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Copyright © 2012 Boeing. All rights reserved. EOT_IPM_Template.ppt | 2/23/2012 1
2012 CSU Long Beach Innovation Challenge
October 11, 2012
Hieu (Tony) D. NgoAssociate Technical FellowIntellectual Property Management
Wayne HoweAssociate Technical FellowIntellectual Property Management
Intellectual Property (IP) Basics
Copyright © 2012 Boeing. All rights reserved.
Engineering, Operations & Technology | Intellectual Property Management
Agenda
Framework
Intellectual Property
What is it?
Why is it important?
What do I need to do?
Questions
Copyright © 2012 Boeing. All rights reserved.
Engineering, Operations & Technology | Intellectual Property Management
Framework
Business Strategy / Plan
Capabilities& Technologies
• Identify critical IP in each capability and technology• Develop protection strategy for critical IP assets• Leverage IP as a competitive advantage to achieve
business objectives
Intellectual PropertyPlan
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Engineering, Operations & Technology | Intellectual Property Management
Innovation Challenge’s Journey
You
Team
Mentor
Advisory / EvaluationCommittee
Award Event / Winner Announced
Supplier / 3rd Party
Absent an Agreement to the contrary, the creator of IP is its owner and jointly created IP is jointly owned
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Engineering, Operations & Technology | Intellectual Property Management
Why is IP Important?
IP has VALUE
IP provides a COMPETITIVE ADVANTAGE
Misuse or lack of awareness of IP can put you at RISK
Copyright © 2012 Boeing. All rights reserved.
Engineering, Operations & Technology | Intellectual Property Management
What is Intellectual Property?
• A product of the mind or intellect, in a concrete or abstract form, in which one can assert ownership rights.
• Each of these types of IP have unique requirements and offer different legal protections.
Trade Secrets
Know How and Proprietary Information
Patents and Inventions
Trademarks Copyrights
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Engineering, Operations & Technology | Intellectual Property Management
Copyright Patent
-Software
-Books
-Photos
-Music / Recordings
-Motion Pictures
-Chemical compositions, Electrical, and Mechanical products and processes
-Biotechnology
-Business processes and methods
-Software – Algorithms Executing on computer
Trademark
-Words, Symbol, Slogans used to identify & distinguish one’s products or services
-Valuable information that is not publicly known
(Technical, financial, marketing, formulas, know-how, etc.)
Trade Secret
Summary - Range of IP Protection Approaches
Copyright © 2012 Boeing. All rights reserved.
Engineering, Operations & Technology | Intellectual Property Management
Trademarks are words, symbols or slogans used to identify & distinguish one’s products or services from others
Minimize confusions
APPLE
What are Trademarks?
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Engineering, Operations & Technology | Intellectual Property Management
Any information that derives independent economic value, actual or potential
Not being generallyknown or readilyAscertainable by proper mean
Others person who can obtaineconomic value from itsdisclosure or use
What’s Trade Secret?
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Engineering, Operations & Technology | Intellectual Property Management
Protect original work of authorship
Examples: Protectable: literary works,
a/v works, computer programs
NOT Protectable: titles, slogans, ideas, processes
Copyright © 2010 Company XYZ. All Rights Reserved
Protect creative expression of ideas, not the ideas
©What Is Copyright?
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Engineering, Operations & Technology | Intellectual Property Management
A patent is agrant issued by the U.S. Patent
and Trademark Office (USPTO) giving inventors the right to
exclude all others from making, using, or selling their inventions
within the United States, its territories, and possessions
for up to 20 years.
What is Patent?
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Engineering, Operations & Technology | Intellectual Property Management
Simply using a name or symbol as an identifier for your products or services
Limited to geographic area in which the mark is used
Register your Trademark with the U.S. Patent and Trademark office
Legal presumption of ownership
Exclusive right to use the mark nationwide
Prerequisite to brining an action concerning the trademark’s in federal court.
Federal Registration is almost always recommended
How To Obtain a Trademark?
