2018 - UVU MGMT 6910 - IP Overview

Guest Lecture for designing business course (MGMT 6910) at Utah Valley University. Given on March 12, 2018.

Transcript

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 Why IP
3. Ben Holt – Stoel Rives LLP – 801-578-6902 IP is for protecting know-how, message, innovation and reputation
4. 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
5. 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
6. 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
7. Ben Holt – Stoel Rives LLP – 801-578-6902 IP Considerations
8. Ben Holt – Stoel Rives LLP – 801-578-6902 Uses of IP
9. 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
10. 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
11. 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
12. Ben Holt – Stoel Rives LLP – 801-578-6902 Kinds of IP
13. 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)
14. 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
15. 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
16. 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)
17. 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
18. 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
19. 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!
20. 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
21. 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
22. 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
23. 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?
24. 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
25. 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
26. Ben Holt – Stoel Rives LLP – 801-578-6902 Example Average Costs: Visit the AIPLA
27. Ben Holt – Stoel Rives LLP – 801-578-6902 How to Use IP
28. Ben Holt – Stoel Rives LLP – 801-578-6902 IP Timing Overview
29. 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
30. 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
31. 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
32. 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
33. 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