David Cavanaugh

Partner, Wilmer Cutler Pickering Hale and Dorr

"protects" products, systems, materials, and methods
almost anything can be the subject of a patent
- including new combination of old elements
does it provide adult video download advantages over prior art (is it faster, cheaper, easir to use or build, etc...)?

must be novel, non-obvious and useful
protection defined by "claims" as allowed by US Patent Office
can take 2-3 years, $25,000+ to obtain a patent in US what does a patent do?
gives the holder a right to exclude others from making, using, selling or offering for sale anything that the claims cover
it doesn't give you any right to market it

original work of authorship
can cover software, manuals, text, graphics, arrangements or collections of materials, etc.
protects "expression" not functionality
... trademark
word, phrase, picture, sumbol, sound, logo, etc.
- Intel Inside
- Harley Davidson
distinguishes goods or services from those of others
selecting a trademark
- descriptive, suggestive, arbitrary
- clearance prior to use

all of it patents
increase the value of your company
exclude others from using the invention
- obtain an injunction and damages agains infringer
license patent for a royalty
can provide marketing advantages
may discourage lawsuits or close copeis of your products

planning

do not disclose or attempt to commercialize ideas before filing for a patent
make sure you own what employees and consultants create for you
document inventions as they occur
develop a patent strategy
- protect critical commercial products, major technical innovations
- study competitors' products and patents

you will have legal agreements that will involve IP rights

sample agreement types

invention assignment agreements

require employees to execute written invention assignment agreements when they start employment
absence of written invention assignment agreements and Employee Employer ownership
- patents - "shop rights"
- copyright - "works made for hire"
- trade secrets - no uniform rule
- trademarks - avoid joint ownership of trademarks non-disclosure agreements (NDAs)
typically used at the outset of a relationship to aid in protecting a company's confidential information
important
- purpose
- terms of confidentiality : customers lists and current financial data vs. technology, including trade secrets research / collaboration agreements
sample agreements
- material transfer agreements
- contract research organization agreements
- clinical study sit e agreements
issues to keep in mind
- ownership of materials results improvements
- issues with academia and non-for-profit organizations: ownership and publication