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Protecting Your Ip With Agreements
- 1. Protecting your ideas when working with other people Jennifer S Warren JS Warren PLLC January 23, 2010
- 2. WHO: Potential points of loss
- 3. WHO: Eighty percent (80%) of IP losses are due to employees and contractors Suppliers are a frequent source of industrial intelligence gathering Big customers often try to work around you LESS PROBLEM: Professionals who need your trust to avoid their own ethical issues: accountants, attorneys
- 4. WHAT : Decide what to protect
- 5. WHAT : Protect your secrets and proprietary information Protect your right to use your intellectual property Protect your right to license your intellectual property in the future. Remember to protect information that belongs to others, as well
- 6. When Before disclosing information to outside parties Follow up with a reminder after disclosure When hiring new employees, consultants or contractors Follow up with a reminder when they leave or when job is completed
- 7. WHEN: POTENTIAL PATENTS In the US, you cannot disclose or use your patent more than one year before the filing date. PROCESSES cannot be patented, if used more than one year before filing EVEN IF you cannot tell what process was used Outside the US, most countries do not allow ANY disclosure before the filing date. PROCESSES may or may not be patented if used before a patent application is filed. TALK TO YOUR ATTORNEY
- 8. WHERE Know where your information is Computer? On factory floor? In a proposal? In someone’s head? Control where it goes
- 9. WHY Protect from copycats! Protect ability to patent or register trademarks and copyrights Stay ahead of the competition Protect future value of any licenses
- 10. HOW: Work with people you can trust Get confidentiality in writing Review any agreement that the other side drafts very carefully Be specific in describing the type of information that needs to be protected TALK TO YOUR ATTORNEY
- 11. Confidentiality agreement Also called “Secrecy” or “non-disclosure” agreements Consider WHO, WHAT and WHEN Do not use a standard form without reading it. Insist on getting the agreement signed by someone who have the right authority to represent each side.
- 12. WHO: Decide who is involved Check all agreements to see who the parties are Look to see who the other side wants to share information or license rights with Be careful of nonspecific “subsidiaries” or “related parties” DO YOU KNOW WHO MIGHT GET THE INFORMATION?
- 13. WHAT: Decide what to cover Define the project or reason for disclosing Non-public information Ways of combining public information Prohibit USE as well as DISCLOSURE If necessary, include penalty for use Make certain that any confidentiality agreements are specific about what will be disclosed (not “any and all information”) Do you need to prevent reverse-engineering or analyisis?
- 14. WHEN: IN the Agreement When will you be disclosing information? When will it be okay for each side to disclose or use the information? Until it is disclosed by a third party? Until it is published by the owner? When the owner gives permission? For 2 years? 5 years? 10 years? From when? The end of the project? Can information really be protected forever?
- 15. PROTECTING YOUR RIGHT TO USE and LICENSE your IP Protect your confidential information Look out for agreements that take away your rights Contractor agreements Joint development agreements Government funding Look out for agreements that allow others to use your rights for free Internet user agreements Marketing or promotion agreements
- 16. PROTECTING YOUR RIGHTS to YOUR IP CONTRACTORS and CONSULTANTS: BEWARE You do not necessarily own all the IP rights to work they do for you. (Very big companies have made mistakes on this) You and the contractor/consultant do not always have the same rights in every state or country where you operate. A GOOD TIME TO FIND AN ATTORNEY
- 17. PROTECTING YOUR RIGHTS TO YOUR IP JOINT DEVELOPMENT AGREEMENTS Usually involves existing IP on each side and new IP that the project will create. Protect your existing IP Negotiate future IP Avoid assigning future IP based on inventorship Think in terms of lead times rather than exclusivity
- 18. PROTECTING YOUR RIGHTS TO YOUR IP UNIVERSITY INVENTIONS: BEWARE Who owns the patents? Many grad students are, or should be, listed on patents Funding a professor will not necessarily get you rights to the patents Many professors have negotiated new spin-off companies Many state universities have legal limits on selling or licensing patents State universities may be protected from Federal IP laws by the 11th amendment
- 19. PROTECTING YOUR RIGHTS TO YOUR IP GOVERNMENT FUNDING If you decide to seek government funding, read the regulations and laws that apply. Ask the funding agency questions. Generally, US governments funding requires you to commercialize first in the US, and allows the US to use it without royalty Check with the entity you want to work with to understand its obligation to protect your confidential information
- 20. PROTECTING YOUR RIGHTS TO YOUR IP IP rights can show up anywhere and may not be labeled in a special heading Sales and purchasing agreements, warranties Contract manufacturing Material transfer (sampling or demonstration s) Analytical services Employment (your former employers)
- 21. PROTECTING YOUR RIGHTS TO YOUR IP Make certain any marketing or promotion agreements have limited times for using your trademarks or copyrighted materials READ any click-through or click-wrap licenses. They are generally enforceable. See what the internet service provider, software company, etc. thinks they own. Determine if that will be acceptable for you.
- 22. Key points to remember Understand which information is critical to keep confidential or secret. Do not just sign the other sides’ agreement form to get it out of the way. Read it and ask questions. ( Look for IP and confidentiality clauses in all agreements Make friends with one or more IP attorneys
Notas del editor
- Actually, patents, copyrights and trademarks do not protect ideas.Patents allow you to exclude others from making, selling, using or importing your machine, process, or compositionCopyrights allow you to exclude others from copying, performing, or distributing your original work or authorshipTrademarks allow you to exclude others from using marks that designate goods or services.THE ONLY WAY TO PROTECT YOUR IDEAS IS TO KEEP THEM SECRETYou also may need to protect your ideas before you have something that is eligible for patenting, copyright or trademarks.There is most likely information about your business that gives you a competitive edge over similar businesses. You may want to prevent others from using your information by protecting it as a trade secret. You also need to be alert to giving away your rights to your intellectual property by agreements Let’s talk about the who, what, when, where, why and how of protecting your business information.
