F723000_Class#17 發明與專利ABC 陳志光 (TSMC公司律師)

NCKU CSIE 2015 Spring
F723000@65105
Startup and Innovation in IT Industry
Class #17 發明與專利ABC
陳志光 Matt
TSMC公司律師
2015/06/17
姓名標⽰示─⾮非商業性─禁⽌止改作
本授權條款允許使⽤用者重製、散布、傳輸著作，但不得為商業⺫⽬目的之使⽤用，亦不得修改該著作。使⽤用時必須按照著作⼈人指定的⽅方式
表彰其姓名。

Intellectual Property Fundamental for
Start Up
Patent and Trade Secret
陳志光
June 17, 2015

IP Rights Overview
IP Right What It Protects
PATENT INVENTION
COPYRIGHT EXPRESSION
TRADEMARK BRAND REPUTATION
TRADE SECRET VALUABLE INFORMATION

IP Rights Overview
http://www.slideshare.net/ChrisNeumeyer/trade-secret-protection-in-taiwan

Patent v. Trade Secret
• Patent:
– A limited monopoly (exclusive right to make, use, sell,
offer for sale, and import) in exchange for publicly
disclosing information
• Trade Secret:
– Confidential information from which the owner derives
an economic benefit by preventing it from being
publicly known
• Patent v. Trade Secret:
– Mutually exclusive
– Alternative protection

Patents
• Theory
• Subject Matter
• Prosecution
• Exclusive Rights
• Infringement
• Remedies

Patents: Theory
• Patent protects new and useful inventions
• Bargain between government and inventor
– Government grants limited monopoly in exchange for disclosure of
invention to the public
– Meant to encourage innovation
• Constitutional Basis: Article 1, Section 8
– “The congress shall have power… To promote the progress of
science and useful arts, by securing for limited times to authors and
inventors the exclusive right to their respective writings and
discoveries.”
– To promote the progress of science and useful arts
– exclusive right
– limited times
– discovery (new)

Patents: Subject Matter
• Utility Patents: any new and useful (35 U.S.C. §101)
– Process;; Machine;; Manufacture;; Composition of matter
• Design Patents: non-functional aspects of a product design
– User Interface
– ICON
• New Models:
– Not in U.S.

Patent: Ownership
• Inventor / Assignor: who gets the idea
• Patentee / Assignee: who owns the patent right
• Invention made on-duty (職務發明)
– Inventor: Declaration, Assignment
– Ownership: Assignee

Patents: Subject Matter
• Ineligible Subject Matter:
– Abstract Ideas
– Laws of nature
– Mathematical formulas
– Naturally occurring articles
• Examples:
– DNA/RNA (cDNA;; Myriad);; Cloned creatures (Harvard mice)
– Medical treatments (Mayo)
– Software algorithm (Alice)
– Business method (Bilski)

Patents: Prosecution
• First to Invent v. First to File

• U.S.:
– Before March 16, 2013: First to invent
– After March 16, 2013: First Inventor to File
• Rest of the World (ROW):
– First to File

• U.S. Patent and Trademark Office (USPTO) requires
– Novelty (35 U.S.C. §102)
• Prior Art: Prior to effective filing date
• Not already published or patented
• Not already publicly known by others
– Non-obviousness (35 U.S.C. §103)
• People Ordinary Skilled in the Art (PHOSITA)
– Specification/Disclosure (35 U.S.C. §112)
• Written Description: Describe Inventor’s regard invention
• Enablement: Enable PHOSITA to practice the invention
• Best Mode: No longer required (America Invent Act, AIA)
• Definiteness: Clearly defining what is being claimed

Patents: Exclusive Rights
• Rights to exclude others from
– Make within the U.S.
– Use within the U.S.
– Sell within the U.S.
– Offer for sale within the U.S.
– Import to U.S.
• Terms of exclusive right
– Utility Patent: 20 years from filing
– Design Patent: 14 years from
being issued

Patents: Infringement
• Types of Infringement (35 U.S.C. §271)
– Direct Infringement: make, use, sell, offer for sale, import
– Indirect Infringement: (NOT in Taiwan)
• Induced Infringement: Inducing some to infringe
• Contributory Infringement: making, selling, offering for sale, or
importing a non-staple component that has no non-infringing use
– Divided/Joint Infringement (Akami): still not protected
• Activities outside the U.S. can be infringement
– Making a product by a patented process and imported into U.S.
– Within U.S. (e.g., “control and beneficial use”;; )
• A license is an agreement not to sue for infringement
– But you may still be sued for infringing others patents

