1. Intellectual Property Owner’s Manual
September 19, 2016

2. 1. Your Confidentiality Agreements
Don’t make confidential disclosures, when non-confidential disclosures will do.
Don’t make any disclosure of confidential information without some written agreement about confidentiality
Don’t assume that a confidential disclosure agreement is what you need
If there is any chance that as a result of the disclosure one of the parties could develop technology relevant to the other, then something more may be needed.
September 30 , 2014

3. 1. Your Confidentiality Agreements
Don’t make a disclosure to someone you do not trust, even with a confidentiality agreement.
A confidentiality agreement does not make them trustworthy, it merely let’s you sue them.
September 19, 2016

4. 1. Your Confidentiality Agreements
Do you trust the recipient?
Find someone else to deal with. No
Yes
Can you productively confer without the exchange of confidential information?
Hold non-confidential discussions and use a Non-Confidentiality Agreement.
Yes No
Is there a possibility that someone will develop technology as a result of the disclosure?
Use an agreement that addresses ownership in addition to confidentiality.
Yes
September 19, 2016

5. 1. Your Confidentiality Agreements
Is the subject matter well defined?
Is there a promise not to disclose?
Is there a promise not to use?
Is there a disclaimer of liability?
Are there export restrictions?
Is the term of the Agreement clear?
Is the duration of obligations clear?
Is the choice of law/forum clear?
September 19, 2016

6. 1. Your Confidentiality Agreements
Start the battle of the forms, don’t try to fix someone else’s form.
A mutual agreement is more likely to be reasonable than a one way agreement, but don’t take on obligations that you don’t have to, simply to get a reasonable agreement.
September 19, 2016

7. 2. Your Employees
Get an immediate assignment in addition to an agreement to assign future inventions.
Don’t over reach. State statutes may limit what you can ask for.
Get an authorization to execute patent papers, including a power of attorney to execute assignments.
Control access to computers and data.
September 19, 2016

8. 2. Your Employees Include a confidentiality clause.
Consider who owns your employee’s professional identify, and the line between your identity and your employees on social networks (Linked-In, Facebook, Twitter).
Consider a non-compete clause.
Consider a non-solicitation clause.
September 19, 2016

9. 3. Your Consultants
Get an immediate assignment of work product in addition to a promise to assign work product.
Take into account that the work of consulting entities may be done by employees and non-employees of the consultant.
Prevent the consultant from working for the competition (at least right away).
September 19, 2016

10. 4. Your Inventions
Do not disclose inventions outside your company until you have filed a patent application.
Make sure that you have written agreements with everyone who is working on, or might work on, inventing.
Consider assignment language in invention disclosure forms and suggestion forms
September 19, 2016

11. 4. Your Inventions
File promptly, and use provisional applications to document significant interim developments, before filing a regular utility patent application.
September 19, 2016

12. 5. Your Trademarks
Don’t fall in love with marks until they have been fully vetted.
Search your marks to avoid wasting time.
Google the marks to find potential conflicts and understand the public perception of the term.
Avoid merely descriptive marks.
Make your marks, advertising, and packaging distinctive and consistent (build an identity).
Register your trademarks to protect the mark across the country.
September 19, 2016

13. 5. Your Trademarks
Use your marks properly and police them; advertise your marks in addition to your products.
Trademarks can be anything that is non-functional and distinctive of your company, including product and packaging configurations.
September 19, 2016

14. 6. Your Copyrights
You have copyright rights in all works of authorship as soon as they are fixed in tangible form.
Make sure you acquire all the rights you need in works created by third parties (including consultants).
Put copyright notice on everything:
© Copyright Owner 2015
and register the copyright in works that are likely to be copied.
September 19, 2016

15. 7. Advertising and Promotion
Make sure that you are ready to disclose the content.
Make sure that you are using your marks properly.
Make sure that you have adequate right to publish the advertising.
Make sure that you protect your advertising.
September 19, 2016

16. 8. Life in a First-to-File World
Avoid disclosing your invention outside the company until you have a filing date.
Keep invention records (you will need them if you break Rule #1) particularly records of disclosures to others.
Serially file provisional applications to get new priority dates for all significant developments after the initial filing, and roll them up into a non-provisional within one year of the first provisional.
September 19, 2016

17. 8. Life in a First-to-File World
Consider publishing your invention if you are going to abandon an application before publication, to create prior art against others.
September 19, 2016

18. 9. Rights of Others
Be careful incorporating ideas or suggestions from third parties, including vendors, customers.
Be careful hiring employees from competitors.
Be careful designing a product to compete with an existing product; consider patents, design patents, copyrights, trademarks, trade dress, and confidential information.
September 19, 2016

19. 10. Your
When writing s creating exhibits for the inevitable law suit consider:
Keep business professional.
Write as if your mother were reading over your shoulder.
Consider the purpose of the communication.
Consider the audience/recipients of the information (including a judge and jury).
Be factual; where opinion is called for, identify it as opinion, and make sure that it is germane to the issues; do not give (a legal) opinion you are not qualified to give.
September 19, 2016

20. 10. Your
When writing s creating exhibits for the inevitable law suit consider:
Do not make mean or demeaning references to others.
Make your point, but avoid extreme emphasis!!!!
Keep business and personal messages separate.
Consider how your characterization of the Company and its activities would be perceived by an outsider.
September 19, 2016