain name registration
does not establish does not establish trademark rightstrademark rights– Must be commercial useMust be commercial use– Not a mark registrationNot a mark registration
Internet and Domain NamesInternet and Domain Names
““Cyber-squatting” and Cyber-squatting” and “typo-squatting” “typo-squatting” – ACPAACPA– ICANNICANN
CopyrightsCopyrights
What is a copyright?What is a copyright?
Original work of authorship fixed in a Original work of authorship fixed in a tangible mediumtangible medium– Articles, programs, web pages, multi-mediaArticles, programs, web pages, multi-media
No protection of functional aspectsNo protection of functional aspects Exclusive right to reproduce, derivative Exclusive right to reproduce, derivative
works, copy, perform, display, transmit works, copy, perform, display, transmit – Exceptions such as fair use for criticism, Exceptions such as fair use for criticism,
comment, teaching, reportingcomment, teaching, reporting
What is a copyright?What is a copyright?
Generally lasts for life of author plus 70 yearsGenerally lasts for life of author plus 70 years Joint works are owned by both authors equallyJoint works are owned by both authors equally Copyright noticeCopyright notice
– ©, name, and year©, name, and year– Circled “p” for sound recordingsCircled “p” for sound recordings
Can register at later timeCan register at later time Registration allows attorney’s fee recovery, statutory Registration allows attorney’s fee recovery, statutory
damages, etc.damages, etc.
Copyrights and Employees/AgentsCopyrights and Employees/Agents
Generally, author has ownership. Under Work for Generally, author has ownership. Under Work for Hire doctrine:Hire doctrine:– A copyrighted work prepared by an employee within the A copyrighted work prepared by an employee within the
scope of employment is owned by the employerscope of employment is owned by the employer– Certain types of work commissioned from an Certain types of work commissioned from an
independent contractor with a written agreement may be independent contractor with a written agreement may be designated as “work for hire” owned by commissioning designated as “work for hire” owned by commissioning partyparty
– Other types of work may be assignedOther types of work may be assigned Need written assignment documentation with all Need written assignment documentation with all
employees/agentsemployees/agents
Work for Hire Work for Hire
Effect of relying on oral agreement or not Effect of relying on oral agreement or not using such language…using such language…– The contracting party owns nothing more than a The contracting party owns nothing more than a
copy of the workcopy of the work– Does Does NOTNOT own the Copyright in the work. own the Copyright in the work.
Fair UseFair Use
Fair use of a copyrighted work includes Fair use of a copyrighted work includes using the material for:using the material for:– criticismcriticism– commentcomment– news reportingnews reporting– teachingteaching– scholarshipscholarship– researchresearch
Fair UseFair Use
Under 17 U.S.C. § 107, whether an act of use or copying of Under 17 U.S.C. § 107, whether an act of use or copying of a work constitutes fair use is determined by the following a work constitutes fair use is determined by the following four factors:four factors:– The nature of the use (commercial or nonprofit);The nature of the use (commercial or nonprofit);– The nature of the work;The nature of the work;– The amount and substantiality of the portions taken from the The amount and substantiality of the portions taken from the
copyrighted work;copyrighted work;– The effect on the potential market for the copyrighted work, as well The effect on the potential market for the copyrighted work, as well
as other actors under the rule of reason analysis.as other actors under the rule of reason analysis. Parody may also be claimed as fair use, even if the parody Parody may also be claimed as fair use, even if the parody
is commercialis commercial
Trade SecretsTrade Secrets
What is a Trade Secret?What is a Trade Secret?
Various types of information (formula, pattern, Various types of information (formula, pattern, compilation, program, device, method, techniques, compilation, program, device, method, techniques, process)process)– derives independent economic value from not being derives independent economic value from not being
generally known or readily ascertainable by proper generally known or readily ascertainable by proper means by persons who can derive economic value means by persons who can derive economic value
– reasonable efforts to maintain its secrecyreasonable efforts to maintain its secrecy A protected idea that provides a competitive A protected idea that provides a competitive
advantage in a marketadvantage in a market More than one person may hold a trade secretMore than one person may hold a trade secret
What is a Trade Secret?What is a Trade Secret?
