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Copyright 2003, Gallagher & Dawsey Co., LPA IP Pitfalls The role of the general business attorney in IP The role of the general business attorney in IP.

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Presentation on theme: "Copyright 2003, Gallagher & Dawsey Co., LPA IP Pitfalls The role of the general business attorney in IP The role of the general business attorney in IP."— Presentation transcript:

1 Copyright 2003, Gallagher & Dawsey Co., LPA IP Pitfalls The role of the general business attorney in IP The role of the general business attorney in IP

2 Copyright 2003, Gallagher & Dawsey Co., LPA IP Pitfalls IP renewals and maintenance fees IP renewals and maintenance fees Provisional patent applications Provisional patent applications Managing Disclosure Managing Disclosure Inventorship Inventorship Valuation of IP Valuation of IP

3 Copyright 2003, Gallagher & Dawsey Co., LPA IP Pitfalls Litigation preparedness Litigation preparedness Licensing Licensing IP Budgeting IP Budgeting Trademarks Trademarks Copyright Copyright

4 Copyright 2003, Gallagher & Dawsey Co., LPA Renewals and Maintenance

5 Copyright 2003, Gallagher & Dawsey Co., LPA Renewals and Maintenance Copyrights: Copyrights: None! None! But is it in term? But is it in term?

6 Copyright 2003, Gallagher & Dawsey Co., LPA Renewals and Maintenance Patents: Patents: U.S. Design – None (14 year term) U.S. Design – None (14 year term) U.S. Utility – None while pending U.S. Utility – None while pending Foreign – Many require maintenance for pending applications (e.g., Canada) and may have different schedule for issued patents than U.S. Foreign – Many require maintenance for pending applications (e.g., Canada) and may have different schedule for issued patents than U.S.

7 Copyright 2003, Gallagher & Dawsey Co., LPA Renewals and Maintenance U.S. Utility Patent Maintenance: U.S. Utility Patent Maintenance: 3 to 3.5 years after grant 3 to 3.5 years after grant 7 to 7.5 years after grant 7 to 7.5 years after grant 11 to 11.5 years after grant 11 to 11.5 years after grant Six months grace period with late fee Six months grace period with late fee (i.e., patent expires at 4, 8, or 12 year mark) (i.e., patent expires at 4, 8, or 12 year mark)

8 Copyright 2003, Gallagher & Dawsey Co., LPA Client call - “I forgot to pay the maintenance fee!” “I forgot to pay the maintenance fee!” or worse; or worse; “You forgot to pay the maintenance fee!” “You forgot to pay the maintenance fee!” or the very worst; or the very worst; “The G-d--- patent lawyers forgot to pay the maintenance fee!” “The G-d--- patent lawyers forgot to pay the maintenance fee!”

9 Copyright 2003, Gallagher & Dawsey Co., LPA Renewals and Maintenance Make sure you understand who is responsible for paying these fees. Make sure you understand who is responsible for paying these fees.

10 Copyright 2003, Gallagher & Dawsey Co., LPA Renewals and Maintenance Revival Revival “Unavoidable” “Unavoidable” “Unintentional” “Unintentional”

11 Copyright 2003, Gallagher & Dawsey Co., LPA Renewals and Maintenance Revival Revival All good things must come to an end – no revival for “unintentional” failure to pay maintenance after 24 months All good things must come to an end – no revival for “unintentional” failure to pay maintenance after 24 months Expired patent is public domain prior art and can never be patented again Expired patent is public domain prior art and can never be patented again All good things have limits – intervening rights may be established All good things have limits – intervening rights may be established

12 Copyright 2003, Gallagher & Dawsey Co., LPA Renewals and Maintenance Trademarks Trademarks “Renewals” “Renewals” Must still be in use in commerce Must still be in use in commerce

13 Copyright 2003, Gallagher & Dawsey Co., LPA Renewals and Maintenance U.S. Trademark Renewal Schedule U.S. Trademark Renewal Schedule Six years after first grant Six years after first grant Ten years after grant Ten years after grant Every ten years thereafter Every ten years thereafter Can be paid up to one year in advance Can be paid up to one year in advance Six month grace period with late fee Six month grace period with late fee Can be renewed indefinitely Can be renewed indefinitely

14 Copyright 2003, Gallagher & Dawsey Co., LPA Renewals and Maintenance Trademarks Trademarks “I forgot to pay the trademark renewal fee!” “I forgot to pay the trademark renewal fee!”