Patents: Remedies
• Injunction Relief: forbidding future infringement
– Easy to get for competitors
– Not easy for “patent trolls”
• Damages: Monetary adequate to compensate patent owner
– Lost profits: but … for …
– No less than a reasonable royalty
– Punitive damages: can be up to three times if infringement is willful
• Attorney’s fee: Only in “exceptional cases”

Trade Secrets
• Definition
• Misappropriation
• Remedies
• Considerations

Trade Secrets: Definition
• TRIPS Agreement, Part II, Sect. 7: Protection of
Undisclosed Information, Art. 39, Par. 2, 1994
– Natural and legal persons shall have the possibility of preventing
information lawfully within their control from being disclosed to,
acquired by, or used by others without their consent in a manner
contrary to honest commercial practices so long as such
information:
– Is secret in the sense that it is not, as a body or in the precise
configuration and assembly of its components, generally known
among or readily accessible to persons within the circles that
normally deal with the kinds of information in question;;
– Has commercial value because it is secret;; and
– Has been subject to reasonable steps under the circumstances, but
the person lawfully in control of the information, to keep it secret.

• Unif. Trade Secrets Act (UTSA) § l(4)
– A trade secret is any information, including a formula, pattern,
compilation, device, method, technique, or process, that:
– derives independent economic value, actual or potential,
– from not being generally known to, and not being readily
ascertainable by proper means by, other persons who can obtain
economic value from its disclosure or use, and
– is the subject of efforts that are reasonable under the circumstances
to maintain its secrecy
• See also,
– Restatement (Third) of Unfair Competition, § 39
– Restatement of Torts, § 757 comment b

• State law, NOT Federal law
– Statute: Each state varies but similar
– Cases: May be very different (e.g., California)
• Example: Non-Competition Agreement
– Restriction of time period, geographic range, position, etc.
– Most states consider restrictions reasonable, so the agreement is
enforceable
– But in California, generally unenforceable

• Examples:
– Plans or designs of products
– Manufacturing process
– Customer lists
– Employee lists
• No pre-determined limit on the length of protection
– Cola-cola recipe

• Trade Secrets v. Know-how
– Know-how: Information that enables one to accomplish a particular
task or to operate a particular device or process. Not a legal term of
art. (McCarthy’s Desk Encyclopedia of Intellectual Property, Second
Edition, p.236)
– NOT synonyms. Secrecy is critical
• Trade Secrets v. Patent
– Supreme Court (Kewanee Oil, 1974): perfectly viable alternatives.
– “Inextricably intertwined”: Most R&D data and collateral know-how
cannot and need not be included in patent applications — grist for
trade secrets.
– All patents are born as trade secrets. Trade secrets precede,
accompany and follow patents

Trade Secrets: Misappropriation
• UTSA § l(2): Misappropriation " means:
– (i) acquisition of a trade secret of another by a person who knows or
has reason to know that the trade secret was acquired by improper
means;; or
– (ii) disclosure or use of a trade secret of another without express or
implied consent by a person who
(A) used improper means to acquire knowledge of the trade
secret;; or
(B) at the time of disclosure or use knew or had reason to know
that his knowledge of the trade secret was (I) derived from or through
a person who has utilized improper means to acquire it;; (II) acquired
under circumstances giving rise to a duty to maintain its secrecy or
limit its use;; or (III) derived from or through a person who owed a duty
to the person seeking relief to maintain its secrecy or limit its use;; or
(C) before a material change of his position, knew or had reason
to know that it was a trade secret ad that knowledge of it had been
acquired by accident or mistake.

Trade Secrets: Misappropriation
• Trade Secret arises from either one of both theories:
– Tort Theory: Acquiring the trade secret by improper means;;
– Contract Theory: Disclosing or Using the trade secret without
consent when the trade secret was received under the
circumstances where there was a duty to keep secrecy
• When learning a trade secret is NOT misappropriation:
– Independent invention
– Reverse engineering
– Observation in public use
– Observation in public literature

Trade Secrets: Remedies
• Injunction
– irreparable injury and
– inadequate remedy at law
– Easier to meet the requirements
• Damages
– Lost profits
– Reasonable Royalty
– Profits made by person misappropriating trade secret
• Criminal Prosecution:
– Federal Crime (Economic Espionage Act)
– State Law
http://s.hswstatic.com/gif/white-collar-crime-7.jpg

Trade Secrets: Considerations
• Reasonable efforts to protect secrecy
– Security procedures:
• Mark “confidential information” or “Do Not Copy” on documents
• Don’t cc’d to broad email list (“need to know” basis)
• Security guards, badges, cameras
• Camera and storage device prohibited
• Locked room with limited authority to access
• Recorded access to sensitive information
• ID and/or password for photocopiers and/or computers
• Routine shredding procedure
– Contracts
• non-disclosure agreement
• non-competition agreement
• non-solicitation agreement

