20080701-196-高科技產業專利

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8/8/20058/8/2005 National Tsing-Hua UniversityNational Tsing-Hua University RST-RST-11

High-Tech EntrepreneurshipHigh-Tech Entrepreneurship

PatentsPatentsRen-Song TsayRen-Song Tsay

Session 11Session 11

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RST-RST-228/8/20058/8/2005 National Tsing-Hua UniversityNational Tsing-Hua University

Taiwan: Fastest-growing U.S.Taiwan: Fastest-growing U.S.

Patent HoldersPatent HoldersAmong the technology companies with moreAmong the technology companies with more

than 50 U.S. patent awards in 2004,than 50 U.S. patent awards in 2004,according to IFI Claims Patent Services,according to IFI Claims Patent Services,

three Taiwanese companies rankedthree Taiwanese companies rankedamong the top 10 performers inamong the top 10 performers inpercentage gains over their 2003 patentpercentage gains over their 2003 patenttotals: DRAM maker Nanya Technology,totals: DRAM maker Nanya Technology,chip set specialist Via Technologies andchip set specialist Via Technologies andLCD manufacturer AU Optronics.LCD manufacturer AU Optronics.

(EE Times, 05/18/2005)(EE Times, 05/18/2005)

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Importance of Patent RightsImportance of Patent Rights

(( 2/22/05)2/22/05)

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Mistakes of Xerox PARCMistakes of Xerox PARC

Did not patent inventions such asDid not patent inventions such as

the computer mouse andthe computer mouse and

the graphic user interfacethe graphic user interface

Resulted in other companies such asResulted in other companies such as

Logitech andLogitech and

Apple Computer, Inc.Apple Computer, Inc.

without payments to Xerox.without payments to Xerox.

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Integrated IP StrategyIntegrated IP Strategy

Hire seasoned counselHire seasoned counsel

Use different forms of IP to supportUse different forms of IP to support

business strategy.business strategy.Review strategy annuallyReview strategy annually continues to support evolving businesscontinues to support evolving business

strategy.strategy.

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Patent ProtectionPatent Protection

Effective for 17 years in USEffective for 17 years in US

Permit to exclude others from making,Permit to exclude others from making,

using, selling, offering for sale, andusing, selling, offering for sale, andimporting a product or service embodyingimporting a product or service embodyingthe invention.the invention.

Example: Polaroid stopped EastmanExample: Polaroid stopped EastmanKodak from making instant cameras andKodak from making instant cameras and

collected over $900 million in damages.collected over $900 million in damages.

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ResourcesResources

US Patent Office web siteUS Patent Office web site http://www.uspto.gov/http://www.uspto.gov/

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CopyrightsCopyrights

Protect original works of authorship which areProtect original works of authorship which are

fixed in a tangible medium of expression.fixed in a tangible medium of expression.

Traditional works: songs, novels and motionTraditional works: songs, novels and motion

pictures.pictures.Technology products: manuals, firmware andTechnology products: manuals, firmware and

computer softwarecomputer software

Term for company copyrightsTerm for company copyrights 95 years after the date of first publication or95 years after the date of first publication or 120 years after creation120 years after creation

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CopyrightsCopyrights

Arise automatically when a work is createdArise automatically when a work is created

No need for application to the governmentNo need for application to the government

However, a US company needs toHowever, a US company needs toregister the copyright prior to bringing aregister the copyright prior to bringing acourt action for infringementcourt action for infringement

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Copyright lawCopyright law

Exclusive right for the owner toExclusive right for the owner to reproduce,reproduce, distribute,distribute, modify,modify, publicly perform andpublicly perform and publicly display the work.publicly display the work.

But it does not protect the idea behind aBut it does not protect the idea behind aworkwork

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Power of CopyrightsPower of Copyrights

The record companies and musicThe record companies and musicpublishers shut down MP3.comspublishers shut down MP3.comsMy.MP3.com service and received overMy.MP3.com service and received over

$160M for copyright infringement.$160M for copyright infringement.

The record companies shut down Napster.The record companies shut down Napster.

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TrademarksTrademarks

Words, names, symbols, slogans, smells, sounds orWords, names, symbols, slogans, smells, sounds ordevices used by manufacturers of goods or providers ofdevices used by manufacturers of goods or providers ofservices toservices to identifyidentify their goods and services.their goods and services.

Examples:Examples: the bitten apple logo for computers,the bitten apple logo for computers, the word Google for Internet searching,the word Google for Internet searching, the roar of the MGM lion for films, andthe roar of the MGM lion for films, and the three-dimensional design of the Coca Cola bottle for softthe three-dimensional design of the Coca Cola bottle for soft

drinks.drinks. Intel Inside campaignIntel Inside campaign

Endure forever as long as they are continuously used.Endure forever as long as they are continuously used.

