Preserving Intellectual Property Rights

David Jaffer
Intellectual Property and Entrepreneurship Panel
Davidson College of Engineering, San Jose State University February 20, 2009

Pillsbury Winthrop Shaw Pittman LLP

WHO OWNS WHAT?

1. Patents
inventors are owners unless they assign rights employee inventors and shop rights co-ownership of patent rights: no duty to account to other owners

2. Copyrights
works created by employees in the scope of employment are owned by employer works created by consultants are owned by the consultant unless assigned in writing duty to account to co-owners

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3. Trade Secrets
right only exists if measures are taken to ensure confidentiality of the information

4. Trademarks and service marks

owned by the person or entity using the mark unregulated use by others can result in loss of exclusive rights to the mark

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NOT LOSING RIGHTS

Put the agreement in writing! Non-disclosure agreements Copyright notices and registration Trade secret notices Patent rights

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NON-DISCLOSURE AGREEMENTS
Consider what information should be disclosed Be careful about continuing restrictions on use

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COPYRIGHT PROTECTION
Copyright attaches upon creation of a work Use a copyright notice! Copyright 2009 Pillsbury Winthrop Shaw Pittman LLP All rights reserved. Copyright registration Open source issues

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TRADE SECRETS
Trade secrets are very difficult to enforce without effective protection procedures Employees, consultants, and customers should sign agreements to maintain confidentiality Lapses in security

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PATENTS
Provisional applications Non-provisional applications Foreign patent protection

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