orlando, florida © 2011 lowndes, drosdick, doster, kantor & reed, p.a. all rights reserved

Orlando, Floridawww.lowndes-law.com

© 2011 Lowndes, Drosdick, Doster, Kantor & Reed, P.A. All Rights Reserved

Excellence In EntrepreneurshipIntellectual Property

Orlando, Florida | www.lowndes-law.com

Why should I care about IP?



Common Mistakes Startups Make

• “Borrowing” content (copy (text), images, look & feel) from another

• Picking a brand without researching other uses first

• Picking a brand that can’t be protected (or that is not worth attempting to protect)

• Hiring an independent contractor without a contract with IP provisions

• Hiring an employee without a contract with IP provisions

• Freely discussing ideas and innovations with others without confidentiality and non-disclosure agreements

• Sitting on an invention for too long or delaying seeking protection on it

• Improperly using its trademark

• Making/using/selling/importing another’s invention without researching whether they have sought protection on it



How your IP can work for you

• Distinguish your business from competitors• Be a revenue producing asset (sale or license)• Provide you with a monopoly• Be a working asset (security for loan)



How others’ IP can work for you

• Provide you with a workable idea in the advanced stages of development

• Provide creative content

Just be careful… It can also work against you.



What is Intellectual Property?

CopyrightsWorks of authorship

Literary works, Music, Audiovisual, Architectural

Fixed expression

PatentsUtility -Invention Design - Ornamental design of functional item

Trade SecretsSecret + economic valueinformation, formula, compilation, technique

TrademarksIdentify a source (Brand)

Words/Phrases Logos/Colors Sounds/Scents

Intellectual Property




Intellectual Assets

Human Capital

• Relationships• Key Employees• Know-How • Education• Skills• Experience• Training• Customer

knowledge• Relationships

• Customers• Vendors• w/i industry

• Software• Processes • Internal documents

• work product• innovation• hiring/firing

• Contracts• Licenses (inbound

and (outbound)• Vendor lists• Customers lists• Customer

knowledge• Business plans• Domain names• Brand

• Patents• Trademarks• Copyrights• Trade Secrets

What is Intellectual Property?



Patents



Protections• Patents provide the right to exclude others

from:º Makingº Usingº Sellingº Offering for saleº Importing into the U.S.



What they are not….

• Patents are not a right to make/use/see

• Patents are not a guarantee of success

• Patents are not easy/quick/inexpensive to obtain or enforce.



Types of Patents Utility Patent: New, useful and non-obvious process machine, manufactured good, composition of material, or improvement thereof (20 years)

Design Patent: Original, novel, nonobvious ornamental design for an article of manufacture (14 years)

Plant Patent: New and distinct asexually reproduced plant (20 yrs)



Utility Patents• Utility

• Novel

• Non-Obvious

• Enabled

• Written Description

• Best Mode

Invention (Your Job)

Application (My Job)



Criteria• Novelty requires that the

identical invention not be described in the prior art

• Non-obviousness requires the invention not be “obvious” to one of ordinary skill in the art at the time the invention was made



There is no requirement that an invention be a good idea!

Baby Patting MachineU.S. Patent No. 3,552,388 (1971)



Requirements & Best Practices

• File early (first to file; becomes public domain one year after disclosure)

• Make sure employees and independent contractors assign all rights to company

• Make sure all employees, independent contractors and third parties sign NDAs (prior to application filing/publication)



Trade Secrets



What is a Trade Secret

Information that provides a business with a competitive advantage



Examples



Factors Considered to Determine Trade Secret Status

• Independent economic value to the business• Not generally known• Not readily ascertainable • Subject of reasonable efforts to maintain its

secrecy• Restrict access to information• Physically secure the information• Place proprietary notices on all documents• Obtain NDAs from third parties• Keep employees on a need-to-know basis• Obtain NDA’s and non-competes from any

employee with access



Protections• Protects against misappropriation

• Protects indefinitely

• Not Protected from:

• Fair discovery

• Independent invention

• Accidental disclosure

• Reverse engineering



Trademarks



QUICK! Name a soft drink …



Any indicator (name, symbol or slogan) that distinguishes the

source of a particular product or service.

•Cannot be generic or merely descriptive

•Rights come from first to use

•State and Federal

•Never expire



Words

Phrases

Shapes

Symbols

Colors

Sounds

Smells

“Coke”

“Happiest Place on Earth”

Toblerone triangle, Aunt Jemima

Home Depot Orange

Plumeria scent for sewing thread



Descriptive* Suggestive Arbitrary Fanciful

Pet Land Dairy Queen Apple Google

* Allowable if distinctiveness has been acquired, e.g. McDonald’s



Pet Land

Weak marks provide almost NOscope of protection

PetVillage

PetCity

PetWorld

PetTown



• Set yourself apart in the consumer’s mind

• Prevent lost customers

• Avoiding enforcement costs

• Arbitrary/Fanciful terms are less likely to infringe others

• Domain name availability

• Adding corporate value - Google® is valued at $44.3 BILLION (27% of overall company value)



• Likelihood of Confusion

• Injunction

• Domain transfer

• Infringer’s profits, lost profits, reasonable royalty, actual damages, corrective advertising, impounding, costs of action

• Treble damages, attorney fees (exceptional cases in Fed)



Copyrights



• Original works of authorship

• Expression, not the idea

• Fixed in any tangible medium of expression

• Literary: text, advertising copy, computer programs

• Visual Arts: photos, tech drawings

• Performing Arts: musical works (lyrics), videos

• Sound Recordings: MP3s



• Employee vs. Contractor

• Employee = Employer Authorship (if in scope)*

• Contractor = Contractor Owns (license granted)

• Work for Hire (written and signed)

• Assignment (written and signed)

• Joint Works (respons. to co-author, contr. patents)

OWNERSHIP



• Reserved to original author

• Works based on one ore more preexisting works

• translation

• abridgment

• condensation

• work is recast, transformed or adapted

Derivative Works



• Collection or assembling preexisting materials in an original way

• Collective Works (Journal)

• Originality

• Selection

• Coordination

• Arrangement

Compiliations



• Term (Ends w/ Calendar not Anniversary)

• Individual = Life + 70yrs

• Corporate

• 95yrs from publ.

• 120yrs from creation

• Includes Works for Hire



• Work reproduced, distributed, performed, publicly displayed, or made into a derivative work

• Injunction

• Actual damages, profits

• Statutory damages: $200 - $150,000 per infringement

• Attorneys fees/costs

• Impounding

• Jail

Orlando, Floridawww.lowndes-law.com

© 2011 Lowndes, Drosdick, Doster, Kantor & Reed, P.A. All Rights Reserved


Tom E. TonerRegistered Patent Attorney, Of Counsel

[email protected]

Courtney M. DunnRegistered Patent Attorney, Senior Associate

[email protected]

orlando, florida © 2011 lowndes, drosdick, doster, kantor & reed, p.a. all rights reserved

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