Value Driven IP Protection

VALUE-DRIVEN IP PROTECTION: COST-EFFECTIVE STRATEGIES FOR SECURING YOUR INNOVATION Presented by: Clark A. D. Wilson Patent/IP Attorney e: [email_address] [email_address] p: 770.984.2300(w); 404.993.0901(c) LINKEDIN .COM/IN/CLARKADWILSON Brown Bag Program April 2010 © 2010 Gardner Groff, PC – All Rights Reserved

ADVICE FROM THE PAST "If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself; but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess himself of it.” Thomas Jefferson, August 13, 1813 © 2010 Gardner Groff, PC – All Rights Reserved

YOU JUST CONCEIVED A NEW IDEA IDENTIFY WHAT ABOUT IT GIVES YOU A COMPETITIVE ADVANTAGE Apparatus/Process = Patent Software = Patent/Copyright Website = Copyright Know-How = Trade Secret © 2010 Gardner Groff, PC – All Rights Reserved

WHAT TO DO FIRST ? Do not tell anyone except a trusted circle Keep a journal and witness/date each new entry Perform several layers of patent “searching” Google Google Patents US Patent & Trademark Office Search Engine If no closely-related prior art : continue development If close prior art: identify differences and/or improvements © 2010 Gardner Groff, PC – All Rights Reserved

DETERMINE WHICH IP METHODS TO USE PROTECTION: PATENT V. TRADE SECRET What would patent protection provide? Meaningful protection in relevant markets Can infringement be easily detected Will patent issue soon enough Likely breadth of patent scope Could invention be kept secret successfully Could competitor easily reverse engineer Stability/loyalty of employees with high levels of access Strength of your security program surrounding the secret Would competitor likely develop independently © 2010 Gardner Groff, PC – All Rights Reserved

DETERMINE WHICH IP METHODS TO USE PROTECTION: PATENT V. TRADE SECRET, CONT’D… Invention is patentable and has commercial potential… File a Patent Application ASAP Invention is not likely patentable and not important… Trade secret and keep a detailed record of development Invention is patentable but not that important… File an application as practical (defensive position, licensing potential, inventor recognition) Invention is important but not likely patentable… File application if it is novel – commercialization may provide basis for patentability © 2010 Gardner Groff, PC – All Rights Reserved

DETERMINE WHICH IP METHODS TO USE PROTECTION: WHAT ABOUT COPYRIGHT? Original + Creative work Not Functional subject matter Software Code Website content &/or design © 2010 Gardner Groff, PC – All Rights Reserved

HOW TO PROTECT YOUR RIGHT TO PATENT BEFORE PUBLICATION OR OFFER-FOR-SALE File a provisional patent application !!! * 12 month grace period from above acts to file in USA *Outside USA there is no grace period IF DISCLOSURE BEFORE PATENT APP IS UNAVOIDABLE Ensure that the public use is just for “experimental purposes” No complete disclosure of how it works or is made No unrestricted use Requirement of complete return after use Request for comments after use No payment for undefined use by 3 rd party Proof of development of the design Sign a Non-Disclosure Agreement with recipient © 2010 Gardner Groff, PC – All Rights Reserved

HOW TO PROTECT YOUR IP HOW DO YOU PREPARE A PROVISIONAL PATENT APPLICATION A brief description of the state of the art and why it is inadequate A summary of the invention briefly describing alternate embodiments A detailed description enabling a reader to make/use the invention Describe each/every element and/or step with sufficient detail Dimensions/materials/steps & drawings/flowcharts Corresponding description of figures with sequential numbering Alternate embodiments Must support eventual non-provisional claims for full benefits *No claims are necessary, but at least one basic claim may assist with international patent law interpretations. © 2010 Gardner Groff, PC – All Rights Reserved

HOW TO PROTECT YOUR IP HOW DO YOU FILE A PROVISIONAL PATENT APPLICATION Visit: https://sportal.uspto.gov/secure/portal/efs-unregistered Complete the Registration information and upload your application Pay the filing fee ($110) and submit. Receive a confirmation with an application number You are now Patent Pending Reminder : You have 12 months to file a non-provisional application and any international applications Call the Patent Electronic Business Center (866) 217-9197 (toll free) or e-mail [email_address] for specific questions about Patent e-Filing. © 2010 Gardner Groff, PC – All Rights Reserved

