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Your Legal Team

IP 101IP 101

The Basics of Intellectual The Basics of Intellectual PropertyProperty

February 2009

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Your Legal TeamAgenda

Overview

Different forms of IP

Ingredients required to protect

Trade Secrets

IP Leakage

IP Contamination

Commercialization

Red flags / pitfalls – on the flow

What are your takeaways from this

session?

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Your Legal TeamWhat is IP?

Intangible

Asset

Arising from man’s creative thinking

Provides negative rights – prevents others from using

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Your Legal TeamDifferent forms of IP

TrademarksTrademarks TradeTrade SecretsSecretsPatents CopyrightsCopyrights DesignsDesigns

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Your Legal TeamCharacteristics

– Trademark: A symbol that has commercial association.– Copyright: An expression of an idea, fixed on a tangible medium

such as written document, software, music.– Patent: An invention, whether a process, machine or design, for

which a patent is applied and granted. – Trade secret: Any information that is kept secret and would lose its

commercial value if disclosed or misused.– Design: A new or original distinguishable design.– Semiconductor integrated circuits layout design– Geographical indications: origination of goods, natural or

manufactured– Protection of plant varieties

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Your Legal Team

Protection of IPProtection of IPConceptsConstituents

It may be necessary to seek protection under more than one form, different jurisdictions.

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Your Legal TeamPatents

What is: Statutory (not automatic) , monopolistic right, tangible concrete manifestation of the ideas in the form of some invention to get protection. Products or processes. Invention means a new product or process involving an inventive step and capable of industrial application.

Why: Promote industrial innovations.

Ingredients: – Novelty -prior art/use, bedrock of patent laws – Utility - need not be superior, commercial success, perfection, performs crudely– And inventive step / non-obviousness – measures technical accomplishment,

not trivial. Manner of manufacture.

What: Manufacture, Software, industrial products, biotech. agricultural? Excludes discovery, scientific or mathematical theory, animal/ plant variety

20 years, not renewable.

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Your Legal TeamTrademarks

What is: Mark capable to being represented graphically, capable of distinguishing goods / services, includes shape of goods, packaging, combination of colors.

Why: To identify and distinguish.

Ingredients: Distinctive (inherent / acquired), visual symbol (word, device, label), no confusion.

What: Service marks, color, sound

How long: 10 years protection. Can be renewed.

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Your Legal TeamCopyrights

What is: Original creative work fixed on a tangible medium. Expression of an idea and not the idea. NO REGISTRATION PROCESS.

Why: encourage exploitation of copyrighted work.

Ingredients: originality, creativity

What: literary, dramatic, artistic, musical, cinematograph film, sound recording, sculpture, craftsmanship. – Software, computer programs, tables and compilations under literary

work.

Fairuse. Creative commons.

Term: 60 years.

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Your Legal Team

Trade SecretsTrade SecretsManaging Confidentiality

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Your Legal TeamTrade secrets

Trade Secrets– The KNOW HOW– Any information that is not publicly known; and– Has economic value; a “competitive advantage”; and

Is subject to “Reasonable efforts” to keep it secret.– Examples of Reasonable Efforts

• Information was marked “Confidential” when created• Information not left “lying around”• Information distributed only on “need-to-know” basis• Information given to third parties only under NDA• Information not published

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Your Legal TeamProtecting trade secrets – small steps

Never disclose or receive confidential information without an approved and a fully executed NDA in place and a legitimate “need to know” by the recipient.– Depending on the sensitivity, you may have different kinds of NDA.

Never disclose your’s, Supplier’s or Customer’s confidential information publicly.

Always label and treat confidential information properly.

Always use demonstrable, reasonable efforts to keep confidential information protected.

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Your Legal TeamProtecting trade secrets – small steps

Know who you are talking to before you disclose valuable information.

Assume that those around you are competitors and are very interested in what you have to say.

Bring only that information which is essential to your business trip and, if at all possible, leave classified information locked up in your office.

Refrain from discussing, disclosing, inadvertently showing or leaving classified information unattended.

Know who is listening when using public transportation / Use secure communication links.

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Your Legal Team

Interesting ConceptsInteresting ConceptsLeakageContaminationCommercialization

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Your Legal TeamIP Leakage

IP Leakage is the unintended release of IP – Sometimes accidental (e.g., X Co. presents tool data for Suppliers “A”,

“B”, and “C” … although no names are given, there are only 3 competitors)

– Sometimes too tactical (e.g., X Co. discloses foundry energy saving innovations to Supplier and Supplier makes the product for benefit of all its customers, with no tangible ROI for X Co.)

• Leadtime advantages gets eroded and competitive sourcing opportunities gets missed

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Your Legal TeamIP Contamination

Proprietary information of others that, if incorporated in your product, creates a high risk of intellectual property violation

Information

Patent

Non-patentdocumentation

DISCLOSER “CONTAMINATED”RECIPIENT

PRODUCT

PATENT VIOLATION

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Your Legal Team…Contamination

Avoid situations where IP contamination is likely to occur– Do not accept outside proprietary information without first evaluating

your need

– Do not use proprietary info of your past employer

Share on a need to know basis even within the company.

Follow containment, inoculation and safe handling protocols when outside proprietary information is needed.

Damages can include royalty for every piece sold.

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Your Legal TeamCommercialization

Licensing / Royalty

Collaboration

Sell

Portfolio management – Acquisition or purchasing to fill holes in the portfolio.

Barter

Investment – internal process (badge, harvesting sessions, training programs, firewalls, NDAs, inhouse IP counsel, relationship with the inventors, opensource), Protection, company’s growth potential.

SPV

Trolls

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Your Legal TeamAbout Us

NovoJuris is a legal consulting company focused on start-ups and SMEs in technology sector. We hand-hold startups from inception, funding and beyond.

Please visit www.novojuris.com to know more about us.

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Your Legal Team

Thank you

32, Osborne Road,Near Lakeside Hospital

Ulsoor Bangalore – 560 042

Tel: +91-80-25556139

Bangalore . Chennai