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© 2014 Armstrong Teasdale
LLP
© 2014 Armstrong Teasdale
LLP
Intellectual Property Law 101
For Small Businesses
Jennifer Hoekel, Nicholas Clifford,
and Jeff Schultz
Presented By
© 2014 Armstrong Teasdale
LLP
What is Intellectual Property (“IP”)?
2
Creations of the
mind
Inventions
Literary works
Artistic works
Designs
Symbols
Names/images used
in commerce
© 2014 Armstrong Teasdale
LLP
Why is IP Important?
IP Rights Promote and Protect Innovation
• Incentivizes economic growth
IP Assets Are A Company’s Most Valuable Property
• Must be diligently protected or the rights may be lost.
IP Is Protected Against Unauthorized Use by Law
• Legal rights are based in the U.S. Constitution
3
© 2014 Armstrong Teasdale
LLP
Types of IP Protection
Trade Secrets• Business technologies or competitive information with economic value
that is protected against disclosure to third parties
Patents• Exclusive property right granted to an inventor in exchange for a detailed
disclosure of the invention
Trademarks/Trade Dress• A name, logo, design or expression used to identify or distinguish
products or services of a particular source from products or services sold
by others
Copyrights• Protection for the tangible form of expression for original works of
authorship
4
© 2014 Armstrong Teasdale
LLP
IP Rights
Protection
Enforcement
Groundbreaking
Products
Advances in
Technology
Innovative Solutions to
Problems
IP Strategy
© 2014 Armstrong Teasdale
LLP
Confidential Information -versus-
Trade Secret Information
6
© 2014 Armstrong Teasdale
LLP
Trade Secrets-versus-
Patents
Trade Secrets
Patents(secret) (publicly
available)
7
© 2014 Armstrong Teasdale
LLP
What is Confidential Information?
Information, documents, communications provided to
or made in confidence with another.
Business examples:
• Customer lists
• Pricing
• Technical information
• Business strategy
• Contracts
8
© 2014 Armstrong Teasdale
LLP
Confidentiality
Usually based on a contractual obligation.
• Non-disclosure agreement
• Employment agreement
• Settlement agreement
• Contracts
Can be based upon status.
• Employee
• Trustee
• Officer/director
9
© 2014 Armstrong Teasdale
LLP
What Do You Need to Do?
Protect Your Company’s Confidential
Information/Documents
• Handle in accordance with contractual obligations
• Keep secure
• Do not make unnecessary copies
• Provide only to employees who need access
• Do not provide to non-employee personnel
− Exception: is there a non-disclosure agreement in
place?
• Avoid unnecessary electronic communications
• Pay close attention to email recipients
• Place CONFIDENTIAL on “Re” line and in body
• When in doubt: ASK! 10
© 2014 Armstrong Teasdale
LLP
What Do You Need to Do?
Protect Confidential Information Received from
Others
• Certain information/documents the company receives
from business partners which must be treated as
confidential by agreement
• Under some agreements, confidential information
must be designated with a “CONFIDENTIAL” stamp
• Must treat with the same protections as your own
confidential information
11
© 2014 Armstrong Teasdale
LLP
Consequences
What can happen if there is a breach of
confidentiality?
• Loss of its confidentiality (i.e. it becomes public)
• Breach of contract
• Lawsuit: attorneys’ fees, damages, injunction
12
© 2014 Armstrong Teasdale
LLP
What Is a Trade Secret?
General requirements:
• Information (including formulas, patterns,
compilations, programs, devices, methods,
techniques, or processes) that is not generally known
or readily ascertainable
• Has economic value from being secret
• Is the subject of reasonable
efforts to maintain its secrecy
13
© 2014 Armstrong Teasdale
LLP
Examples
14
© 2014 Armstrong Teasdale
LLP
Possible Trade Secrets?
Business Information
• Examples?
Technical Information
• Examples?
R&D
• Examples?
15
© 2014 Armstrong Teasdale
LLP
Is It Really Secret?
Is the information known outside your business?
Who knows the information in your business?
What steps are taken to guard its secrecy?
What is its value to your business and to others?
What did your business do to develop it? Efforts?
$$?
How easily could others acquire or duplicate it?
16
© 2014 Armstrong Teasdale
LLP
What Do You Need To Do?
Establish and maintain reasonable procedures to
keep secrecy
Examples
• Limits on personnel who have access
• Logs
• Secured access (locks, security, cameras, etc.)
• Restricted copying
• Employment agreements
• Non-disclosure agreements17
© 2014 Armstrong Teasdale
LLP
Consequences
What can happen if there is a failure to maintain
secrecy?
• Loss of trade secret status (i.e. it becomes public)
− No right to prevent competitors from using
• Trade secret misappropriation
• Lawsuit: attorneys’ fees, damages, injunction
18
© 2014 Armstrong Teasdale
LLP
PatentsUtility Patents: Design
Patents
“How it works” “How it
looks”
© 2014 Armstrong Teasdale
LLP
What Is a Patent?
