Protecting and Licensing Your IPIn the U.S.: A Brief Overview for Emerging

Companies

Robert C. Van ArnamPartner, Intellectual Property Section

Williams Mullen

October 20, 2014

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OverviewOverview

1. What U.S. IP Rights Do You Have and Do They Conflict with Existing U.S. Rights

Trademark? Copyright? Patent? Trade Secret?

2. How Do I Protect/Exploit My IP in the U.S.?

3. How Do I Safely License My Technology?

4. Other Considerations? Privacy and Data Security

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Initial Questions

1. Do you have existing rights – France/EU?

2. Is your IP Assigned to the Company?

3. Have you already “published” your copyright or “disclosed” your potential patent?

4. Can you nationalize your rights via International Conventions (Madrid protocol, Berne Convention, Paris Treaty)

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U.S. TrademarkTrademark: Any word, name, symbol, or device, or

any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. (a “brand name”

Service mark: same as above for services

15 U.S.C. § 1051et seq. - The “Lanham Act”

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Spectrum of DistinctivenessSpectrum of Distinctiveness

Abercrombie & Fitch Co. v. Hunting World (2d Cir. 1976)

“Fanciful”“Arbitrary”

“Suggestive” “Descriptive” “Generic”

Inherently Distinctive(Registrable)

Registrable IFSecondary Meaning

NotRegistrable

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Spectrum of DistinctivenessSpectrum of Distinctiveness

Fanciful– Ex: “Kodak”; “Adidas”; “Exxon”; “Xerox”

Arbitrary– Ex: “Apple”; “Google”; “Yahoo!”; “Shell”

Suggestive– Ex: “Microsoft”; “Volkswagen”; “L’eggs”

Descriptive– Ex: “Bank of America”; “Raisin Bran”; “5-Hour Energy”

Generic– Ex: “Coffee”; “Shoes”; “Camera”; “Cereal”

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Trademark Examples

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U.S. CopyrightsThe U.S. “Copyright Act” - 17 U.S.C. § 101 et seq.Berne Convention

– Paris ActUniversal Copyright ConventionU.S. Rights(1) To make copies

(2) To make derivative works

(3) To distribute copies to public

(4) To perform the work publicly

(5) To display the work publicly

(6) To perform musical work by digital transmission

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Copyright - The ElementsOriginal - Implies presence of personal creative act of

an individualFixation - the act of fixing something in a retained

form, such as (code, architecture, web site or application)

Publication - generally - making copies of a work available to the public

Author - individual or legal entity responsible for production in question

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What is a patent?What is a patent? Constitutionally BasedRights Granted – to excludeCannot Protect IdeasTypes of Patents Title 35, Sections 101 et seq.Invention must be novel, non-obvious,

and "useful."

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Trade Secrets

1. Information that derives value from not being generally known.

2. Reasonable Steps to Protect

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Approximate Costs – US $Nationalize Existing Rights - ?U.S. Trademark – One Trademark in One Class =

$1,200 (includes filing fee)U.S. Copyright - $600 for simple registration (includes

filing fee) U.S. Patent

Provisional Patent Application - $3,000-$6,000Utility Patent Application - $6,000-$20,000 (depending

on complexity, number of claims and specifications)

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License/Contract – The BasicsWhat IP Are you Licensing and for How Long?Who Owns Improvements and versions?

EULAs Partnership Agreements

What Third Party Technology is Involved? Open Source Third Party Software

Who/Where are your target customers? Software/Mobile Partners U.S. Government Contracts

How do Customers get your technology and how can you can it back?

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License – What ifs

Examples:

“What if your technology fails or is not delivered on

time?”

“What if your code is rewritten and used; is it a

derivative?

“What if I don’t get paid; what are the structure of

payments – royalty, subscription, one-time fee?”

“What if the buyer rejects my technology?”

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Key License Provisions

1. IP Rights and Limits

2. Payment – Type and Duration – how to best maximize your IP and technology

3. Indemnification

4. Choice of Law; Jurisdiction; Venue

5. Limitation of Liability

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Data Privacy Compliance

1. Does your technology process or store secure information? Health or PCI – HIPAA and HITECH Financial – Gramm-Leach Bliley

2. The States – 48 different laws

3. DSS/PCI Compliant?

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QUESTIONS?QUESTIONS?

Robert C. Van Arnam

Williams Mullenrvanarnam@williamsmullen.com

(919) 981-4055