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Protection of Intellectual Property: Safeguarding Your Ideas. Sharon R. Klein, Esq. (949) 567-3506 [email protected] IP Protection Preliminaries. Maintain Confidences Ownership IP asset/valuation Competitive advantage. Basic Forms of Intellectual Property (IP). Trade secrets

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protection of intellectual property safeguarding your ideas
Protection of Intellectual Property:

Safeguarding Your Ideas

Sharon R. Klein, Esq.(949) [email protected]

ip protection preliminaries
IP Protection Preliminaries
  • Maintain
    • Confidences
    • Ownership
    • IP asset/valuation
    • Competitive advantage
basic forms of intellectual property ip
Basic Forms of Intellectual Property (IP)
  • Trade secrets
  • Confidential information
  • Trademarks
  • Copyrights
  • Patents
what is a trade secret
What is a Trade Secret?
  • Formula, pattern, business information, customer information, methodology, strategic plans, etc.
  • Commercial value
  • Unlimited duration as long as secret
  • Automatically granted - no legal action required
trade secret notice
Trade Secret Notice
  • This [program, manual, etc] is proprietary to Pepper and may be used only as authorized in a license agreement controlling such use
  • For RFP Responses and confidential product information, the notice should read as follows:
    • This [manual, document] is proprietary to Pepper and may be disclosed to third parties only with the prior written permission of Pepper
what is confidential information
What is Confidential Information?
  • Trade secret
  • Oral or in writing
  • Given in confidence
what is not confidential
What is Not Confidential?
  • Public domain
  • Already known
  • Independently obtained
  • Confidentiality and Non Disclosure
  • Work for Hire
  • Non Competitive
  • Assignment of Inventions
what is a trademark
What is a Trademark?
  • Any word, design or device which identifies and distinguishes products/ services of one company from another
  • Rights originate upon use in U.S.
  • No “significant” legal action required
what is a trademark10
What is a Trademark?
  • Types of Marks - There are three types of marks, which are used as follows:

® - the mark has been registered with the Patent Office; it may be a service mark or a trademark

 - an unregistered trademark; used for equipment, software, etc

SM - an unregistered service mark; used for services and some software

types of marks
Types of Marks?
  • Word marks
  • Design marks
  • Slogans
  • Initials
  • Trade dress
what is a copyright
What is a Copyright?
  • Original work of authorship
  • Software code, manuals
  • Exists from the moment created
  • Protects “expression” not functionality
  • No “significant” legal action required
  • Compilation protected under copyright
    • Order, form, arrangement
  • Not substance of database
what is a patent
What is a Patent?
  • Legal right to a new, innovative idea or invention
  • Entitles inventor to exclude others from making, using or selling
  • Must be granted by government
business method patent
Business Method Patent

Patent which protects the practical application of a formula, calculation or process to produce a useful, concrete and tangible result.

ip pitfalls
IP Pitfalls
  • Incomplete Documentation
  • Sloppy Operating Procedures
  • Lack of Training
  • No Culture of Confidentiality
ip ownership
IP Ownership
  • Patents are owned by the inventors
    • Unless assigned to company or other entity
  • Copyrights are owned by the creators
    • Unless assigned or created by an employee as a “work for hire”
  • Multiple creators/developers = joint owners
risks of joint ip ownership
Risks Of Joint IP Ownership
  • Each party has full rights
    • Unless one party agrees to give up rights, all parties can use the invention/work and license it to others
  • Difficult to enforce rights against others
    • All owners must agree to be co-plaintiffs in infringement litigation
  • For patent applications, difficult to prosecute with USPTO
research funded by u s government agencies
Research Funded By U.S. Government Agencies
  • Must disclose inventions to the funding agency
  • Must file a patent application
  • Funding agency retains a license
  • Funding agency has “march-in rights”
  • Must (try to) manufacture the invention in the U.S.
action plan
Action Plan
  • Prioritize the Innovations
  • Decide on the Best Suited IP Tool
  • Inform and Educate People
  • Create and Follow Standard Operating Procedures
  • Seek Advice on Documentation
  • File for Relevant Protections