©2006 genworth financial, inc. all rights reserved. finding and managing intellectual property...

©2006 Genworth Financial, Inc. All rights reserved.

Finding and Managing Intellectual Property Assets2006 Virginia State Bar Meeting

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Keys for a Successful Intellectual Property Program• Identify

• Protect

• Leverage

• Respect

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Four Basic Types of Intellectual Property (IP)

• Trademarks – branding – protect corporate good will

• Copyright– protect unauthorized copying of software – not function

• Trade Secrets– protect secret processes

• Patents– monopoly on functionality

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Trademarks

TM®

SM

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What is a Mark?

• Any word, name, symbol or device

• Serves as an indication of origin

• Houses goodwill

• Can be common law or federally registered

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Why are Trademarks Important?

• Brand identity is a valuable corporate asset

• Need to control trademarks both internally and by third parties

• Product naming should include trademark search to avoid infringement

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Copyrights

©

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Copyright Law

A U.S. copyright protects original works of authorship which have been fixed in a tangible medium of expression.

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A Copyright Protects

• Computer programs

• Musical works

• Dramatic works

• Pantomime and choreographic works

• Pictorial and graphic works

• Sculptural works

• Literary works

• Motion pictures

• Sound recordings

• Architectural works

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Copyright Owner May Control

• Reproduction

• Distribution

• Adaptation

• Public display

• Public performance

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Why Important

• We need to protect our copyrights– Sales materials, software, training materials

• Respect the copyrights of others– Photos, music, software, print media

– Use only with appropriate permission

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Patents

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What Is a Patent?

• The right to exclude others from making, using, selling or offering to sell

• Viewed favorably by courts

• Patent portfolios = a strong company asset

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U.S. Patent Requirements

• § 101 – patentable subject matter

• § 102 – novelty

• § 103 – non-obviousness

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§101 - Patentable Subject Matter

• New and useful process, machine, manufacture, or composition of matter

• Any new and useful improvement

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Examples of Software Features that are Patentable• Overall System/Method

• New Functions/Processes (Steps)

• New Implementation Of Existing Functions/Processes

• Graphical User Interface

• Algorithms/Implementation of Algorithms

• Data Structures

• Objects

• Neural Networks

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Patentability of Business Methods

• State Street Bank case clarified that "business methods" are patentable

• Business methods are not required to be computer-implemented in order to be patentable under U.S. law (European protection may differ)

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Considerations for Filing for Patents on Business Methods• Would you be able to detect if others were infringing?

• What is the value to the company of the method?

• Will the method be used in a commercial product/service?

• Are there licensing opportunities?

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§102 - Novelty

• Known or used by others, or described in a publication before date of invention

• “Public use” or “on sale” more than 1 year before U.S. filing date - disclosure

• Abandonment, concealment

• Important distinctions between US and non-US regimes

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Examples of Events That May Start §102 Grace Period• Publication of idea on Internet, in trade journals

• Disclosure to third party for purposes of commercialization

• Offering system for sale in this country

• Publicly displaying the system such as at a trade show or convention

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§103 - Non-obviousness

• Non-obvious to a person of “ordinary skill in the art”

• At the time of invention

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Document Inventive Activity

• Keep accurate log books and other materials to demonstrate dates of conception and reduction to practice

• Importance of “diligence”

• Experimental or environmental testing

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Confidentiality Agreements

• Must be signed by all outside parties

• Should clearly identify subject matter – specific better than general

• Helps avoid disclosure problems

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Independent Contractors

• Use engagement letters

• Use confidentiality agreements

• Use assignment agreements - ensure that any inventions discovered by an independent contractor working for Genworth becomes Genworth’s property

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In contrast….Trade Secrets as Alternative to PatentsAny formula, pattern, device or combination of information which is used in a business and, because it is unknown to others, gives the business a competitive advantage.

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Considerations for Filing for Patents on Business Methods• Should the "business method“ be kept as a trade secret?