- As you grow your ideas into a business, and as your business grows, you will need to exchange information with others. Before you do, you need to decide if there is a risk the other side learning something that could damage your competitive advantage. You will want to control access to that information, and protect what you do disclose. In addition, if the relationship might result in a new invention, brand idea, software, etc. , you will want to define up front who will own the rights to the new intellectual property.
- These are rules of thumb, and may not apply to you. The idea is that IP losses can occur through people you work with on a regular basis.
- You want to identify anything that has given you a head start on your business or on which you have spent a great deal of time or money.A good practice is to first, use a list such as this to identify the types of information to protect for each product. This type of list, without any details, is useful for educating employees as to what the company considers important. Then, for each type of information, identify who generates or stores it, where it is located, and the details that are important to keep confidential at a particular point in time. These details are shared only with those who need to know, and should be updated.
- In addition to your information, you want to protect your rights to use your own IP and license it in the future. If possible, you will want to limit the ability of the other side to create IP using your information or technology.Final what is to remember to respect the secrets and IP of others.
- Obviously you want to alert customers, suppliers, and others of the confidential nature of information, samples, demonstrations, plant operations, financial data, etc. before you give it to them. Label anything you give them beforehand. Get a written confidentiality agreement that covers what you want.You also want anyone who will be working with you to sign an agreement to keep information confidential
- You of course want to cover non-public information. You may, or may not have a particular way of using or combining public information. Be clear that you would expect your method to be kept confidential even if the data is public.You want to protect against someone using your information outside the scope of the project.
- Put a reasonable limit, such as a year, for projects, and renew as needed. If both parties are working in a particular business or industry, it becomes difficult for them to keep track of the source of their information. Trade secrets do not have an expiration date, however. If you really need a party, especially an employee, to keep something secret forever, you should give them special notice.
- We have covered the problem of protecting confidential informationNow I want to touch on how to protect your IP rights in other settings. Sometimes you have someone working with your exisiting IP to create a new workproduct. For instance, you might contract out an employee training program or a marketing campaign. In those cases you want to make certain that you do not lose control of your own IP, and you can make use of what they do for you. You may also want to use government funds to do some development work. You also may be faced with form agreements that try to claim work you do with someone else’s tools or systems. The issue here is to read and understand what you sign, and get help if it is something new.
- Under US copyright law, the person who creates the new work is the owner of the new work. There are some exceptions if the person is an employee, but not if they are a contractor or a consultant. The question is whether this will work for you. Probably not. There is also a problem in that many countries, and in fact many states, have different interpretations of contracts dealing with IP. This is a very good time to find an IP attorney with the right background.
- Joint development agreements are usually done to solve technical problems. Each side has some existing IP that it want to use. Usually you have some new solution for a customer’s existing product. (However, you could have joint development of a branding strategy, a computer program, etc. ) You want to be able to use your existing IP in other markets and with other customers. Do not give that away.You want to negotiate the future IP ownership and use based on the situation. Often you will want to limit your customer’s use of the IP by market. For instance, you might develop a battery for solar systems, but exclude its use in automobiles or wind systems.They may want to keep you from using the new IP with their competitors. This is fair. But rather than give them exclusivity, think in terms of giving them a lead time, relevant to the market.
- We all like universities. Most of us went to one or more.There are several problems for industry in working with universities. The first is who owns the patents. It is not always straightforward. There are professors, grad students, the spin off company, and the university itself. The second is that state universities often cannot be sued for patent infringement. They are protected by the 11th amendment, forbidding the federal government from controlling state government. The risk to you is that in an information-sharing environment, like a university, your IP may be misused; new inventions using your patent may be made; new programs using your code may be written; your trademark or marketing may show up on a website; your photos may show up on facebook. There is also a chance that the grad student will be hired by a competitor.This is a very good time to get good secrecy and/or consulting agreements in place, with all possible parties. Agreements are controlled by state laws. Make friends with the technology office, if there is one. Be patient. These people are often not attorneys and do not have a lot of discretion to change form agreements.
- The government is handing out money. Should you take it?Probably, but look at the strings that may be attached.Do you plan to offshore?Are your customers outside the US?Do you want to sell to the government?Are there deadlines that are in place that you can meet?Identify what information you have to give the funding entity. Is it something you want your competitors to have?
- Sales and purchasing agreements occasionally have clauses stating that if you cannot supply product, you will license the customer to make material using another supplier, royalty free. Negotiate this one to at least protect your IP.Contract manufacturing agreements occasionally give the contract manufacturer rights to the IP that they develop while making your project. Negotiate this.Material transfer agreements should limit the use of any samples or demonstrations models you send to someone for testingAnalytical services agreements may contain clauses retaining new methods that are developed to analyze or test your product. Negotiate an exclusive license, if necessarySome employment agreements from former employers will contain a time limit AFTER employment (1 or 2 years) during which any inventions will be presumed to belong to THEM. Read agreement from your former employer and those of your employees.
- Internet agreements do matter. You all have internet sites. Many of you are using the internet to sell your product. For some of you, the internet may be the main tool for your business. You have heard a little about copyrights and trademarks today on the internet. One of the issues from a patent side is the information you put on the internet. Consider how much technical information you want to convey, either by picture or by text, if you are not able to limit what people will do with it. Product pictures should not show details that would allow copying. Product information should only be enough to get the customer to want to contact you directly.
- The key for a new business to remember are these:You will need to identify