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Engineering, Operations & Technology | Intellectual Property Management
Designs
Drawings
Specifications
Patterns
Plans
Compilations
Program devices
Formulas
Prototypes
Methods, Techniques,
Processes, and Procedures
Flow Charts
Marketing timetables
Customers / Suppliers List
…
Examples of Trade Secrets
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Engineering, Operations & Technology | Intellectual Property Management
Take reasonable measures
efforts to keep the informationsecret
Varies with the nature of the information andother circumstances
Protecting Trade Secrets
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Engineering, Operations & Technology | Intellectual Property Management
A copyright automatically comes into existence when you create a work of authorship and fix it in a tangible medium
Pen to paper , When you type a line of codes, Record sounds
Relatively inexpensive to register
$65.00 / application $35.00 / application if file on-line
Filing with the U.S. Copyright Office provides some important additional benefits
Statutory damages, Attorney fees
How To Obtain a Copyright?
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Engineering, Operations & Technology | Intellectual Property Management
Utility PatentProtect the function or “utility” of the invention
Design PatentProtects the “ornamental design” or appearance
Plant PatentProtects distinct and new varieties of plants
Types of Patents
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Engineering, Operations & Technology | Intellectual Property Management
Speed is essential
How To Obtain A Patent?
File a patent application with the USPTO before
Public Disclosure
(i) Printed Publication
(ii) Sale or Offer for Sale
Foreign Countries: Absolute Novelty
Cost is high - $10-15K / patent plus maintenance fees
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Engineering, Operations & Technology | Intellectual Property Management
A new, useful and non-obvious invention:
Machine
Composition of matter
Manufacturing Process
Business Method
A useful improvement of any of these
Requirements
Copyright © 2012 Boeing. All rights reserved.
Engineering, Operations & Technology | Intellectual Property Management
Summary – IP Rights Action
Copyright © 2012 Boeing. All rights reserved.
Engineering, Operations & Technology | Intellectual Property Management
Consider which types of intellectual property make sense in the context of your business, products, and/or services
The decision about which types of protection to pursue, and why, are your (your company’s) intellectual property strategy
Defining and understanding your intellectual property strategy help you make better decisions and avoid pitfalls
Last Thoughts
Copyright © 2012 Boeing. All rights reserved.
Engineering, Operations & Technology | Intellectual Property Management
iOS App
Business Plan Name / Graphics /
Logos
Methods, Processes, or Techniques
Marketing / Product Launch Time Table / Pricing Plan
Source Codes
Flow Charts, Algorithms
Illustration
Requirements, Designs, Specifications
Intellectual Property Protection?
Copyright © 2012 Boeing. All rights reserved.
Engineering, Operations & Technology | Intellectual Property Management
Illustration
Trade SecretTrademark
Copyright
Copyright
Trade Secret
Trade Secret
Utility Patent
Copyright
iOS App
Business Plan Name / Graphics /
Logos
Methods, Processes, or Techniques
Marketing / Product Launch Time Table / Pricing Plan
Source Codes
Flow Charts, Algorithms
Requirements, Designs, Specifications
Trade SecretCopyright
Utility Patent
Trade Secret
Copyright Design Patent
Trade Secret
Copyright
Copyright © 2012 Boeing. All rights reserved.
Engineering, Operations & Technology | Intellectual Property Management
U.S. Patent & Trademark Office (USPTO)…www.uspto.gov
U.S. Copyright Office…www.copyright.gov
CA Civil Code (trade secrets) 3426-3426.11…www.leginfo.ca.gov
State and Local Bar Associations
CA State Bar Association…www.calbar.ca.gov
LA Bar Association…www.lacba.org
OC Bar Association…www.ocbar.org
Libraries
Long Beach Law Library (West Ocean Blvd, Long Beach)
LA Law Library (1st Street, LA)
OC County Law Library (North Flower Street, Santa Ana)
Resources
Copyright © 2012 Boeing. All rights reserved.
Engineering, Operations & Technology | Intellectual Property Management
Good Luck !
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