– Can others detect it?

– Can you maintain it in secrecy?

– What is the useful life of the business method?

– Are competitors likely to file for patents on similar methods?

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Strategies for Trade Secret Protection

• Identify Genworth’s valuable trade secrets

• Written trade secret protection policy

• Educate employees about trade secret protection policy and monitor compliance

• Restrict trade secret access to employees with a legitimate, business related, need to know

• Mark documents containing trade secrets

• Physically isolate and protect most important trade secrets

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….Strategies for Trade Secret Protection

• Maintain computer secrecy

• Restrict public access to your facilities

• Deal cautiously with third parties - use confidentiality agreements

• Be careful and consistent with unsolicited submissions

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Strategic Reasons for Implementing Formal IP Program

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Offensive Reasons

• Market advantage – Leverage exclusive rights to Genworth’s developments, sue to obtain injunction and/or damages

• Injunctions – Ability to shut down infringer

• License to obtain royalties or other business benefit

• Marketing advantage – real/apparent

• Enhance/maintain first mover advantage

• Protect investment in R&D

• Occupy field in and/or surrounding key standards

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Defensive Reasons

• Defend against patents of competitors

• Cross license if accused of infringing

• Counter sue if sued – use as bargaining chip

• Bolster settlement position

• Partners/investors want to know if “idea” is protected

• Competitor who independently develops idea can obtain IP rights

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Importance of Formal IP Program

• Convey importance of IP to all employees

• Educate employees on steps necessary to benefit from IP/avoid loss of rights/reduce liability

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Goals of IP Program

• Protect technology and market position

• Exploit IP – Use as a business tool/source of revenue

• Avoid or reduce liability

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Essentials for Successful IP Program

• Technical – must identify inventions; comply with procedures

• Business/Sales/Marketing – must be aware of what can cause loss of rights; know about technology that can be exploited

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The IP Program

• Create and distribute/make accessible patentability and program reference

• Use online collaborative workroom to enhance inventor/counsel interaction

• Provide access to and instructions for completing invention disclosure forms

• Use procedure for receiving, logging and tracking invention disclosure forms

• Involve key business personnel– IP council

– Management support

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IP Program Considerations

• Employee issues (existing employees, new hires, departing employees)

• Contractors and Consultants (ensure ownership of IP, confidentiality, etc.)

• Manufacturers, distributors, joint ventures

• Indemnity

• Mechanisms for identifying IP– Submission procedures

– Status chart

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IP Program Considerations

• Documentation (notebooks, invention disclosures, etc.)

• Pre-release reviews – avoid loss of rights (speeches, publications, trade shows, etc.)

• Avoiding liability

• Insurance

• Clearance process for new products and processes – non-infringement options

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Identifying and Harvesting Inventions

• Identify business units that may generate inventions

• Identify key personnel in each business unit to monitor handling of inventions

• Educate and train key personnel regarding patentability and key issues

• Provide seminars for other personnel to enlighten and inspire

• Reward and recognition program for inventors

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Identify Existing IP

• For existing IP that is not protected, immediate attention should be directed to determining whether and how it may be protected, and if protectable, deciding whether to protect it.

• Critical to do this to avoid inadvertent loss of rights.

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Identifying IP

• Identify IP being developed and any timing issues

• Identify key areas of development early – sometimes broad ideas can be protected and details added later

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IP Protection – Implementation

• Review audit list

• Develop strategy (what to protect, how, etc.)

• Prioritize, group, budget

• Decide

• Prepare and file applications

• Avoid infringement of third party rights

• Get indemnities

• Consider insurance

• Conduct clearance search, obtain opinion if necessary

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IP Protection – Implementation

• For mergers, acquisitions, investment, partnerships: IP due diligence can be critical to:– Ensure protection

– Identify potential liability

– Valuation

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IP Protection - Respect

• Respect the IP rights of third parties

• Educate associates

• Documented corporate guidelines

• Part of Integrity Program

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