15 Copyright 2003, Gallagher & Dawsey Co., LPA Renewals and Maintenance “I forgot to pay the renewal fee!” “I forgot to pay the renewal fee!” Six month grace period? Six month grace period? No revival No revival But can reapply But can reapply

16 Copyright 2003, Gallagher & Dawsey Co., LPA Renewals and Maintenance Tips Tips Don’t rely on your patent attorney Don’t rely on your patent attorney Don’t rely on USPTO notification Don’t rely on USPTO notification Don’t pay without thinking Don’t pay without thinking

17 Copyright 2003, Gallagher & Dawsey Co., LPA Renewals and Maintenance Before paying: Before paying: Think Think But think slowly But think slowly Abandonment is generally irrevocable Abandonment is generally irrevocable There may be alternatives There may be alternatives

18 Copyright 2003, Gallagher & Dawsey Co., LPA Provisional Patents

19 Copyright 2003, Gallagher & Dawsey Co., LPA Provisional Patents “Short Form Patent” “Poor Man’s Patent”

20 Copyright 2003, Gallagher & Dawsey Co., LPA Provisional Patents 35 U.S.C. § 112(b) 35 U.S.C. § 112(b) Purpose – Harmonize U.S. and International law and simplify patent process. Purpose – Harmonize U.S. and International law and simplify patent process.

21 Copyright 2003, Gallagher & Dawsey Co., LPA Provisional Patents Simplify? Yes, since: Simplify? Yes, since: Inexpensive Inexpensive Shorter, as only drawing “as necessary to understand” and no claims are required Shorter, as only drawing “as necessary to understand” and no claims are required Satisfies priority date and statutory bar requirements like a utility patent Satisfies priority date and statutory bar requirements like a utility patent

22 Copyright 2003, Gallagher & Dawsey Co., LPA Provisional Patents Simplify? No, in that: Simplify? No, in that: Not examined Not examined Can never mature into an actual patent Can never mature into an actual patent Will only support priority for a later filed utility patent if it is “enabling” Will only support priority for a later filed utility patent if it is “enabling” Vanishes in one year Vanishes in one year

23 Copyright 2003, Gallagher & Dawsey Co., LPA Provisional Patents Good Reasons to Use: Good Reasons to Use: One desperate throw of the dice One desperate throw of the dice So much disclosure, so little certainty So much disclosure, so little certainty Multiple PPA’s can be consolidated into one utility application Multiple PPA’s can be consolidated into one utility application

24 Copyright 2003, Gallagher & Dawsey Co., LPA Provisional Patents Good Reasons to Use: Good Reasons to Use: Fast moving technology Fast moving technology Upcoming disclosure Upcoming disclosure Extend patent pending period Extend patent pending period Test marketing potential Test marketing potential

25 Copyright 2003, Gallagher & Dawsey Co., LPA Provisional Patents Bad Reasons to Use: Bad Reasons to Use: Being a cheapskate Being a cheapskate Poorly conceived invention Poorly conceived invention Vague marketing plans Vague marketing plans Enrich patent attorney Enrich patent attorney

