1 Keys for a Successful Intellectual Property Program Identify Protect Leverage Respect
2 Four Basic Types of Intellectual Property (IP) Trademarks –branding – protect corporate good will Copyright –protect unauthorized copying of software – not function Trade Secrets –protect secret processes Patents –monopoly on functionality
4 What is a Mark? Any word, name, symbol or device Serves as an indication of origin Houses goodwill Can be common law or federally registered
5 Why are Trademarks Important? Brand identity is a valuable corporate asset Need to control trademarks both internally and by third parties Product naming should include trademark search to avoid infringement
7 Copyright Law A U.S. copyright protects original works of authorship which have been fixed in a tangible medium of expression.
8 A Copyright Protects Computer programs Musical works Dramatic works Pantomime and choreographic works Pictorial and graphic works Sculptural works Literary works Motion pictures Sound recordings Architectural works
9 Copyright Owner May Control Reproduction Distribution Adaptation Public display Public performance
10 Why Important We need to protect our copyrights –Sales materials, software, training materials Respect the copyrights of others –Photos, music, software, print media –Use only with appropriate permission
14 §101 - Patentable Subject Matter New and useful process, machine, manufacture, or composition of matter Any new and useful improvement
15 Examples of Software Features that are Patentable Overall System/Method New Functions/Processes (Steps) New Implementation Of Existing Functions/Processes Graphical User Interface Algorithms/Implementation of Algorithms Data Structures Objects Neural Networks
16 Patentability of Business Methods State Street Bank case clarified that "business methods" are patentable Business methods are not required to be computer- implemented in order to be patentable under U.S. law (European protection may differ)
17 Considerations for Filing for Patents on Business Methods Would you be able to detect if others were infringing? What is the value to the company of the method? Will the method be used in a commercial product/service? Are there licensing opportunities?
18 §102 - Novelty Known or used by others, or described in a publication before date of invention “Public use” or “on sale” more than 1 year before U.S. filing date - disclosure Abandonment, concealment Important distinctions between US and non-US regimes
19 Examples of Events That May Start §102 Grace Period Publication of idea on Internet, in trade journals Disclosure to third party for purposes of commercialization Offering system for sale in this country Publicly displaying the system such as at a trade show or convention
20 §103 - Non-obviousness Non-obvious to a person of “ordinary skill in the art” At the time of invention
21 Document Inventive Activity Keep accurate log books and other materials to demonstrate dates of conception and reduction to practice Importance of “diligence” Experimental or environmental testing
22 Confidentiality Agreements Must be signed by all outside parties Should clearly identify subject matter – specific better than general Helps avoid disclosure problems
23 Independent Contractors Use engagement letters Use confidentiality agreements Use assignment agreements - ensure that any inventions discovered by an independent contractor working for Genworth becomes Genworth’s property
24 In contrast….Trade Secrets as Alternative to Patents Any formula, pattern, device or combination of information which is used in a business and, because it is unknown to others, gives the business a competitive advantage.
25 Considerations for Filing for Patents on Business Methods Should the "business method“ be kept as a trade secret? –Can others detect it? –Can you maintain it in secrecy? –What is the useful life of the business method? –Are competitors likely to file for patents on similar methods?
26 Strategies for Trade Secret Protection Identify Genworth’s valuable trade secrets Written trade secret protection policy Educate employees about trade secret protection policy and monitor compliance Restrict trade secret access to employees with a legitimate, business related, need to know Mark documents containing trade secrets Physically isolate and protect most important trade secrets
27 ….Strategies for Trade Secret Protection Maintain computer secrecy Restrict public access to your facilities Deal cautiously with third parties - use confidentiality agreements Be careful and consistent with unsolicited submissions
28 Strategic Reasons for Implementing Formal IP Program
29 Offensive Reasons Market advantage – Leverage exclusive rights to Genworth’s developments, sue to obtain injunction and/or damages Injunctions – Ability to shut down infringer License to obtain royalties or other business benefit Marketing advantage – real/apparent Enhance/maintain first mover advantage Protect investment in R&D Occupy field in and/or surrounding key standards
30 Defensive Reasons Defend against patents of competitors Cross license if accused of infringing Counter sue if sued – use as bargaining chip Bolster settlement position Partners/investors want to know if “idea” is protected Competitor who independently develops idea can obtain IP rights
31 Importance of Formal IP Program Convey importance of IP to all employees Educate employees on steps necessary to benefit from IP/avoid loss of rights/reduce liability
32 Goals of IP Program Protect technology and market position Exploit IP – Use as a business tool/source of revenue Avoid or reduce liability
33 Essentials for Successful IP Program Technical – must identify inventions; comply with procedures Business/Sales/Marketing – must be aware of what can cause loss of rights; know about technology that can be exploited
34 The IP Program Create and distribute/make accessible patentability and program reference Use online collaborative workroom to enhance inventor/counsel interaction Provide access to and instructions for completing invention disclosure forms Use procedure for receiving, logging and tracking invention disclosure forms Involve key business personnel –IP council –Management support
35 IP Program Considerations Employee issues (existing employees, new hires, departing employees) Contractors and Consultants (ensure ownership of IP, confidentiality, etc.) Manufacturers, distributors, joint ventures Indemnity Mechanisms for identifying IP –Submission procedures –Status chart
36 IP Program Considerations Documentation (notebooks, invention disclosures, etc.) Pre-release reviews – avoid loss of rights (speeches, publications, trade shows, etc.) Avoiding liability Insurance Clearance process for new products and processes – non-infringement options
37 Identifying and Harvesting Inventions Identify business units that may generate inventions Identify key personnel in each business unit to monitor handling of inventions Educate and train key personnel regarding patentability and key issues Provide seminars for other personnel to enlighten and inspire Reward and recognition program for inventors
38 Identify Existing IP For existing IP that is not protected, immediate attention should be directed to determining whether and how it may be protected, and if protectable, deciding whether to protect it. Critical to do this to avoid inadvertent loss of rights.
39 Identifying IP Identify IP being developed and any timing issues Identify key areas of development early – sometimes broad ideas can be protected and details added later
40 IP Protection – Implementation Review audit list Develop strategy (what to protect, how, etc.) Prioritize, group, budget Decide Prepare and file applications Avoid infringement of third party rights Get indemnities Consider insurance Conduct clearance search, obtain opinion if necessary
41 IP Protection – Implementation For mergers, acquisitions, investment, partnerships: IP due diligence can be critical to: –Ensure protection –Identify potential liability –Valuation
42 IP Protection - Respect Respect the IP rights of third parties Educate associates Documented corporate guidelines Part of Integrity Program