1 Your Legal Team IP 101 The Basics of Intellectual Property February 2009

2 Your Legal Team Agenda  Overview  Different forms of IP  Ingredients required to protect  Trade Secrets  IP Leakage  IP Contamination  Commercialization  Red flags / pitfalls – on the flow What are your takeaways from this session?

3 Your Legal Team What is IP?  Intangible  Asset  Arising from man’s creative thinking  Provides negative rights – prevents others from using

4 Your Legal Team Different forms of IP Trademarks Trade Secrets Patents Copyrights Designs Designs

5 Your Legal Team Characteristics – Trademark: A symbol that has commercial association. – Copyright: An expression of an idea, fixed on a tangible medium such as written document, software, music. – Patent: An invention, whether a process, machine or design, for which a patent is applied and granted. – Trade secret: Any information that is kept secret and would lose its commercial value if disclosed or misused. – Design: A new or original distinguishable design. – Semiconductor integrated circuits layout design – Geographical indications: origination of goods, natural or manufactured – Protection of plant varieties

6 Your Legal Team Protection of IP Protection of IP Concepts Constituents It may be necessary to seek protection under more than one form, different jurisdictions.

7 Your Legal Team Patents  What is: Statutory (not automatic), monopolistic right, tangible concrete manifestation of the ideas in the form of some invention to get protection. Products or processes. Invention means a new product or process involving an inventive step and capable of industrial application.  Why: Promote industrial innovations.  Ingredients: –Novelty -prior art/use, bedrock of patent laws –Utility - need not be superior, commercial success, perfection, performs crudely –And inventive step / non-obviousness – measures technical accomplishment, not trivial. Manner of manufacture.  What: Manufacture, Software, industrial products, biotech. agricultural? Excludes discovery, scientific or mathematical theory, animal/ plant variety  20 years, not renewable.

8 Your Legal Team Trademarks  What is: Mark capable to being represented graphically, capable of distinguishing goods / services, includes shape of goods, packaging, combination of colors.  Why: To identify and distinguish.  Ingredients: Distinctive (inherent / acquired), visual symbol (word, device, label), no confusion.  What: Service marks, color, sound  How long: 10 years protection. Can be renewed.

9 Your Legal Team Copyrights  What is: Original creative work fixed on a tangible medium. Expression of an idea and not the idea. NO REGISTRATION PROCESS.  Why: encourage exploitation of copyrighted work.  Ingredients: originality, creativity  What: literary, dramatic, artistic, musical, cinematograph film, sound recording, sculpture, craftsmanship. –Software, computer programs, tables and compilations under literary work.  Fairuse. Creative commons.  Term: 60 years.

10 Your Legal Team Trade Secrets Trade Secrets Managing Confidentiality

11 Your Legal Team Trade secrets  Trade Secrets –The KNOW HOW –Any information that is not publicly known; and –Has economic value; a “competitive advantage”; and  Is subject to “Reasonable efforts” to keep it secret. –Examples of Reasonable Efforts Information was marked “Confidential” when created Information not left “lying around” Information distributed only on “need-to-know” basis Information given to third parties only under NDA Information not published

12 Your Legal Team Protecting trade secrets – small steps  Never disclose or receive confidential information without an approved and a fully executed NDA in place and a legitimate “need to know” by the recipient. –Depending on the sensitivity, you may have different kinds of NDA.  Never disclose your’s, Supplier’s or Customer’s confidential information publicly.  Always label and treat confidential information properly.  Always use demonstrable, reasonable efforts to keep confidential information protected.

13 Your Legal Team Protecting trade secrets – small steps  Know who you are talking to before you disclose valuable information.  Assume that those around you are competitors and are very interested in what you have to say.  Bring only that information which is essential to your business trip and, if at all possible, leave classified information locked up in your office.  Refrain from discussing, disclosing, inadvertently showing or leaving classified information unattended.  Know who is listening when using public transportation / Use secure communication links.

14 Your Legal Team Interesting Concepts Interesting Concepts Leakage Contamination Commercialization

15 Your Legal Team IP Leakage  IP Leakage is the unintended release of IP –Sometimes accidental (e.g., X Co. presents tool data for Suppliers “A”, “B”, and “C” … although no names are given, there are only 3 competitors) –Sometimes too tactical (e.g., X Co. discloses foundry energy saving innovations to Supplier and Supplier makes the product for benefit of all its customers, with no tangible ROI for X Co.) Leadtime advantages gets eroded and competitive sourcing opportunities gets missed

16 Your Legal Team IP Contamination  Proprietary information of others that, if incorporated in your product, creates a high risk of intellectual property violation

17 Your Legal Team …Contamination  Avoid situations where IP contamination is likely to occur –Do not accept outside proprietary information without first evaluating your need –Do not use proprietary info of your past employer  Share on a need to know basis even within the company.  Follow containment, inoculation and safe handling protocols when outside proprietary information is needed.  Damages can include royalty for every piece sold.

18 Your Legal Team Commercialization  Licensing / Royalty  Collaboration  Sell  Portfolio management – Acquisition or purchasing to fill holes in the portfolio.  Barter  Investment – internal process (badge, harvesting sessions, training programs, firewalls, NDAs, inhouse IP counsel, relationship with the inventors, opensource), Protection, company’s growth potential.  SPV  Trolls

19 Your Legal Team About Us  NovoJuris is a legal consulting company focused on start-ups and SMEs in technology sector. We hand-hold startups from inception, funding and beyond.  Please visit to know more about us.

20 Your Legal Team Thank you 32, Osborne Road, Near Lakeside Hospital Ulsoor Bangalore – Tel: Bangalore. Chennai