26 Copyright 2003, Gallagher & Dawsey Co., LPA Provisional Patents Things to Watch For: Things to Watch For: One year passes quickly One year passes quickly Triggers foreign filing deadlines Triggers foreign filing deadlines Doesn’t toll the statutory bar deadlines unless a utility application is timely filed, e.g.: Doesn’t toll the statutory bar deadlines unless a utility application is timely filed, e.g.: Item on sale 12/02 Item on sale 12/02 PPA filed 6/02 PPA filed 6/02 Utility must be filed by 6/03 to ever patent item Utility must be filed by 6/03 to ever patent item

27 Copyright 2003, Gallagher & Dawsey Co., LPA Provisional Patents Tips: Tips: Provisional should contain more disclosure rather than less Provisional should contain more disclosure rather than less The more your Provisional Patent Application looks like a utility application, the more it will help you. The more your Provisional Patent Application looks like a utility application, the more it will help you.

28 Copyright 2003, Gallagher & Dawsey Co., LPA Managing Disclosure

29 Copyright 2003, Gallagher & Dawsey Co., LPA Managing Disclosure Managing the tension between disclosure and confidentiality Managing the tension between disclosure and confidentiality

30 Copyright 2003, Gallagher & Dawsey Co., LPA Managing Disclosure Novelty Novelty Things that are not new cannot be patented Things that are not new cannot be patented So what is “new?” So what is “new?”

31 Copyright 2003, Gallagher & Dawsey Co., LPA Managing Disclosure Novelty Novelty 35 U.S.C. § 102(a) 35 U.S.C. § 102(a) “known or used by others in this country” “known or used by others in this country” Or Or “patented or described in a written publication in this or a foreign country” “patented or described in a written publication in this or a foreign country” Before the Date of Invention Before the Date of Invention

32 Copyright 2003, Gallagher & Dawsey Co., LPA Managing Disclosure Novelty Novelty 35 U.S.C. § 102(b) 35 U.S.C. § 102(b) “patented or described in this or a foreign” country “patented or described in this or a foreign” country Or Or “in public use or on sale” “in public use or on sale” More than one year prior to the date of filing More than one year prior to the date of filing

33 Copyright 2003, Gallagher & Dawsey Co., LPA Managing Disclosure Key Events Key Events “patented” “patented” “described” “described” “in a printed publication” “in a printed publication” “in public use” “in public use” “on sale in this country” “on sale in this country”

34 Copyright 2003, Gallagher & Dawsey Co., LPA Managing Disclosure Quiz: Quiz: Can your client trigger a 102(a) event? Can your client trigger a 102(a) event? Can your client trigger a 102(b) event? Can your client trigger a 102(b) event?

35 Copyright 2003, Gallagher & Dawsey Co., LPA Managing Disclosure Important ramification of “described” and “before the date of invention” Important ramification of “described” and “before the date of invention”

36 Copyright 2003, Gallagher & Dawsey Co., LPA Managing Disclosure 35 U.S.C. 102 §(a-b) events: 35 U.S.C. 102 §(a-b) events: Absolute deadlines Absolute deadlines NO reprieve, renewals, late fees, exceptions, excuses, appeals, second chances, or places to hide! NO reprieve, renewals, late fees, exceptions, excuses, appeals, second chances, or places to hide!

37 Copyright 2003, Gallagher & Dawsey Co., LPA Client call - “I think there may have been some disclosure of this about a year ago.” “I think there may have been some disclosure of this about a year ago.” Response: Response: When When Where Where What What To Whom To Whom Then call your patent counsel Then call your patent counsel

38 Copyright 2003, Gallagher & Dawsey Co., LPA Managing Disclosure Grow the belief within your client’s company that disclosure can have important IP consequences Grow the belief within your client’s company that disclosure can have important IP consequences

39 Copyright 2003, Gallagher & Dawsey Co., LPA Managing Disclosure Special problem with technology clients: Special problem with technology clients: Understand and sympathize with the difference between the cultures of science and the law on disclosure Understand and sympathize with the difference between the cultures of science and the law on disclosure

