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2017 - Overview of IP for Utah Valley University

2017 - Overview of IP for Utah Valley University

A walkthrough of Intellectual Property (IP) for business students studying MBA 6910.001 Designing Business at Utah Valley University and how to leverage IP for their business effectively.

Ben Holt

July 17, 2017
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  1. Ben Holt – Stoel Rives LLP – 801-578-6902 Overview of

    IP for UVU Prepared by Ben Holt Reg. Patent Attorney | JD, MBA, BSEE, BSCE Of Counsel | Stoel Rives LLP
  2. Ben Holt – Stoel Rives LLP – 801-578-6902 The Brand

    and Intellectual Capital  The brand is an end in itself. It is the ultimate intellectual capital asset and the reason for being for all other forms of intellectual capital.* * Dr Lindsay Moore of KLM THE BRAND Goodwill Knowledge Products and Services Corporate Culture / People Intellectual Property Ideas / Creativity / Innovation
  3. Ben Holt – Stoel Rives LLP – 801-578-6902 Business Value

    of Intellectual Property – Part 1  Economists estimate that two-thirds of the value of large businesses in the US is due to intangible or intellectual property assets*  The World Bank estimates that, on average, 40% of company valuations are from intellectual property* *Source: Patent Barista, April 2008
  4. Ben Holt – Stoel Rives LLP – 801-578-6902 Business Value

    of Intellectual Property – Part 2  PriceWaterhouseCoopers estimated that as much as 90% of the value of the world’s top 2,000 enterprises would consist of intellectual property*  In 1978, IP accounted for 20% of shareholder value, but has grown to 80% in 2007** *Source: Patent Barista, April 2008 **Source: Brookings Institution and Ocean Tomo
  5. Ben Holt – Stoel Rives LLP – 801-578-6902 What is

    Your Exit Strategy?  Get Acquired  Public Offering  Merger  Ride a Temporary Wave & Pivot  Ride a Temporary Wave & Liquidate  Sell to Employees
  6. Ben Holt – Stoel Rives LLP – 801-578-6902 Each IP

    Right is a Bundle of Sticks  Miss a stick and you can be stuck  Amazon didn’t get audiobook rights for kindle books – robotic reader couldn’t be used  Only pay for what you want  Can reduce price  Can create, license or purchase rights  Can divide by region (careful that protection is in place)  Can make it exclusive or not  Define what you plan to do and then decide what you need  Involve an Attorney  Register the Rights
  7. Ben Holt – Stoel Rives LLP – 801-578-6902 Valuation of

    IP  Typical  Cost Approach  Market Approach  Income Approach  Relief from Royalty Approach  Alternative  Brand Contribution  Replacement Cost  Reproduction Cost  Technology Factor  Venture Capital  Relative Incremental Value  Decremental Cost Savings  Enterprise Value Enhancement  Imputed Income  Liquidation Value
  8. Ben Holt – Stoel Rives LLP – 801-578-6902 List of

    IP Types  Patents  Trademarks  Trade Dress  Copyrights  Trade Secret  Right of Publicity NOTE: Simplified rules and rules of thumb are given. Actual rules can be complex and should be discussed with a qualified attorney. (e.g., patent life can be subject to term extension)
  9. Ben Holt – Stoel Rives LLP – 801-578-6902 Patents 

    What:  Any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof  Novel and Non-Obvious Process, Machine, Manufacture or Composition of Matter (or improvement)  Protection:  Right to Exclude from Practice (make, use, offer to sell and sell)  Life:  20 years from filing and after grant  Cost:  Lifetime: $60k; Filing: $15k
  10. Ben Holt – Stoel Rives LLP – 801-578-6902 Patents Facts

     Business Use:  Limited Life Monopoly on Innovation Granted by Government  Timeframe:  2-4 Years(ish) On Normal Track  1 Year on Fast Track  Search:  www.uspto.gov  patents.google.com  Issues:  Publication after 18 months  Public Domain after 20 years from Filing  Can be important to Investors
  11. Ben Holt – Stoel Rives LLP – 801-578-6902 Trademarks 

    What:  Distinctive Word, Phrase, Logo, Symbol, Shape, Sound, Fragrance or Color to identify goods or services  Protection  National (if registered) Exclusion of Use in Goods/Services Selected and Reasonable Area Around it  Seizure, Recall, Damages and/or Destruction of Counterfits  Life:  Continuous as Long as In Use  Cost:  Total: $3,500 (plus renewals)
  12. Ben Holt – Stoel Rives LLP – 801-578-6902 Trademark Quick

    Facts  Court View:  Protect Consumers from Confusion in the Marketplace  NOT business ownership  Business Use:  Protect Brand Name Erosion  Timeframe:  6 Months - 1 Year (ish)  Search:  tmsearch.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk  www.google.com  Issues:  Need to Use it & Enforce – Not Reservation (except limited intent to use)  Do not let foreign partners register your mark on your behalf
  13. Ben Holt – Stoel Rives LLP – 801-578-6902 Trade Dress

     What:  A product's "total image" or "overall appearance" and "may include features such as size, shape, color or color combinations, texture, graphics or even certain sales techniques.”  Protection  Can register with USPTO  Non-Function Look/Feel  Life:  Continuous as Long as In Use  Cost:  Similar/Same to Trademark for Registration
  14. Ben Holt – Stoel Rives LLP – 801-578-6902 Trade Dress

