1739 intellectual property catalogue 2010 1739 intellectual property catalogue 2010
From an Entrepreneur perspective October 7, 2013 Intellectual Property (IP) Hieu (Tony) D. Ngo...
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Transcript of From an Entrepreneur perspective October 7, 2013 Intellectual Property (IP) Hieu (Tony) D. Ngo...
From an Entrepreneur perspective
October 7, 2013
Intellectual Property (IP)
Hieu (Tony) D. NgoAssociate Technical FellowIntellectual Property ManagementThe Boeing Company
Wayne R. HoweAssociate Technical FellowIntellectual Property ManagementThe Boeing Company
• Wayne R. Howe – Associate Technical Fellow in Network and Systems. Wayne leads Intellectual Property Strategy and Protection for the Boeing Network & Space Systems (N&SS) business with Boeing Defense, Space and Security (BDS). Wayne has over 20 years of significant accomplishments in IP, strategy, cyber, network and communications technology architecture, R&D, specifications, requirements, architecture, performance, strategic planning, business development, and patents. Wayne holds a Doctor of Jurisprudence (Law), an MBA, MS in Computer and Information Science, M.A. in Electrical Engineering, and a B.S. in Electrical Engineering
• Hieu (Tony) D. Ngo - Associate Technical Fellow in System Engineering. Tony leads Intellectual Property Management Policy, Protection, and Planning Integration. Tony holds a Doctor of Jurisprudence (Law), an MBA, and a B.S. in Engineering. Tony is licensed to practice law in the State of California and is also registered to practice before the U.S. Patent and Trademark Office (USPTO).
Innovation = Business + Invention
Value of strong IP protection will be worth much more than the cost of obtaining it.
Innovation Challenge’s Journey
You
Team
Mentor
Advisory / EvaluationCommittee
Award Event / Winner Announced
Supplier / 3rd Party
Why IP Is Important?
• IP has VALUE
• IP provides a COMPETITIVE ADVANTAGE
• Misuse or lack of awareness of IP can put you at RISK
IP create a barriers of entry by competitors
• VALUE Google paid $12.5 B for Motorola Smartphone patents
• COMPETITIVE Numerous high profile trade ADVANTAGE secret thefts over past 5 years
“Chinese company uses leaked photos to copy, patent
iPhone 5 design” (http://bgr.com/2012/09/05/iphone-5-design- copied-patented-goophone-i5)
• RISK Huge Jury Verdict against Samsung
What If You Don’t Protect Your IP?
Without IP Protection, Competitors Win
Top 10 Largest Initial Adjudicated Damages Awards (‘05 – ’13)
Source: 2013 Patent Litigation Study, PWC.
What is Intellectual Property?
• A product of the mind or intellect, in a concrete or abstract form, in which one can assert ownership rights.
• Each of these types of IP have unique requirements and offer different legal protections.
Trademarks Patents Trade Secrets Copyrights
Copyright Patent
-Software
-Books
-Photos
-Music / Recordings
-Motion Pictures
-Chemical compositions, Electrical, and Mechanical products and processes
-Biotechnology
-Business processes and methods
-Software – Algorithms Executing on computer
Trademark
-Words, Symbol, Slogans used to identify & distinguish one’s products or services
-Valuable information that is not publicly known
(Technical, financial, marketing, formulas, know-how, etc.)
Trade Secret
Range of IP Protection Approaches
Product
Methods, Processes, or Techniques
Flow Chart, SourceCodes
Name / Graphics / Logos
Algorithms
Business Plan
Marketing / Product Launch Time Table
Designs, Drawings, etc.
IllustrationTrade Secret
Trade Secret
Patent
Copyright
Patent
Trade Secret
TradeSecret
Trade Secret
Trademark
Copyright
Copyright
Copyright
Trade Secret
Copyright
CopyrightPatent
What’s Trademarks?
Trademarks are words, symbols or slogans used to identify & distinguish one’s products or services from others
Minimize confusions
APPLE
How To Obtain a Trademark?
• Simply using a name or symbol as an identifier for your products or services Limited to geographic area in which the mark is used
• Register your Trademark with the U.S. Patent and Trademark office Legal presumption of ownership
Exclusive right to use the mark nationwide
Prerequisite to brining an action concerning the trademark’s in federal court.
Recommendation: Early Registration
What Is Trade Secret?
