Tips for Managing Intellectual Property

Camille L. UrbanBrownWinick

666 Grand Avenue, Suite 2000Des Moines, IA 50309-2510Telephone: 515-242-2451Facsimile: 515-323-8551

E-mail: curban@brownwinick.com

Intellectual Property You May Not Realize You Have

• Copyright protects creative expression

• Trade Secret protects valuable corporate info

• Patentable Invention excludes others from your invention

• Trademark exclusively identifies your service or good

Copyrights

Protects original works of authorship that are fixed in a tangible medium

• Term

• Cost

• Maintenance

• Rights attach

• Infringement

• Ownership

Copyrights (cont.)

• Joint Works • Collective Works• Work For Hire

TIPS:

Agreements with contractors and employees make ownership simple!

Notice is free.

Tradesecret

“The stuff of corporate espionage, great movies and pizza sauce“

Has independent economic value because not generally known, not readily ascertainable by proper means by one able to obtain economic value from it AND is the subject of reasonable efforts to maintain its secrecy.

Tradesecret

• What is protectable as a Trade Secret?• How long does it last? • What does it cost?

Tradesecret

Identify the secret; assess the risk; reduce the risk—

• Create a plan

• Execute the plan

• Enforce the plan

Inventions

• Protect as a Trade Secret or Patent?

• Level of prior disclosure?

• Can it be kept a secret and still provide economic value?

• Or will secrecy be too difficult/expensive?

• How long with the invention have value?

Patents

• How long does it last?

• How much does it cost?

• General process?

• When do we have to decide?

Patents

Ownership of underlying invention?

• Tricky. Joint.

• Pre-negotiation simpler than post

• Use agreements

• Include limited power of attorney

Patents

That joint inventorship thing….

• Friends and Neighbors• Testing company • Help from the university• Help from independent contractor• Help from independent contractor connected

with a university

Patents

UNIVERSITY OWNED: 1. MIT, Stanford model – post nonnegotiable

licenses2. Milestones typical3. Scientific Inventor Rights: In the absence of

agreement between university and its inventor

4. Other Institutions: May also have rights. Scientists transfer. Universities collaborate.

Trademarks

• Used in commerce to identify a source

• Infringement: When a mark causes consumer confusion as to a source of goods or service

• When used correctly, increases in value over time

Trademarks

• How long does it last?

• How much does it cost?

• General process?

• When do we have to decide?

All together now… What are the sources of IP

• Patents?• Copyright?• Trade Secret?• Trademark?

Is Protection for valuable IP in place?• Have patents been filed? Trademarks? Policing strategy?• Has copyrighted material been registered?• Is there a strategy in place for protecting trade secrets?

Are ownership issues resolved?• Are there multiple inventors/authors?• Have proper assignment documents been signed?• Have contractors signed work to hire agreements?

Negotiating IP Deals

• The value in an IP-driven deal is typically largely based on rights to use, rights to change, rights to modify, rights to sell

Common Deal Terms

• Ownership v. license• Working relationship and contributions• Timelines• Features/character/object of services• Payment: how, when, triggers• License for pre-existing• On-going support

Common Deal Terms (cont. )

• Territory/geographic bounds?• Improvements? Ownership? License

back? • Joint developments?• Expires with patent right or with term?• Indemnification – infringement, product

liability• Termination for cause

Negotiating

• Categorize each term on the continuum:

negotiable→ barely negotiable→ nonnegotiable

• Create realistic expectations for each term• Determine room to maneuver, basis for

maneuverability, and factors affecting same

Negotiating: COMPONENTS OF VALUE APPROACH

• Consider the key terms only first e.g. royalty, overall use rights, ability to modify, development services.

• Then fill in the remainder without re-negotiating any of the key terms if possible.

Negotiate Realistically

Determine “walk away”

Concede if reasonable, but make sure every concession has meaning

Watch out for “last minute” demands

Know when to stop

Negotiating: NOTHING IS AGREED ON UNTIL ALL IS AGREED ON

Be willing to re-open a clause in order to negotiate another clause within the agreement.

….

NEGOTIATION IS A TEAM SPORT!!

DON’T BURN BRIDGES!!

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