HOW TO PROTECT YOUR IP HOW DO YOU PROTECT YOUR CREATION AS A TRADE SECRET Identify information/processes that provides a competitive advantage through the fact that it remains a secret from the public Do not tell anyone!! (i.e., Keep it a secret !) Do not patent, copyright or publish Restrict employee/3 rd party access to proprietary information Require duty of loyalty/secrecy to contracted employees Enforce NDAs Be proactive against any/all unspecified disclosures Mark documents/journals as TRADE SECRET-CONFIDENTIAL © 2010 Gardner Groff, PC – All Rights Reserved

HOW TO PROTECT YOUR IP HOW DO YOU COPYRIGHT CREATIVE WORK Fix the creation (e.g., software code, website design, etc.) in a “tangible medium” (i.e., capable of being copied/transferred) Label all work with: ©Year of Publication & Author Then, if you decide to Register the work with the Copyright Office… Visit www.Copyright.gov Submit a completed application form, a nonrefundable filing fee ($35); and a nonreturnable copy of the work to be registered © 2010 Gardner Groff, PC – All Rights Reserved

HOW DO YOU PROTECT YOUR IP HOW DO YOU COPYRIGHT CREATIVE WORK, CONT’D… Note: Your copies will not be returned (so make several) If you register online using eCO eService, you may attach an electronic copy of your deposit However, even if you register online, you may be required to submit a hard-copy deposit of your work !!! Register work with the Copyright Office no later than 3 months after any publication of the work © 2010 Gardner Groff, PC – All Rights Reserved

WHAT IF YOU NEED HELP TO DEVELOP WHEN HIRING EMPLOYEES AND/OR INDEPENDENT CONTRACTORS Include a clause in the contract that assigns all patent-rights & copyrights in newly-created work to you immediately and permanently Include duties of loyalty/care clauses in employment contracts Do not disclose previous trade secrets to new employees E.g., software developer, engineer, prototype engineers © 2010 Gardner Groff, PC – All Rights Reserved

HOW CAN I TALK TO THIRD PARTIES Non-Disclosure Agreements: specify/limit the purpose of disclosing the invention to a third party (e.g., investment, prototype design, etc.) Third party is then contracted to secrecy Can help preserve secrecy of invention to maintain trade secret and right to patent If decision is to patent, then file application before any NDA and list Patent Pending in the NDA document © 2010 Gardner Groff, PC – All Rights Reserved

PRIOR TO OFFERING MY PRODUCT FOR SALE If you intend to try to offer your invention for sale, make sure you have at least a provisional patent application filed If you have a patent application filed, use “Patent Pending” on any offer for sale Note : An offer for sale initiates the 12 month clock in the USA and may extinguish international patent rights © 2010 Gardner Groff, PC – All Rights Reserved

WHEN TO CONTACT AN IP ATTORNEY If you cannot determine what type of IP you have If you have a trade secret and wish to design a program of protection If you have moved forward in development and have identified a very-close prior-art patent When it is time to file a non-provisional patent application (claims) If you have improved your original design since filing the provisional application If you need to contract with another party for development © 2010 Gardner Groff, PC – All Rights Reserved

Self-education US Patent & Trademark Office: www.uspto.gov US Copyright Office: www.copyright.gov World Intellectual Property Organization: www.wipo.org © 2010 Gardner Groff, PC – All Rights Reserved Websites Books Patent, Copyright and Trademark , by NOLO Patent It Yourself , by NOLO Patent Law Essentials: A Concise Guide , by Durham Edison in the Boardroom , by Davis & Harrison

Clark A. D. Wilson Patent/IP Attorney e: cwilson@gardnergroff.com [email_address] w: 770.984.2300 Ext. 873 c: 404.993.0901 LINKEDIN .COM/IN/CLARKADWILSON © 2010 Gardner Groff, PC – All Rights Reserved Thank You!!

Value Driven IP Protection

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