    Quick Facts:  Court View:  Protect Consumers from Confusion in the Marketplace  NOT business ownership  Business Use:  Protect Brand “Look” and “Feel”  Timeframe:  6 Months - 1 Year (ish)  Search:  tmsearch.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk  www.google.com  Issues:  Need to Use it – Not Reservation (except limited intent to use)  Define what it is before you defend it!
  15. Ben Holt – Stoel Rives LLP – 801-578-6902 Copyrights 

    What:  Original Works of Authorship fixed in a tangible medium of expression.  NOT ideas, systems, concepts, principles or discoveries in abstract.  Protection:  Right to reproduce, create derivative works, distribute and publicly perform  Life:  Author’s Life +70 Years for Identified Authors  95 Years from Publication or 120 Years from Creation  Cost:  Rights are Immediate, but $450 Registration before can Enforce
  16. Ben Holt – Stoel Rives LLP – 801-578-6902 Copyright Quick

    Facts:  Safe Harbor  Service Provider – User Provided Content – Take Down Procedures  Business Use  Protect Content  Timeframe:  6-8 Months  Expedited $$$ Procedures Available  Issues  Register Copyrights Before You Need Them  Have Take-Down Procedures Easily Found by Others
  17. Ben Holt – Stoel Rives LLP – 801-578-6902 Trade Secret

     What:  Information that derives independent economic value from not being generally known and that the holder of the trade secret strives to keep it secret with reasonable efforts.  Protection:  Prevent Disclosure and Damages from Misappropriation  Life:  Continuous until lack of protection or sufficient disclosure.  Cost:  Security Controls and Legal Defense Costs
  18. Ben Holt – Stoel Rives LLP – 801-578-6902 Trade Secret

    Quick Facts  Business Use:  Protect Confidential Information and Know-How  Timeframe:  Mark it, Lock it  Issues:  Did you lock it down and limit access with due care?  How do you handle terminations?  How do you mark trade secrets?  Do you note it in your employment contract?  How do you know someone took it or is using it?  Stop use of other’s trade secrets in your organization.  How do you prevent foreign manufacturers from undercutting?
  19. Ben Holt – Stoel Rives LLP – 801-578-6902 Right of

    Publicity  What:  Right to control commercial exploitation of a person’s name or likeness.  Protection  From commercial exploitation of person’s identity; non- commercial is OK  Patchwork of State laws  Life:  Life of Person and Maybe to Heirs  Cost:  Policing
  20. Ben Holt – Stoel Rives LLP – 801-578-6902 Right of

    Publicity Quick Facts  Business Use:  Get permission and lock down rights  in addition to copyright  Get waivers/permission before activity on forms  Timeframe:  Immediate on signing (or infringement)  Issues:  Impersonation can cross the line  Identifiable similar vocal performances have crossed the line
  21. Ben Holt – Stoel Rives LLP – 801-578-6902 See AIPLA

    Report of the Economic Survey for Average Costs of IP Prosecution
  22. Ben Holt – Stoel Rives LLP – 801-578-6902 IP Dovetails

    with Competitive Advantages  Determine the Competitive Advantages of Your Product or Service in the Market  Cleaning Product Formulation that Cleans 20% Better  Processor that is 10% Faster  Network Effects (Social Media / Telephone)  First Mover Advantage  Select Both Technical and Marketing Advantages  More Bubbles!  Determine the IP Protection that Matches the Competitive Advantages
  23. Ben Holt – Stoel Rives LLP – 801-578-6902 Evaluate the

    IP Protection  Determine an IP Budget that Fits the Value  Market the Advantages that Have IP Protection that Your Competition Cannot Have  Re-Evaluate Expenses and Drop IP that Misses the Mark
  24. Ben Holt – Stoel Rives LLP – 801-578-6902 Must Have

    IP Protection 1. Employment, Vendor and Contractor Agreements that Address Ownership  Execute Assignments While on Good Terms 2. Non-Disclosure Agreements with Vendors, Customers & Partners 3. Trademark Protection of Brands Before Use 4. Regularly Register Important Copyrights 5. Invention Evaluation Process for Patent Pipeline
  25. Ben Holt – Stoel Rives LLP – 801-578-6902 Common Costly

    IP Mistakes  No assignment of patents, copyrights or trade secrets before employee or contractor leaves  Ex-Employee takes trade secrets with them  Employee puts other’s IP into your products  What is the license, if any?  Late registration of Domain Names  Launching a Brand before obtaining rights to the brand  Discussing an innovation outside the company before patent filing  Not filing a patent on a competitive advantage
  26. Ben Holt – Stoel Rives LLP – 801-578-6902 IP Horror

    Stories  Designed an Office  Showed Design, but Home Office Had to Do Design (Copied)  Copied to a Second Floor  Competitor Reversed Engineered Online Planning System  Did not file Look & Feel User Interface Copyrights  Wrist water bottle inventor  Googled wrist water bottle after winning awards and patent issued  Found Chinese websites with her product and her picture  Spent time tracking many infringers and stopping them  Security Firm  Employee took plans for new product & filed TM
  27. Ben Holt – Stoel Rives LLP – 801-578-6902 Ben Holt

    | Of Counsel Stoel Rives LLP ben . holt @ stoel . com – 801-578-6902