40 Copyright 2003, Gallagher & Dawsey Co., LPA Managing Disclosure Somebody (not the sales organization) needs to review and approve upcoming disclosure Somebody (not the sales organization) needs to review and approve upcoming disclosure

41 Copyright 2003, Gallagher & Dawsey Co., LPA Managing Disclosure Upcoming sales or disclosure? Upcoming sales or disclosure? Great ! Great ! Avoid “enabling” disclosure Avoid “enabling” disclosure But be careful – no uniform standard for enablement But be careful – no uniform standard for enablement Can’t avoid enabling disclosure? Can’t avoid enabling disclosure? Remember the one year statutory bar Remember the one year statutory bar But there may be dire foreign patent effects But there may be dire foreign patent effects

42 Copyright 2003, Gallagher & Dawsey Co., LPA Managing Disclosure Upcoming sales or disclosure? Upcoming sales or disclosure? Provisional Application Provisional Application Utility Application Utility Application

43 Copyright 2003, Gallagher & Dawsey Co., LPA Managing Disclosure “But we don’t have all the kinks worked out yet!” “But we don’t have all the kinks worked out yet!” Help your client manage “experimental use” Help your client manage “experimental use”

44 Copyright 2003, Gallagher & Dawsey Co., LPA Managing Disclosure Experimental Use Experimental Use Judicial exception to “public use” Judicial exception to “public use” Must be experimental use designed to test the invention's utility Must be experimental use designed to test the invention's utility The more it looks like a science experiment, the better it looks The more it looks like a science experiment, the better it looks Not market testing Not market testing

45 Copyright 2003, Gallagher & Dawsey Co., LPA Managing Disclosure Defensive Patent Practice Defensive Patent Practice SIRs SIRs Defensive Publication Defensive Publication

46 Copyright 2003, Gallagher & Dawsey Co., LPA Inventorship

47 Inventorship 35 U.S.C. § U.S.C. § 111 Application must be made by “the inventor” Application must be made by “the inventor” Who is the inventor? Who is the inventor?

48 Copyright 2003, Gallagher & Dawsey Co., LPA Inventorship No easy black letter definition No easy black letter definition One who has contributed at least one important feature to the invention One who has contributed at least one important feature to the invention

49 Copyright 2003, Gallagher & Dawsey Co., LPA Inventorship Inventor: Inventor: Doesn’t have to do it all Doesn’t have to do it all Don’t have to make equal contributions Don’t have to make equal contributions Doesn’t have to work simultaneously or in same locale as other inventors Doesn’t have to work simultaneously or in same locale as other inventors Must be more than a technician Must be more than a technician Must name all inventors (35 U.S.C. 102(f) and 37 C.F.R. § 1.45) Must name all inventors (35 U.S.C. 102(f) and 37 C.F.R. § 1.45)

50 Copyright 2003, Gallagher & Dawsey Co., LPA Inventorship What your clients will do: What your clients will do: Not understand “true inventorship” Not understand “true inventorship” Try to name non-inventors for political or business purposes Try to name non-inventors for political or business purposes Omit true inventors who have left the company or who they don’t like Omit true inventors who have left the company or who they don’t like

51 Copyright 2003, Gallagher & Dawsey Co., LPA Inventorship Intentional failure to name true inventors is fraud if known by: Intentional failure to name true inventors is fraud if known by: any inventor any inventor each attorney or agent each attorney or agent every other person substantially involved every other person substantially involved

52 Copyright 2003, Gallagher & Dawsey Co., LPA Inventorship Penalty:DEATH Penalty:DEATH (that is, death for the patent) (that is, death for the patent)

53 Copyright 2003, Gallagher & Dawsey Co., LPA Inventorship With such severe penalty, a little slack is in order: With such severe penalty, a little slack is in order: While all inventors must be named, all inventors don’t have to sign application While all inventors must be named, all inventors don’t have to sign application

