protecting ip: patents and trade secrets

Protecting IP: Patents and Trade Secrets

Concept Map:

Company Background:

• midsized paper distribution company

•employs 84 people and has 6 branches

•based in the Pacific Northwest

•one of a kind distribution pattern

•created a new loading machine

What they want to know:

What steps do we need to take to make our channels a certified trade secret that no one else can copy?

What suggestions can be made on how to implement a confidentiality contract in the company? 

What do we need to do in order to patent this new machine?

Is the patent or idea able to be sold if we chose?

PATENTS: an exclusive right granted by the

federal government to the inventors of new and useful machines, articles, substances or processes.

Most technically demanding branch of IP

Lasts 20 years

3 types of patents

Type of Patents: Utility

› Provisional› Non-provisional

Design

Plant› Provisional › Non-Provisional

How to get a patent: Not a quick or cheap process

Has anyone else beat you to it?

Consult a qualified and experienced patent attorney

USPTO

Applying for a Patent:

non-provisional utility patents should include these elements:

Utility Patent Application Transmittal Form or Transmittal Letter

Fee Transmittal Form and Appropriate Fees Application Data Sheet Specification (with at least one claim) Drawings (when necessary) Executed Oath or Declaration Nucleotide and/or Amino Acid Sequence Listing (when

necessary)

How much does it cost?

Maintenance Fees:› 3.5 yrs: $930› 7.5 yrs: $2,360› 11.5 yrs: $3,910

Utility patent application filing fee› $1200 - $1500

Fun Facts of the day: Each year the USPTO receives

approximately 350,000 patent applications

Last year there was a count of 1,877 patents in Oregon

Top five Patent recipients in the US:

1. IBM …………………..2,9412. Canon ………………1,8283. HP ……………………1,7974. Matsushita ………….1,6885. Samsung ……………1,641

OSU patent count

Familiar patents: Amazon.com : one-click method

Apple: iPod scrolling wheel

Tabasco Sauce: since 1870

Microscope

Trade Secrets: Busch's Baked Beans

Trade Secrets overview: Trade secrets defined and important

aspects

Two main components of trade secrets:

Uniform Trade Secrets Act of 1984 – uses and importance

Examples of Trade Secrets

Non-compete clause importance and application

Dunder Mifflin: trade secrets

Trade Secrets defined: Trade secrets are a:

› formula › pattern › device › compilation of information › program › method› technique or process

Used by one’s business to gain an

opportunity to “obtain an advantage over competitors.”

Trade Secrets:

Non-compete clause importance and application

Dunder Mifflin: trade secrets

Non-Compete Clause:

used in contract law under which one party (usually an employee) agrees to not pursue a similar profession or trade in competition against another party (usually the employer)

Non-Compete Clause: upon his or her termination or resignation,

the employee might begin working for a competitor or start a business, and gain competitive advantage by abusing intimate knowledge of the employer's operations

release trade secrets or sensitive information such as customer/client lists, business practices, upcoming products, and marketing plans.

Important aspects of Trade Secrets:

Protection of existing confidential and proprietary business information

Employees want to start competing business

Trade secrets are confidential and proprietary

Patents and trademarks are public

Uniform Trade Secrets Act of 1984:

41 states adhere to this legislation

Defined as “information, including a formula, pattern, compilation, program, device, method, technique or process, that”

› Derives economic value

› Worth keeping secret (“Reasonable under the circumstances to maintain its secrecy”)

Uniform Trade Secrets Act of 1984:

Reasonable efforts Misappropriation of Trade secrets

“Reasonable efforts have been made to ensure the secrecy of the alleged trade secret.”

Examples of Trade Secrets:

Customer lists: “A customer list possesses economic value when the secrecy of that information provides the owner of the customer list with a substantial business advantage.”

Software: “Invested time and money to develop and

benefit from the software”

Coca Cola example

Coca Cola Trial proves importance of Trade Secrets

Joya Williams, 42 was a secretary at Coca-Cola

Williams stole confidential documents and samples of products that hadn't been launched by Coca-Cola

Attempted to sell Coke's trade secrets to rival PepsiCo Inc. for at least $1.5 million.

Coca-Cola’s Trial sentenced to eight years in prison for

conspiring to steal trade secrets from the world's largest beverage maker

"This is the kind of offense that cannot be tolerated in our society.“

- U.S. District Judge J. Owen Forrester

ordered to pay $40,000 restitution

Selling intellectual property rights: patents and trade secrets

As trade secrets and patents are property rights you are allowed to license and sell them.

Our recommendations for Dunder Mifflin:

Find out if any one else has already patented your machine

Seek out a patent attorney to assist you

Create a contract for employees to secure your trade secrets

Be cautious when visitors come to tour the distribution center

Preguntas?(“Questions” in spanish)