A right to exclude others from:
• Making
• Using
• Offering for sale or selling
• Importing
A patent is a negative right to control others from
using your invention.
Misconception - A patent does not grant the
affirmative right to use your own product.
20
© 2014 Armstrong Teasdale
LLP
Types of Patents & What They
Protect
Utility patents (most common)
• Protection for
− Machines/devices
− Processes and Article of Manufacture
− Compositions of Matter (including Improvements)
− Business Methods
Design patents
• Protection for the visual/ornamental characteristics of
an article
21
© 2014 Armstrong Teasdale
LLP
Patents - What They Give
Expiration
• Utility patents – 20 years from priority date
• Design patents – 15 years from date of issuance
Legal Monopoly – Market Control
Royalties – Bargaining Power
22
© 2014 Armstrong Teasdale
LLP
Patents - Requirements
Invention:
• Novel (i.e. new)
• Useful (i.e., useful purpose that it actually performs)
• Non-obvious
File Promptly
• First-to-file v. first-to-invent
• Provisional v. non-provisional
Costs - $25K to $40K in fees and filing costs, plus
maintenance fees
23
© 2014 Armstrong Teasdale
LLP
No Patent If …
1 year or more before you file your application
(1) the same invention was patented or described in a
printed publication available anywhere in the world;
(2) the same invention was in public use in the U.S.;
(3) the same invention was on sale in the U.S.
24
© 2014 Armstrong Teasdale
LLP
Patents - Process
Long Process
• 3+ years for utility patents; 1½ years for design
patents
Pending U.S. Applications Secret
• 18 Months after Filing, Published
• No Way to Know What Competitors Have Filed Until
Publication
International Filings
• Must File Multiple Applications
• Treaties (Paris Convention, PCT, EPC)
25
© 2014 Armstrong Teasdale
LLP
Anatomy of a Patent
Title of the invention
Inventor
Assignee/owner
Application number and date
Related prior application
number and date
US Patent Number
Prior art references
Abstract
26
© 2014 Armstrong Teasdale
LLP
Anatomy of a Patent
Claims
Specification:
- Written description
of invention
- Often includes discussion
of prior art
- Drawings
- Preferred embodiment(s)
- Must be enabling to persons
of ordinary skill in the art of the
invention
27
© 2014 Armstrong Teasdale
LLP
What Do You Need To Do?
Employment Agreements
• Assignment of inventions to employer
Invention Disclosures (see sample)
• Description of invention
• Business analysis
• Prior Art
Competitor monitoring/patent watch
Freedom to operate searches and clearances
28
© 2014 Armstrong Teasdale
LLP
Consequences
No invention disclosure program?
• You may not be learning about patentable innovations
Failure to file for patents in timely manner
• Loss of potential patent rights
No organized competitive watch program?
• Missed opportunity for key business intelligence
• Missed opportunity for avoiding infringement
29
© 2014 Armstrong Teasdale
LLP
Trademarks
A distinctive name, word, phrase, logo, symbol,
design, image, or a combination
Identifies source
Unlimited duration
Applied for at the USPTO
© 2014 Armstrong Teasdale
LLP
What Do You Need To Do?
Should register with the United States Patent and
Trademark Office
• Nationwide Protection
• Treble Damages
• Potential Recovery of Attorney Fees
31
© 2014 Armstrong Teasdale
LLP
Copyrights
Gives the creator of an original work exclusive rights
for a limited time (decades).
Registered at the Library of Congress
Copyright exists as soon as the work is created
• There is no strict need to register, but you have fewer rights
© 2014 Armstrong Teasdale
LLP
What Do You Need To Do?
Registration
• What does it get you?
− the ability to file suit
− presumption of copyright validity
• If registered within 3 months of publication, will allow
statutory damages and attorney fees
− $750 - $30,000 per work
− Willful infringement – up to $150,000 per work
• Requires three things to be submitted to the Copyright
Office:
− (1) application, (2) fee, (3) copy or representation of the work
• Current fee for online registrations: $35
33
© 2014 Armstrong Teasdale
LLP
IP Strategies
Protect what is important to the company
Protect what is important to your competitor
Keep private what can’t be easily reversed
engineered
Use non-disclosure agreements with vendors
Continue to periodically assess the IP portfolio
34
© 2014 Armstrong Teasdale
LLP
Questions?
35
© 2014 Armstrong Teasdale
LLP
Contacts
Jeff Schultz
PartnerArmstrong Teasdale
LLP314.259.4732 [email protected]
om
www.armstrongteasdale.c
om
Nicholas Clifford,
Jr.
PartnerArmstrong Teasdale
LLP314.259.4711 [email protected]
m
www.armstrongteasdale.co
m
36
Jennifer Hoekel
PartnerArmstrong Teasdale
LLP314.342.4162 [email protected]
www.armstrongteasdale.co
m
Webinar CLE Confirmation Code: SHC1012