54 Copyright 2003, Gallagher & Dawsey Co., LPA Inventorship Dead, or legally incapacitated Dead, or legally incapacitated Executor or guardian may sign Executor or guardian may sign

55 Copyright 2003, Gallagher & Dawsey Co., LPA Inventorship Refusing or can’t be located: Refusing or can’t be located: Must make diligent effort to locate Must make diligent effort to locate Must petition patent office with facts Must petition patent office with facts If petition granted, assignee may file in the inventor’s name If petition granted, assignee may file in the inventor’s name

56 Copyright 2003, Gallagher & Dawsey Co., LPA Inventorship Corollary: Corollary: What does this tell you about when to get assignments executed? What does this tell you about when to get assignments executed?

57 Copyright 2003, Gallagher & Dawsey Co., LPA Inventorship Corollary to Corollary: Corollary to Corollary: All streets don’t run two ways - while all inventors must file for patent; any one inventor may dispose of rights without the consent and without accounting to the other inventors! (35 U.S.C. § 262) All streets don’t run two ways - while all inventors must file for patent; any one inventor may dispose of rights without the consent and without accounting to the other inventors! (35 U.S.C. § 262)

58 Copyright 2003, Gallagher & Dawsey Co., LPA Inventorship Corollary to Corollary to Corollary: Corollary to Corollary to Corollary: Now, what does this tell you about when to get assignments executed? Now, what does this tell you about when to get assignments executed?

59 Copyright 2003, Gallagher & Dawsey Co., LPA Inventorship Remember that employment may end before patents are filed Remember that employment may end before patents are filed Specify that end of employment does not end responsibility to assign and to cooperate with patent activities Specify that end of employment does not end responsibility to assign and to cooperate with patent activities

60 Copyright 2003, Gallagher & Dawsey Co., LPA Inventorship Accidental failure to name true inventors: Accidental failure to name true inventors: Not fraud Not fraud Corrections may be made by petition after filing Corrections may be made by petition after filing But remember that accidental ( i.e., “without deceptive intent” (37 C.F.R. § 1.48)) is not the same as non-malicious But remember that accidental ( i.e., “without deceptive intent” (37 C.F.R. § 1.48)) is not the same as non-malicious

61 Copyright 2003, Gallagher & Dawsey Co., LPA Valuation of IP

62 Copyright 2003, Gallagher & Dawsey Co., LPA Valuation of IP The secret is that there is no secret – the value of IP is whatever someone else is willing to pay The secret is that there is no secret – the value of IP is whatever someone else is willing to pay

63 Copyright 2003, Gallagher & Dawsey Co., LPA Market Valuation Measurable only on loss or sale Measurable only on loss or sale Hard to Assess, Speculative Hard to Assess, Speculative ImClone, Erbitux ImClone, Erbitux

64 Copyright 2003, Gallagher & Dawsey Co., LPA Cost Valuation “Replacement Cost?” “Replacement Cost?” IP Cost often skewed form real value IP Cost often skewed form real value “New Coke” “New Coke”

65 Copyright 2003, Gallagher & Dawsey Co., LPA Income Valuation Possibly the best system for going concerns not selling their IP Possibly the best system for going concerns not selling their IP

66 Copyright 2003, Gallagher & Dawsey Co., LPA Pitfalls of Income Valuation Have you maximized value? Have you maximized value?

67 Copyright 2003, Gallagher & Dawsey Co., LPA Pitfalls of Income Valuation IP has a limited, and sometimes difficult to assess, life IP has a limited, and sometimes difficult to assess, life

68 Copyright 2003, Gallagher & Dawsey Co., LPA Pitfalls of Income Valuation Copyrights; Term essentially indefinite; but: Copyrights; Term essentially indefinite; but: Computer Software? Computer Software? “Nick at Night” “Nick at Night”

69 Copyright 2003, Gallagher & Dawsey Co., LPA Pitfalls of Income Valuation Trademarks; nominally indefinite, but: Trademarks; nominally indefinite, but: Enron Enron

70 Copyright 2003, Gallagher & Dawsey Co., LPA Pitfalls of Income Valuation Patents: Patents: 20 year term, but: 20 year term, but: Is the market cycle different from the patent term? Is the market cycle different from the patent term?

