Intellectual Property &
How to Protect It
Sandra Thompson, PhD, Esq.
Buchalter Nemer
Where to Begin
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Vision
Goals
Objectives
Strategies
Tactics
Metrics
Where to Begin
 Vision: Make better vegans
 Goals: Provide accessible resources for new vegans
 Objectives: Online resources, tailored/customizable
resources by the end of 2014; subscription model by 2015
 Strategies: Develop or identify web-platform that can fit
needs of customization and resource management; Develop
and solidify branding; identify various partnership groups
 Tactics: On-line advertising or endorsement of a brand
through celebrities; put together resources from respected
nutritionists, vegan athletes and vegan celebrities.
 Metrics: page views, subscriptions
Where to Begin
 Structure
– Corporate, Ownership, Taxes
 Money
– Venture, SBA, Loans, Grants
 Intellectual property
What are the forms of IP?
• Patents
• Trade Secrets & Know How
• Copyrights
• Trademarks, Service Marks & Trade
Dress
• Domain Names
What do the forms of IP protect?
• Patents – Protect ideas: new, useful and non-obvious inventions.
• Trade Secrets & Know How – Protect ideas and information.
• Copyrights – Protect the expression of ideas.
• Trademarks – Protect against confusion as to source or origin of
goods or services.
• Domain Names – Your address on the Internet.
Examples
• Trademarks
COCA-COLAHP
PFIZER
INTEL INSIDE
“Swoosh”
• Service Marks
GOOGLE
BANK OF AMERICA
• Trade Dress
Coca-Cola Bottle
McDonald’s “Golden Arches”
Restaurants
Patent Examples
• Trade Secrets
Coca-Cola Formula
Search engine algorithms
• Copyrights
Movies, Websites,
Paintings, Books, Photos,
Articles, Computer
Programs, Music
• Patents
Food Processor No. 4,541,573
Cheesecake Wedge No. D300,380
Compounds No. 3,790,670
Who owns IP (initially)?
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Patents – Inventors
Trade Secrets & Know How – Creators and controllers
Copyrights – Authors
Trademarks – User of the mark
Domain Name – Registrant
How long does protection exist?
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Patents – Utility – 20 years from filing date
Trade Secrets & Know How – As long as it remains secret
Copyrights – Life of Author + 70 years or 95 years from creation
Trademarks – For as long as the mark is in use
Domain Names – For as long as registration is maintained
Where to Begin
 Vision: Make better vegans
 Goals: Provide accessible resources for new vegans
 Objectives: Online resources, tailored/customizable
resources by the end of 2014; subscription model by 2015
 Strategies: Develop or identify web-platform that can fit
needs of customization and resource management; Develop
and solidify branding; identify various partnership groups
 Tactics: On-line advertising or endorsement of a brand
through celebrities; put together resources from respected
nutritionists, vegan athletes and vegan celebrities.
 Metrics: page views, subscriptions
Small/Mid-Size Business
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New Business
Few or No Employees
Intellectual Property/Trade Secrets
Protecting Your Inventions
Limited Budget/Limited Resources
Small/Mid-Size Business
 Independent Contractors Agreements
– California and the “Work for Hire” Provision
 Employment Agreements
– Intellectual Property Assignments
– Leaving the Company Issues
 Your Business Considerations
– Marriage In, Divorce Out
Corporate Disclosure Process
 Corporate/Intellectual Property Committee
 Meets regularly
 Reviews new/proposed intellectual property,
employment and contractor decisions
 Reviews invention disclosures
 Reviews current and long term IP budget
 Tracks decisions
Corporate/IP Committee
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Management, Sales, Patent Counsel, Technical
Meets Regularly
Reviews potentially patentable developments
Strategizes as to importance, resources, viable
prosecution routes, enforceability, freedom to
practice
 Document inventions, disclosures, trade shows and
meetings, presentations, sales pitches and samples
 Agreements and contracts
Review Contracts and Agreements
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Employee agreements
Intellectual property agreements
Independent contractor agreements
Assignments to company
License Agreements
Other Information
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Offered for Sale? Sampled?
Upcoming/Past Meeting/Tradeshow?
Collaboration?
Date of completion of form
Signatures of technical team & witness
Invention Disclosure System
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Form based
Web based (good for multiple locations)
Individual number assigned to each one
Easily tracked
Easily referred to in minutes
Key words, grouping inventors
Classification of Information
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Patent application
Continuing patent application
Defensive publication
Trademark
Copyright
Trade secret
Trade Secrets
 Designed to keep some processes or materials
from the public long term
 Saves money with respect to IP budget
 Employee turnover
 Proof of “leak” – usually circumstantial
 Proof that company protected secret (normal
business practices)
 AIA now encourages use of trade secrets
Provisional Patent Application
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Not Examined by USPTO
Not Published
Allows Applicant to use “Patent Pending”
Only pending for 1 year from filing
Does not count toward 20-year patent term
Utility Patent Application
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Considered “typical” patent application
Background, Detailed Description, Examples, Claims
Best Mode Necessary
Assigned to Technology Group & Examiner
Published 18 months after filing
The Inventor(s)
 Should you call them “Inventors”?
 Consider “Technical Team” or “Technical Contributors”
 Order isn’t significant with respect to USPTO or foreign
patent offices
 Home addresses, good contact information
 Alternate E-mail addresses
 Itemize Employment Agreements, consider keeping with
disclosures
Inventorship
 “Who are the inventors?”
 What is on the disclosure form?
 Incorrect inventorship = can be corrected, can result in
invalidating issued patent (court looks at intent)
 Inventorship is also linked to ownership of the patent – each
owner has an undivided interest in the patent – no matter
the % contribution, unless otherwise modified between the
patent owners.
 Community Property State? Transfer of Ownership?
Review Contracts and Agreements
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Employee agreements
Intellectual property agreements
Independent contractor agreements
Assignments to company
License Agreements
Inventorship
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Inventorship v. Peer Review
Inventors for Joint Agreements
Company President?? Group leaders?
Inventor who has left the company? Is this person listed on
the company disclosure?
Proving Inventorship
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Laboratory Notebooks
Meeting/collaboration notes
E-mails/memos
Computer files
Publications/journals
Abstracts/meeting presentations
The Idea or Concept
• You do not need to reduce it to practice
• You should not publicize it – publish, local or national meeting,
internet
• You should report it to the right place at the Company or University
and use the right format/form
• You should document your work, who you worked with and who
made what contributions to the concept or invention
• If you know of any journal articles, work or patents that are close or
in the same field as what you are doing – keep a list and submit it
with your invention disclosure
What a Company or University Needs in Place
• Policy Framework
• Intellectual Property Committee that meets regularly
• Online, web-based system for inputting and date-stamping invention
disclosures
• Internal or External system for tracking submitted and published
articles, internet publications, presentations and meetings attended
by professors and graduate students
• Regular training and “IP Alerts”
Thank you!!
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Sandra Thompson, PhD, Esq.
Buchalter Nemer
sthompson@buchalter.com
(949)224-6282 (direct)
(949)224-6203 (fax)
www.Buchalter.com