• Non-Disclosure Agreement (NDA):
– To protect trade secret and other confidential information
– Easier to enforce than non-competition agreement and non-
solicitation agreement
– Often include “Assignment of Inventions” clause to ensure the
company (not employee) owns trade secret and other confidential
information
• Non-Competition Agreement
– An agreement to not engage in activities compete with those that
delineated in the agreement
– Often, employees agree not to work for a direct competitor for a
certain amount of time after leaving the company
– Must be reasonable in duration, territory, and the scope of
prohibited activities
– Not enforceable in all jurisdictions

• Non-Solicitation Agreement:
– Not to solicit customers of the company
– Not to solicit other employees of the company
– After the employee stop working for the company
– Usually directed to managers of the company
– Some terms may be construed as a “non-competition agreement”
– Not enforceable in all jurisdictions
http://blog.ericgoldman.org/archives/shutterstock_128228135.jpg

Patents or Trade Secrets : Considerations
http://blogs.orrick.com/trade-secrets-watch/2014/10/15/on-obtaining-and-asserting-both-trade-secret-and-patent-protection-
the-itc-and-federal-circuit-weigh-in/

Patents or Trade Secrets : Considerations
• Consider:
– Value of information
– Cost of patent filing & maintain
– Easy of reverse engineering or not
– Easy of detection or not
– Easy to prove infringement or not
– Easy to maintain secrecy or not
– Life span of its economic value

3131
Case Study: Apple v. Samsung
http://www.vanityfair.com/business/2014/06/apple-samsung-smartphone-patent-war

3232
Apple v. Samsungv.
• Apple’s patent claims
Sample Design Patents Patented Design
U.S. Pat. No. D593,087,
Electronic Device
U.S. Pat. No. D504,889,
Electronic Device

3333
Apple v. Samsungv.
http://blog.thomsonreuters
.com/index.php/tag/ip/

3434
Apple v. Samsungv.
• Samsung’s patent claims
Sample Patents Asserted
U.S. Pat. No. 6,928,604, Turbo Encoding/Decoding Device and Method for
Processing Frame Data According to QOS
U.S. Pat. No. 7,050,410, Apparatus and Method for Controlling a Demultiplexer and
a Multiplexer Used for Rate Matching in a Mobile Communication System

3636
Apple v. Samsungv.
http://blog.thomsonreuters.com/index.php/tag/lawsuit/

3737
Apple v. Samsungv.
• On remand, the district court granted Apple’s request
for preliminary injunction without a hearing on
6/26/2012, imposing a temporary ban on the sale of
Samsung Galaxy Tab 10.1.
– Samsung has appealed the order to the Federal Circuit.
D’889 Patent

3838
Apple v. Samsungv.
http://appleinsider.com/articles/11/09/16/samsung_files_patent_case_against_apple_in_australia
_over_iphone_ipad

3939
Apple v. Samsungv.
http://www.fosspatents.com/2013/09/german-court-dismisses-apple-lawsuit.html

4040
Intellectual Property
from the Start-up’s Perspective
Intellectual Property = High Cost Services
requiring considerable input
and time from company
personnel
Start up = Limited Resources and Time
Just how does the start-up or early stage project
address intellectual property concerns…..

4141
Outline
• Tip #1 - Develop an IP Strategy Early and
Review Regularly
• Tip #2 – Allocate IP budget wisely
• Tip #3 - Conduct Trademark and domain name
searches early
• Tip #4 - Establish proof of invention/ownership
• Tip #5 – Be aware of what you tell others

4242
Set IP Benchmarks and Goals
• Goal: Create an IP Portfolio that is relevant
1. Relevant to technology in development
2. Relevant to the product and business
3. Relevant to the market place and competitors
• Result: An IP portfolio that:
1. Directly contributes to the valuation of the business
2. Supports the commercialization of the technology and
product
3. Posses barriers of entry for competitors

4343
Consider all forms of IP
• Patent – protects new and useful products and
processes
• Design Patent – protects ornamental features
(including GUIs)get t
• Copyright – protects expression
• Trademark – protects brand and logo
• Domain Name – establishes identity on the Web
• Trade Secret – what you don’t want the word
knowing
• Know-how – what you’ve learned along the way

4444
Form a plan
• At a minimum, the plan should include:
– Plans for a patent committee that meets regularly
• At least once a quarter
– A realistic budget
– Filing schedules and goals
– Identification of technologies to be protected and the type of IP
(e.g., patents, trademarks, copyrights, or trade secrets) that
will best protect the products and other IP assets.
• A company can waste time and money by
randomly trying to protect IP that does not
conform to a clear strategy
• IP strategies must be tailored to the company

4545
Know your business
• Knowing how to build your portfolio depends on
your business, the marketplace and how the
technology is used in you business and the larger
market.