71 Copyright 2003, Gallagher & Dawsey Co., LPA Pitfalls of All IP Valuation What are you valuing? What are you valuing? IP is only part of the enterprise IP is only part of the enterprise The current R&D problem The current R&D problem

72 Copyright 2003, Gallagher & Dawsey Co., LPA Valuation IP is not a lifetime commitment! IP is not a lifetime commitment! Selling Selling Transfer to Holding Company Transfer to Holding Company Spin Off Spin Off Donation Donation Abandonment Abandonment

73 Copyright 2003, Gallagher & Dawsey Co., LPA Valuation; Market, Cost and Income Methods

74 Copyright 2003, Gallagher & Dawsey Co., LPA Litigation Preparedness

75 Copyright 2003, Gallagher & Dawsey Co., LPA Litigation Preparedness Before trouble hits, help your client prepare Before trouble hits, help your client prepare

76 Copyright 2003, Gallagher & Dawsey Co., LPA Litigation Preparedness No one can infringe an expired patent! No one can infringe an expired patent! Check for maintenance payments Check for maintenance payments

77 Copyright 2003, Gallagher & Dawsey Co., LPA Litigation Preparedness Get rid of prosecution drafts Get rid of prosecution drafts Yours, your patent attorneys, and the inventors and assignees Yours, your patent attorneys, and the inventors and assignees Festo Festo

78 Copyright 2003, Gallagher & Dawsey Co., LPA Litigation Preparedness Protect invention disclosure forms as attorney client work product: Protect invention disclosure forms as attorney client work product: In re Spaulding Sports Worldwide, Inc. In re Spaulding Sports Worldwide, Inc.

79 Copyright 2003, Gallagher & Dawsey Co., LPA Litigation Preparedness Cleanse “fraud” issues Cleanse “fraud” issues True inventorship True inventorship Ongoing duty to disclose Ongoing duty to disclose

80 Copyright 2003, Gallagher & Dawsey Co., LPA Litigation Preparedness Identify and Evaluate Infringers Identify and Evaluate Infringers Actual, Contributory, and Inducers Actual, Contributory, and Inducers Collectable? Collectable? What do you want? What do you want?

81 Copyright 2003, Gallagher & Dawsey Co., LPA Litigation Preparedness The post-1981 Era The post-1981 Era Court of Appeals for the Federal Circuit Court of Appeals for the Federal Circuit

82 Copyright 2003, Gallagher & Dawsey Co., LPA Litigation Preparedness Pre-1981 Pre-1981 Patentee had to prove patent valid Patentee had to prove patent valid Preliminary injunctions rare Preliminary injunctions rare Damages usually set as lost royalties Damages usually set as lost royalties

83 Copyright 2003, Gallagher & Dawsey Co., LPA Litigation Preparedness Post – 1981 Post – 1981 Patents have presumption of validity Patents have presumption of validity More “realistic” damages More “realistic” damages

84 Copyright 2003, Gallagher & Dawsey Co., LPA Litigation Preparedness Today: Today: Some companies run infringement enforcement practices out of their patent portfolios that are multi-million dollar profit centers Some companies run infringement enforcement practices out of their patent portfolios that are multi-million dollar profit centers

85 Copyright 2003, Gallagher & Dawsey Co., LPA Litigation Preparedness If your client is a potential plaintiff: If your client is a potential plaintiff: Don’t be too fast to threaten suit Don’t be too fast to threaten suit You might precipitate a declaratory judgment action You might precipitate a declaratory judgment action