No prohibition on reverse engineering (if lawfully obtain No prohibition on reverse engineering (if lawfully obtain product)product)
No prohibition on use or disclosure if gain access by proper No prohibition on use or disclosure if gain access by proper means (invention, published literature, website)means (invention, published literature, website)
Can be alternative to patent protectionCan be alternative to patent protection– Patent can be rejected or invalidatedPatent can be rejected or invalidated– Patent protection may not be availablePatent protection may not be available– May not want to disclose an idea and educate the competitionMay not want to disclose an idea and educate the competition– No time limit to protectionNo time limit to protection– Funding availability may preclude patent protectionFunding availability may preclude patent protection
Trade Secret MisappropriationTrade Secret Misappropriation
Acquisition by improper means (known or reason to know) Acquisition by improper means (known or reason to know) or under circumstances with duty to maintain secrecy/limit or under circumstances with duty to maintain secrecy/limit use (may include acquired by accident or mistake)use (may include acquired by accident or mistake)
Disclosure or use without actual or implied consentDisclosure or use without actual or implied consent
Trade Secret MisappropriationTrade Secret Misappropriation
Must use reasonable efforts under circumstances Must use reasonable efforts under circumstances to protectto protect– Non-disclosure agreementsNon-disclosure agreements– Employee trainingEmployee training– Disclose on a need to know basisDisclose on a need to know basis– Limit access and availabilityLimit access and availability– Other internal controlsOther internal controls
Policy of marking problematic if not followedPolicy of marking problematic if not followed
Departing EmployeesDeparting Employees
Very significant area of trade secret Very significant area of trade secret disputes. Actions for injunction or special disputes. Actions for injunction or special damages if show willful and malicious.damages if show willful and malicious.– Customer listsCustomer lists
Employer ownership of trade secretsEmployer ownership of trade secrets– If relates to business of employer (for inventor) If relates to business of employer (for inventor)
or developed on company time (other or developed on company time (other employees)employees)
Departing EmployeesDeparting Employees
Public policies allowing competitionPublic policies allowing competition
– California prohibition of employee covenants not California prohibition of employee covenants not to compete under B&P Code 16600to compete under B&P Code 16600
– Other states have varying levels of prohibitionsOther states have varying levels of prohibitions
FeaturesFeatures Trade SecretTrade Secret Patent (Utility)Patent (Utility) CopyrightCopyright TrademarkTrademark
Protected InterestProtected Interest Business Info.Business Info. Functional Functional InventionsInventions
Expression Expression Embodied in Embodied in Fixed MediumFixed Medium
Consumer Consumer Recognition & Recognition & Related GoodwillRelated Goodwill
Requirements for Requirements for ProtectionProtection
Not Known; Not Known; Valuable; Valuable; Maintained as Maintained as SecretSecret
New, Useful, Non-New, Useful, Non-obvious, Proper obvious, Proper Subject MatterSubject Matter
OriginalityOriginality Use in Use in CommerceCommerce
Disclosure Disclosure RequiredRequired
NoNo YesYes YesYes YesYes
Term of Term of ProtectionProtection
Potentially Potentially Indefinite if Indefinite if Information Information Remains SecretRemains Secret
20 Years Form 20 Years Form Application DateApplication Date
Generally Generally Author’s Life Plus Author’s Life Plus 70 Years70 Years
Potentially Potentially Indefinite if Mark Indefinite if Mark is Used Properlyis Used Properly
Conduct Conduct Prohibited by Prohibited by ProtectionProtection
MisappropriationMisappropriation Making, Using, Making, Using, Selling, Offering to Selling, Offering to Sell, or Importing Sell, or Importing InventionInvention
Copying or Copying or Substantially Substantially Similar WorksSimilar Works
Creating a Creating a Likelihood of Likelihood of ConfusionConfusion
Independent Independent Development Development
Not Prohibited Not Prohibited Prohibited Prohibited May be May be ProhibitedProhibited
ProhibitedProhibited
Reverse Reverse EngineeringEngineering
Not ProhibitedNot Prohibited ProhibitedProhibited InapplicableInapplicable InapplicableInapplicable
Thank YouThank You
Questions?Questions?