4646
Know your potential investors
• Investor interest
– Will numbers matter?
– Will quality matter?
– Will jurisdictional breadth matter?
– Will timing matter?

4747
Understand how the IP will be used
• What will the technology and IP do?
– Support a proprietary device, compound, process, or
method
– Support a licensing model
– Discourage knock-offs and counterfeits
– Attract investment, partners
– Monetize fields of use not aligned with business
– Defensive war chest
– Offensive war chest
– Provide value if start-up is not successful
– All of the above

4848
Outline
• Tip #1 - Develop an IP Strategy Early and Review
Regularly
searches early

4949
Generating a Budget
• IP can be core value of start-up or early stage
endeavor
• Budget should be realistic
– Make all IP related decisions with IP budget in mind
– Consider budgeting for initial IP protection (foundational
IP) separately from the quarterly or yearly budget
• Consider IP budgeting separately from other legal
costs
– This can help focus your IP efforts and show
commitment to protecting your company’s intellectual
property

5050
Avoid narrow focus of patents
• Building a portfolio is a process not a check list
• Avoid focusing solely on your technology, product
or market
• Work toward broad but detailed disclosure
• Include multiple embodiments and ways to
commercialize
• Continuation practice
• Re-alignment with technology, market, business
strategy

5151
Avoid short cuts and detours
• Beware of perfunctory provisional patent
applications
– Provisional applications have a purpose
– Risk in filing a narrow or incomplete disclosure
• Beware of IP filings that are not part of an overall
strategy
• Beware of unnecessary or premature product
clearance and prior-art studies

5252
Avoid overspending on protection in non-
relevant jurisdictions
• Plan for international filings, avoid last minute
decisions regarding international portfolio
development
– Provide a method for deciding the countries in which the
invention will be protected based on its importance, cost
and the availability of protection under local law.

5353
Outline
Regularly
searches early

5454
Trademark and domain name searches
• Trademark and Domain Name searches are
relatively cheap
• Secure product and company names and logos
early
• Risks:
– Added expense
– Wasted effort
– Rebuilding brand identification and goodwill
– Litigation

5555
Outline
Regularly
searches early

5656
Who owns the IP?
• Make sure that the company, not the employees or
principals, own the IP.
• Protect your company’s IP with proper agreements
– Require employees to assign IP to the company in
employment agreements
– Applications should be explicitly assigned to the
company.
– Confidentiality agreements to protect company trade
secrets
– Non-compete agreements to prevent employees from
leaving company and taking valuable know-how to a
competitor
– Consider IP ownership in agreements with partners

5757
Outline
Regularly
searches early

5858
Disclosure is a double-edged sword
• To promote your idea and company, you have to
share your ideas with others
• But, beware of Statutory Bars
– Your own activities can prevent you from obtaining a
patent
– Beware of publication (paper, speech, presentation) of
invention
– Beware of commercial use (offer for sale) of invention
– In U.S., a patent application must be filed within one
year
– “absolute novelty” system: any publication or offer for
sale prior to filing = complete bar

5959
What to do?
• Consider early filing of patent application(s)
• If early filing is impossible for time/financial
reasons
– Consider whether/what you really need to disclose
– Consider whether an non-disclosure agreement (NDA)
is possible

6060
Benefits from a well thought through
intellectual property plan
• Control Costs
• IP aligned with business and technology
• Flexible IP
• Validation
• Tangible expression of complex ideas/technology
for evaluation in diligence

6161
Final Thoughts
• IP is a critical aspect in the growth cycle of an
early stage endeavor.
• IP plan should be done early and relied upon when
developing IP

F723000_Class#17 發明與專利ABC 陳志光 (TSMC公司律師)

Recomendados

Recomendados

Mais conteúdo relacionado

Mais procurados

Mais procurados (20)

Semelhante a F723000_Class#17 發明與專利ABC 陳志光 (TSMC公司律師)

Semelhante a F723000_Class#17 發明與專利ABC 陳志光 (TSMC公司律師) (20)

Mais de ncku_f723000

Mais de ncku_f723000 (9)

Último

Último (20)

F723000_Class#17 發明與專利ABC 陳志光 (TSMC公司律師)