86 Copyright 2003, Gallagher & Dawsey Co., LPA Litigation Preparedness First step in plaintiff’s analysis: First step in plaintiff’s analysis: Consult patent counsel Consult patent counsel Patent attorney v litigators Patent attorney v litigators The vast majority of accused infringement will never go to trial; most will probably never go to filing of a suit The vast majority of accused infringement will never go to trial; most will probably never go to filing of a suit

87 Copyright 2003, Gallagher & Dawsey Co., LPA Litigation Preparedness If your client is a potential defendant: If your client is a potential defendant: Watch out for the buccaneers of the plaintiff’s bar Watch out for the buccaneers of the plaintiff’s bar Check that patent is prima facie valid Check that patent is prima facie valid Don’t be too fast to settle Don’t be too fast to settle Demand a detailed claim comparison, and review it with competent counsel, before considering settlement. Demand a detailed claim comparison, and review it with competent counsel, before considering settlement.

88 Copyright 2003, Gallagher & Dawsey Co., LPA Litigation Preparedness What we do first: Compare your client’s broadest claim with the infringing device Compare your client’s broadest claim with the infringing device Device must have all elements of claim Device must have all elements of claim Additional features don’t save infringer Additional features don’t save infringer Only one claim needs be infringed Only one claim needs be infringed

89 Copyright 2003, Gallagher & Dawsey Co., LPA Licensing Pitfalls

90 Copyright 2003, Gallagher & Dawsey Co., LPA Licensing Pitfalls Exclusive and Non-exclusive Exclusive and Non-exclusive Federal exception Federal exception Consider some middle ground licensing Consider some middle ground licensing Some licenses are better than owning! Some licenses are better than owning!

91 Copyright 2003, Gallagher & Dawsey Co., LPA Licensing Pitfalls Sublicensing and Assignment Sublicensing and Assignment Concerns with Exclusive Concerns with Exclusive Concerns with Nonexclusive Concerns with Nonexclusive

92 Copyright 2003, Gallagher & Dawsey Co., LPA Licensing Pitfalls Fees Fees How and when paid How and when paid Minimum Minimum Termination Termination

93 Copyright 2003, Gallagher & Dawsey Co., LPA Licensing Pitfalls Confidentiality Confidentiality An ongoing concern An ongoing concern Confidentiality manager Confidentiality manager Involve individuals Involve individuals

94 Copyright 2003, Gallagher & Dawsey Co., LPA Licensing Pitfalls Support Support Consider the costs Consider the costs

95 Copyright 2003, Gallagher & Dawsey Co., LPA Licensing Pitfalls Relationship Relationship Is it a joint venture? Is it a joint venture? Warranties Warranties Indemnification Indemnification Insurance Insurance

96 Copyright 2003, Gallagher & Dawsey Co., LPA Licensing Pitfalls Trademark Licensing Trademark Licensing Trademarks differ from patents Trademarks differ from patents Requirement to keep in use Requirement to keep in use Quality control Quality control

97 Copyright 2003, Gallagher & Dawsey Co., LPA Licensing Pitfalls ADR? ADR? Complexity Complexity Consider excepting IP from ADR Consider excepting IP from ADR Preserve ability to seek injunction Preserve ability to seek injunction

98 Copyright 2003, Gallagher & Dawsey Co., LPA Licensing Pitfalls Antitrust Antitrust Nature of IP will always make this a difficult area Nature of IP will always make this a difficult area

99 Copyright 2003, Gallagher & Dawsey Co., LPA Licensing Pitfalls Hotspots to Beware Hotspots to Beware M & A M & A Package Licenses/Tying Arrangements Package Licenses/Tying Arrangements Competitive efficiency Competitive efficiency Market power Market power Resale Price Maintenance Resale Price Maintenance Grantbacks Grantbacks Expired Patents Expired Patents

100 Copyright 2003, Gallagher & Dawsey Co., LPA Licensing Pitfalls Generally “Safer” IP Antitrust Areas Generally “Safer” IP Antitrust Areas Refusal to license Refusal to license Territorial and Field-of Use Restrictions Territorial and Field-of Use Restrictions Time/Quantity Restrictions Time/Quantity Restrictions

101 Copyright 2003, Gallagher & Dawsey Co., LPA Licensing Pitfalls Infringement Issues in Licensing: Infringement Issues in Licensing: Who has standing to enforce? Who has standing to enforce? Who pays? Who pays? Who recovers? Who recovers?