• Any information that derives independent economic value, actual or potential
• Not being generallyknown or readilyAscertainable by proper mean
• Others person who can obtain• economic value from its• disclosure or use
Every company has trade secrets
Example of Trade Secrets
• Designs• Drawings• Specifications• Patterns• Plans• Compilations• Program devices
• Formulas
• Prototypes• Methods, Techniques,
Processes, and Procedures
• Flow Charts• Marketing timetables• Customers / Suppliers
List• …
Trade Secret protection is extremely valuable
Protecting Trade Secrets
•Take reasonable measures
of efforts to keep the information
secret
Varies with the nature of the information andother circumstances
• E-mails and Mobile Devices Need to have policy in place
• Employee and Consultant Confidentiality Agreement
• Investor Non-Disclosure Agreement.
• Document Proper Marking
• Access (physical or electronic) Access Control Policy
Protection Trade Secrets - Examples
What Is Copyright?
• Protect original work of authorship
• Examples:o Protectable: literary works,
a/v works, computer programs
o NOT Protectable: titles, slogans,
ideas, processes
Protect creative expression of ideas, not the ideas
©
• Are critical for high-tech companies that are developing software and multimedia
• Any business that has a presence on the Internet will want to protect the company’so Websiteo Photographo Musico Writingo Artwork
Copyright
A copyright automatically comes into existence when you create a work of authorship and fix it in a tangible medium
Rights in Copyright
• Exclusive rights to (or authorize others to)o Dictate who can copyo Copy - Reproduce a worko Modify or prepare a derivative worko Distribute copieso Publicly perform or display a work
• Exceptionso Criticismo Commentso News reportingo Teachingo Research
How To Protect Your Copyright
• Documents Copyright Legends
• Software Copyright Legends, Banner, or incorporating a “tell” into the software
• Respect the rights of othero Content and software off the Interneto Open Source Software
Having the means to prove ownership
How To Obtain a Copyright?
• Filing with the U.S. Copyright Office provides some important additional benefitso Statutory damages, Attorney fees
• Relatively inexpensive to registero $65.00 / applicationo $35.00 / application if file on-line
Copyright © XXXX Boeing. All rights reserved.
Patent
• A patent is ao grant issued by the U.S.
Patent and Trademark Office (USPTO)
o giving inventors the right to exclude all others from making, using, or selling their inventions
o within the United States, its territories, and possessions
o for up to 20 years.
• Utility Patent Protect the function or “utility” of the invention
• Design Patent Protects the “ornamental design” or
appearance
• Plant Patent Protects distinct and new varieties of plants
Types of Patents
Patent
• A new, useful and non-obvious invention:
Machine
Composition of matter
Manufacturing Process
Business Method
• A useful improvement of any of these
How To Obtain A Patent?
• File a patent application with the USPTO before
• Cost is high - $10-15K / patent plus maintenance fees
Protecting Your Patent
• File prior to any discussions with anyone
o Provisional Patent Application - $260.00
o Non-Provisional Application - $1,600.00 + other fees
• Limit Public Disclosure
o Printed Publication
o Sale or Offer for Sale
*** Foreign Countries: Absolute Novelty – No public disclosure ***
• Acquire proper assignment of Invention
IP Ownership
Absent an Agreement to the contrary:
The creator of IP is its owner
Jointly created IP is jointly owned
Collaboration: Properly protect your existing IP with a Non-
Disclosure Agreement (NDA), and any newly created IP with a
Teaming Agreement
Summary (IP Rights Action Chart)
Last Thoughts
• Consider which types of intellectual property make sense in the context of your business, products, and/or services
• Intellectual Property Strategy:o Quality patentso Strong trademarko Protected trade secrets
• Defining and understanding your intellectual property strategy help you make better decisions and avoid pitfalls
A strong IP portfolio provides the company with an impression
of strength
Resources
U.S. Patent & Trademark Office (USPTO)…www.uspto.gov
U.S. Copyright Office…www.copyright.gov
CA Civil Code (trade secrets) 3426-3426.11…www.leginfo.ca.gov
State and Local Bar Associations
CA State Bar Association…www.calbar.ca.gov
LA Bar Association…www.lacba.org
OC Bar Association…www.ocbar.org
Libraries
Long Beach Law Library (West Ocean Blvd, Long Beach)
LA Law Library (1st Street, LA)
OC County Law Library (North Flower Street, Santa Ana)
Good Luck…