Protecting IP: Patents and Trade Secrets

1. Protecting IP: Patents and Trade Secrets

2. Concept Map:

3. Company Background: midsized paper distribution company employs 84 people and has 6 branches based in the Pacific Northwest one of a kind distribution pattern created a new loading machine

4. What they want to know: • What steps do we need to take to make our channels a certified trade secret that no one else can copy? • What suggestions can be made on how to implement a confidentiality contract in the company?  • What do we need to do in order to patent this new machine? • Is the patent or idea able to be sold if we chose?

5. PATENTS: • an exclusive right granted by the federal government to the inventors of new and useful machines, articles, substances or processes. • Most technically demanding branch of IP • Lasts 20 years • 3 types of patents

6. Type of Patents: • Utility • Provisional • Non-provisional • Design • Plant • Provisional • Non-Provisional

7. How to get a patent: • Not a quick or cheap process • Has anyone else beat you to it? • Consult a qualified and experienced patent attorney • USPTO

8. Applying for a Patent: non-provisional utility patents should include these elements: • Utility Patent Application Transmittal Form or Transmittal Letter • Fee Transmittal Form and Appropriate Fees • Application Data Sheet • Specification (with at least one claim) • Drawings (when necessary) • Executed Oath or Declaration • Nucleotide and/or Amino Acid Sequence Listing (when necessary)

9. How much does it cost? • Maintenance Fees: • 3.5 yrs: $930 • 7.5 yrs: $2,360 • 11.5 yrs: $3,910 • Utility patent application filing fee • $1200 - $1500

10. Fun Facts of the day: • Each year the USPTO receives approximately 350,000 patent applications • Last year there was a count of 1,877 patents in Oregon

11. Top five Patent recipients in the US: • IBM …………………..2,941 • Canon ………………1,828 • HP ……………………1,797 • Matsushita ………….1,688 • Samsung ……………1,641 OSU patent count

12. Familiar patents: • Amazon.com : one-click method • Apple: iPod scrolling wheel • Tabasco Sauce: since 1870 • Microscope

13. Trade Secrets: • Busch's Baked Beans

14. Trade Secrets overview: Trade secrets defined and important aspects Two main components of trade secrets: Uniform Trade Secrets Act of 1984 – uses and importance Examples of Trade Secrets Non-compete clause importance and application Dunder Mifflin: trade secrets

15. Trade Secrets defined: Trade secrets are a: formula pattern device compilation of information program method technique or process Used by one’s business to gain an opportunity to “obtain an advantage over competitors.”

16. Trade Secrets: Non-compete clause importance and application Dunder Mifflin: trade secrets

17. Non-Compete Clause: • used in contract law under which one party (usually an employee) agrees to not pursue a similar profession or trade in competition against another party (usually the employer)

18. Non-Compete Clause: • upon his or her termination or resignation, the employee might begin working for a competitor or start a business, and gain competitive advantage by abusing intimate knowledge of the employer's operations • release trade secrets or sensitive information such as customer/client lists, business practices, upcoming products, and marketing plans.

19. Important aspects of Trade Secrets: Protection of existing confidential and proprietary business information Employees want to start competing business Trade secrets are confidential and proprietary Patents and trademarks are public

20. Uniform Trade Secrets Act of 1984: 41 states adhere to this legislation Defined as “information, including a formula, pattern, compilation, program, device, method, technique or process, that” Derives economic value Worth keeping secret (“Reasonable under the circumstances to maintain its secrecy”)

21. Uniform Trade Secrets Act of 1984: Reasonable efforts Misappropriation of Trade secrets “Reasonable efforts have been made to ensure the secrecy of the alleged trade secret.”

22. Examples of Trade Secrets: Customer lists: “A customer list possesses economic value when the secrecy of that information provides the owner of the customer list with a substantial business advantage.” Software: “Invested time and money to develop and benefit from the software” Coca Cola example

23. Coca Cola Trial proves importance of Trade Secrets • Joya Williams, 42 was a secretary at Coca-Cola • Williams stole confidential documents and samples of products that hadn't been launched by Coca-Cola • Attempted to sell Coke's trade secrets to rival PepsiCo Inc. for at least $1.5 million.

24. Coca-Cola’s Trial • sentenced to eight years in prison for conspiring to steal trade secrets from the world's largest beverage maker • "This is the kind of offense that cannot be tolerated in our society.“ - U.S. District Judge J. Owen Forrester • ordered to pay $40,000 restitution

25. Selling intellectual property rights: patents and trade secrets As trade secrets and patents are property rights you are allowed to license and sell them.

26. Our recommendations for Dunder Mifflin: Find out if any one else has already patented your machine Seek out a patent attorney to assist you Create a contract for employees to secure your trade secrets Be cautious when visitors come to tour the distribution center

27. Preguntas?(“Questions” in spanish)