102 Copyright 2003, Gallagher & Dawsey Co., LPA Budgeting Pitfalls Remember to budget it! Remember to budget it! Learn basic patent procedure so that you can supervise outside counsel Learn basic patent procedure so that you can supervise outside counsel Foreign protection is both inexpensive and very expensive Foreign protection is both inexpensive and very expensive

103 Copyright 2003, Gallagher & Dawsey Co., LPA Trademark Troubles

104 Copyright 2003, Gallagher & Dawsey Co., LPA Trademark Troubles Applying for a trademark is easy – tens of thousands get rejected every year Applying for a trademark is easy – tens of thousands get rejected every year

105 Copyright 2003, Gallagher & Dawsey Co., LPA Trademark Troubles Trademarks can be as valuable for products as patents, at 1/20 the cost Trademarks can be as valuable for products as patents, at 1/20 the cost Crock-Pot Crock-Pot Hula hoop Hula hoop

106 Copyright 2003, Gallagher & Dawsey Co., LPA Trademark Troubles Trademarks are the only effective means of protecting certain types of IP Trademarks are the only effective means of protecting certain types of IP Brand recognition Brand recognition Service Businesses Service Businesses Good-will Good-will

107 Copyright 2003, Gallagher & Dawsey Co., LPA Trademark Troubles “actual use” v “intent to use” “actual use” v “intent to use” “specimen” “specimen” Class system Class system Domain names Domain names

108 Copyright 2003, Gallagher & Dawsey Co., LPA Trademark Troubles Getting is not keeping in trademark law Getting is not keeping in trademark law Failure to use in commerce Failure to use in commerce “Naked” licensing “Naked” licensing Genericide Genericide

109 Copyright 2003, Gallagher & Dawsey Co., LPA Copyright Pitfalls

110 Copyright 2003, Gallagher & Dawsey Co., LPA Copyright Pitfalls Copyright is born the moment a work is “fixed” in form Copyright is born the moment a work is “fixed” in form

111 Copyright 2003, Gallagher & Dawsey Co., LPA Copyright Pitfalls Buying the work without buying the copyright Buying the work without buying the copyright

112 Copyright 2003, Gallagher & Dawsey Co., LPA Copyright Pitfalls Websites Websites © your client’s website © your client’s website Make sure your client, and not the website developer, owns the copyright Make sure your client, and not the website developer, owns the copyright

113 Copyright 2003, Gallagher & Dawsey Co., LPA Copyright Pitfalls Fair Use Fair Use Commercial use is the most limited of all “fair use” Commercial use is the most limited of all “fair use”

114 Copyright 2003, Gallagher & Dawsey Co., LPA Copyright Pitfalls Statutory Damages Statutory Damages Available only to federally registered copyrights Available only to federally registered copyrights Columbia Pictures v Krypton Columbia Pictures v Krypton

115 Copyright 2003, Gallagher & Dawsey Co., LPA Copyright Pitfalls Because of the availability of statutory damages, copyright can have the biggest dollar for dollar payoff of any form of IP protection Because of the availability of statutory damages, copyright can have the biggest dollar for dollar payoff of any form of IP protection

116 Copyright 2003, Gallagher & Dawsey Co., LPA The Bottom Line We may do the formal IP work, but your client looks to you for guidance and with trust! We may do the formal IP work, but your client looks to you for guidance and with trust!


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