Traditional and Non-Traditional Ways to Protect What's Yours (without the use of weapons)- IP Protection Strategies in an Ever-Changing Landscape

Adam Brookman, Boyle FredricksonAnne Dorn, Direct SupplyMay 15, 2014

v.

Overview*

• Non-Disclosure Agreements, aka NDAs and Confidentiality Agreements

• IP Indemnification Agreements• Due Diligence in Assessing IP Risks• Protection of Product Designs• Strategic Tips for Foreign Filing of Trademarks

and Patents• Questions?

*This is the stuff we’re going to be talking about

If we have time

NDAs

• When Do You Want an NDA• Mutual, One Way

• Who’s doing the disclosure• What is being disclosed

• Employee, Third Party Individual or Company• Unsolicited Submissions• Duration• Non-Compete and/or Non-Solicitation• Return Materials on Demand, Retain a Copy

NDAs

• Confidential Information v. Trade Secret Information

• Exceptions• Automatic Injunction• Attorneys’ Fees• Marking Obligation• Share with Third Parties, Affiliates, Agents• Venue, Jurisdiction, Choice of Law• Ownership of Developed IP• Evergreen or Set Term

Indemnification Agreements• When do you need indemnification• What is happening

• Indemnification• Hold Harmless• Duty to Defend

• Who is being indemnified• When does the indemnity kick in• Limitations, if any, on the indemnity (financial

wherewithal of indemnitor, insurance)

Indemnification Agreements• Special, incidental and/or consequential

damages• Length of the indemnity• UCC 2-312/Battle of the forms• Are specifications being provided• Notification requirements• Control of Defense• Settlement

Indemnification Agreements

• Reimbursement for fees and costs• Inventory buyback, redesign and other

obligations• Extension to customers of the indemnitee• Does indemnification cover industry

standards (e.g., Bluetooth, USB 3.0)• Trolls• Due Diligence/Searching for problematic IP

IP Due Diligence• When should due diligence be conducted

• Acquisitions• Product development• New product or service offering• Supply agreements• Cease and Desist Letters/Lawsuits• Use/Sale/Development of Software

• What form should it take• Patent Searches• License Review• TM Searches

IP Due Diligence

• Who conducts the due diligence• Sharing of due diligence results• What are the risks in doing due

diligence• How much does it cost• Who bears the cost• What if something is uncovered• What is the cost if litigation ensues

Tips for Foreign Filing

• Due Diligence Before Filing• Is Marking Enough• Pick Strategic Countries

• Largest Markets• Likely Locations of 3rd Party Manufacturing

• Patent the Letter “E” Not the Whole Keyboard• Get Trademark Protection in China• Get Protection Where You Have Distributors

Protecting Product Designs

• Design Patents• Product Configuration and Packaging Trade

Dress• Copyrights• Logos• “Look for” advertising• Foreign Design Registrations• Unfair Competition Laws• Trade Secrets and NDAs

QUESTIONS???

WE HAVE ALL THE ANSWERS*

*Being lawyers, the answer to many questions will likely be, “It depends.” Please plan your questions accordingly.

THE END

Anne F.B. DornDirect Supply6767 N. Industrial RdMilwaukee, WI 53223adorn@directs.com414.760.5689

Adam BrookmanBoyle Fredrickson, S.C.840 N. Plankinton Ave.Milwaukee, WI 53203abrookman@boylefred.com414.225.1678