© mirick, oconnell, demallie & lougee, llp, 2010. m arlborough b usiness i nnovation s ummit...
TRANSCRIPT
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
MARLBOROUGH BUSINESS INNOVATION SUMMITMARLBOROUGH BUSINESS INNOVATION SUMMIT
Showcasing Marlborough as a Center for Key Industry Clusters and Innovation Capacity
Co-sponsored by:
Presented by:
Roger P. [email protected]
UNDERSTANDING THE IP CYCLE: MAXIMIZING RETURN WHILE
MINIMIZING COST
800.922.8337www.mirickoconnell.com
WORCESTER | WESTBOROUGH | BOSTONMIRICK, O’CONNELL, DEMALLIE & LOUGEE, LLP
MARLBOROUGH BUSINESS INNOVATION SUMMIT
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
PURPOSE OF AN IP STRATEGY Identify, develop and protect IP that adds value to your
business
Identify and avoid infringing IP owned by third-parties that may obstruct your business
Leverage Your IP through collaboration, which may include joint development projects, manufacturing, distribution or other strategies to commercialize IP
Enforce IP strategically, when necessary, to achieve your business purposes
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
KEYS FOR IMPLEMENTING AN IP STRATEGY
The IP strategy must reflect and implement your Business Strategy
Develop an IP strategy: define your goals and know the level of patent, trademark and copyright protection you need at each step
Obtain information: get your attorney to give you a clear overview of the filing process, waiting periods and costs involved in obtaining and maintaining IP protection
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
FORMS OF INTELLECTUAL PROPERTY PROTECTION
Patents
Trademarks
Copyrights
Trade Secrets
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
Patent: Keep Secret Until Filing; Term Limited to 14 (Design), 17 or 20 Years
Trademark: Use In Trade (Or ITU); Renew Indefinitely Unless Unused
Copyright: Author Has It When Fixed; Notice, Registration; Terms: Various
Trade Secret: Lost If Disclosed or Discovered Independently, Indefinite Term
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
IP CYCLE
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
FOUNDATIONS OF IP: INTERNAL SECURITY Create appropriate internal policies and procedures
Secure signed agreements from key employees and vendors including confidentiality, ownership of inventions and covenants not to compete
Maintain appropriate security in the workplace, including in company computers
Identify IP as it is created, and then designate and secure it
Conduct periodic audits to assure compliance
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
IP AND COLLABORATIONS Determine the scope of access to the other party’s IP
needed for the joint project
Identify the parties’ respective relevant IP at the start of the joint project
Agree on the disposition of the IP developed jointly during the project
• Who owns it? Who pays for getting IP protection?
• Who can or must be involved in enforcement?
• Who is the inventor (patents) or author (copyright)?
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
IP CYCLE
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
THE PATENT DEAL:A limited period of exclusive rights as defined by the claims
In Exchange For
An enabling description of comparable scope of any new & useful [& non-obvious] “process, machine, manufacture, or composition of matter, or any new & useful [& non-obvious] improvement thereof”
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
IP CYCLE
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
BASIC PATENT ISSUES
Is It Patentable & Useful? 35 U.S.C. §101
Is It New? 35 U.S.C. §102
Is It Non-Obvious? 35 U.S.C. §103
As Of When? Priority Date
Is It Described & Enabled? 35 U.S.C. §112
Who Invented It? Who Owns It?
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
HOW LONG DOES IT TAKE TO GET
A U.S. UTILITY PATENT?
Source:D. Crouch, Patently-O, 15 February 2007
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
PROS & CONS OF PATENTS Patents prevent others from using the
patented invention or design for the duration of the patent
Patents have a limited duration of 17 to 20 years for a device or method, and 14 years for a design
Patents often have substantial value and may increase the value of the owner’s business and help attract investment
The application process is slow and expensive, and the application may be narrowed or rejected
Patents may provide a valuable bargaining chip to negotiate licenses or cross-licenses with other parties
Other patents may block the right to practice the patent, or may limit the scope of use
Notice of a patents will usually deter other parties from infringing the patented technology
Other parties may seek to “design around” the patent, or may attack it by applying for reexamination
Federal Courts enforce patent rights Patent litigation is complex and expensive
Patent applications, when published, disclose the invention
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
PROS & CONS OF TRADEMARKS Trademarks can become protectable
without registration by use that is sufficient to establish “secondary meaning” (i.e., consumer recognition demonstrated by consumer surveys, etc.)
Proof of secondary meaning for common law trademarks is difficult and expensive
Trademark registration creates presumptions that the registrant owns the mark and that the mark has secondary meaning
The registration process, although generally quite efficient, still involves time and expense
Trademarks can protect a variety of distinctive features including names, logos, distinctive packaging and decorative features on the product
The “strength” of the mark can vary depending on the degree of distinctiveness within a particular field
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
IP CYCLE
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
KEYS FOR IMPLEMENTING AN IP STRATEGY Adapt your filing strategy to your real business
needs: do not patent everything and everywhere. Be selective and determine which ideas and markets are worth protection
Revise your patent portfolio continuously: filter out patents with no business perspective, either for your own exploitation or for licensing
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
PROTECTING IP IN THE GLOBAL ECONOMY IP rights are usually limited to the country where they are
obtained
Treaties make it possible to obtain IP rights in other countries on a reasonably efficient basis, but at some expense
The IP strategy should include identifying other countries where appropriate protection will promote the business plan
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
IP CYCLE
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
HOT TOPICS IN IP ENFORCEMENT When to sue: A demand letter may give the other party
the right to seek declaratory judgment in an inconvenient forum
Where to sue: In addition to the factor of geographic convenience, some federal courts have special rules to manage patent cases
How to respond to a patent that blocks your business plan: Reexamination is an increasingly attractive alternative
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
REMEDIES FOR PATENT INFRINGEMENT Actual damages, which may include either the patent
owner’s lost profits, disgorgement of the infringer’s profits, or a “reasonable royalty” based on a “hypothetical negotiation”
Injunctions upon proof of irreparable harm
Treble damages and attorneys fees in case of willful infringement.
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
REMEDIES FOR TRADEMARK INFRINGEMENT Actual damages, which may include trademark owner’s
lost profits or disgorgement of infringer’s profits
Injunctions upon proof of irreparable harm,
Treble damages and attorneys’ fees in “exceptional cases”
Statutory damages and/or criminal penalties in case of counterfeiting a registered trademark
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
IP CYCLE
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
IP LICENSING Licensor agrees to permit activities by licensee that
would otherwise be infringing
May be limited to a geographic area and/or a field of use of the IP
Who can or must be involved in enforcement?
Revenue stream
• Upfront and milestone payments
• Royalties
Audit & police the licensing agreement
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
IP CYCLE
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
KEYS FOR IMPLEMENTING AN IP STRATEGY Start a technology and competitor watch process:
use cost-free patent information and other sources (e.g. scientific publications, trade journals) both to inspire yourself and to identify potential infringers as soon as possible
Identify and cultivate potential partners and licensees who may collaborate to realize the value of your IP
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
IP CYCLE
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
KEYS FOR IMPLEMENTING AN IP STRATEGY Communicate pro-actively: communicating the
protection of your IP is a cost-efficient mean to reduce the potential risk of loss of trademark rights or infringement
Keep in touch with your licensee: regular contact and meetings provide you with information on your licensee’s activities and thus can prevent potential problems
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
IP CYCLE
© Mirick, O’Connell, DeMallie & Lougee, LLP, 2010.
BRIAN M. [email protected]
ROGER P. [email protected]