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US Trademark RightsUS Trademark Rights

Arise through use but limited to theArise through use but limited to thegeographic area used.geographic area used.

Federal trademark registration providesFederal trademark registration provides the presumption of rights throughout thethe presumption of rights throughout the

United States andUnited States and permits the ability to file and obtain futurepermits the ability to file and obtain future

protection of the trademark prior to use.protection of the trademark prior to use.

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Trademark: No Confusing SimilarityTrademark: No Confusing Similarity

For example, Apple was able to prevent the useFor example, Apple was able to prevent the use

of the trademark Pineapple on Apple-compatibleof the trademark Pineapple on Apple-compatibleproducts.products.

No protection of generic termNo protection of generic term For example, CAM would not be protectable forFor example, CAM would not be protectable for

computer aided manufacturing software.computer aided manufacturing software. For startups, their trademark may become the generalFor startups, their trademark may become the general

name for a new type of product and, thus,name for a new type of product and, thus,unprotectable: Google is facing that risk as googlingunprotectable: Google is facing that risk as googlingbecomes a general term for Internet searchingbecomes a general term for Internet searching

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Trade SecretsTrade Secrets

Information of any type that is valuable toInformation of any type that is valuable toits owner because it isits owner because it is notnotgenerallygenerallyknown in the industry and its owner hasknown in the industry and its owner has

takentaken reasonablereasonable steps to maintain thesteps to maintain theinformation in confidence.information in confidence.

Examples of trade secrets includeExamples of trade secrets include

customer lists,customer lists, source code, andsource code, and semiconductor manufacturing processes.semiconductor manufacturing processes.

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Trade SecretsTrade Secrets

Arise automatically if a company takes theArise automatically if a company takes theappropriateappropriate steps;steps;

They continue to be enforceable so longThey continue to be enforceable so longas they meet those criteria.as they meet those criteria.

Most famous example: the formula forMost famous example: the formula for

Coca Cola.Coca Cola.

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Trade Secrete ProtectionTrade Secrete Protection

Limited: it prevents the misappropriation,Limited: it prevents the misappropriation,or wrongful taking, of the trade secretor wrongful taking, of the trade secret

What is unlawful: take confidentialWhat is unlawful: take confidentialinformation and start a new companyinformation and start a new company

What is lawful: reverse engineering,What is lawful: reverse engineering,

unless breaches an agreementunless breaches an agreement

Protect your trade secrets with NDAs andProtect your trade secrets with NDAs and

processprocess

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Common IP Mistakes by StartupsCommon IP Mistakes by Startups

Failure to Secure Ownership (or License) of IP RightsFailure to Secure Ownership (or License) of IP Rights Obtain proper written assignments of IP rights that areObtain proper written assignments of IP rights that are

developed by the founders prior to the startups incorporationdeveloped by the founders prior to the startups incorporation

developed either by employees or consultants after the startupsdeveloped either by employees or consultants after the startupsincorporation.incorporation.

Missing Opportunities for Patent ProtectionMissing Opportunities for Patent Protection File before public disclosure of the inventionFile before public disclosure of the invention

Poor Trademark SelectionPoor Trademark Selection

Errors in LicensingErrors in Licensing Narrow inbound license limits future product evolutionNarrow inbound license limits future product evolution Exclusive rights to 3Exclusive rights to 3rdrd party: Apple to Windowsparty: Apple to Windows

Use of Trade Secrets or other Material from a Prior EmployerUse of Trade Secrets or other Material from a Prior Employer

Use of Open Source Software in Product DevelopmentUse of Open Source Software in Product Development It requires open your source code: Cisco + LinksysIt requires open your source code: Cisco + Linksys

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Subtle IP problemsSubtle IP problems

The wording of a license grant resulted inThe wording of a license grant resulted inApple Computer, Inc. losing the right toApple Computer, Inc. losing the right toprevent Microsoft Corporation fromprevent Microsoft Corporation from

creating a Mac-like graphic user interfacecreating a Mac-like graphic user interfacein its Windows products.in its Windows products.

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Investor Due Diligence ReportInvestor Due Diligence Report

Prepared by experienced attorneys,Prepared by experienced attorneys,

Ideally prior to soliciting funding.Ideally prior to soliciting funding.

IncludesIncludes a review of assignments,a review of assignments, patents,patents, trademarks,trademarks, inbound licenses andinbound licenses and outbound licenses.outbound licenses.

Not just IPs owned by the startup, but also theNot just IPs owned by the startup, but also thepatent rights of competitors to ensure that a thirdpatent rights of competitors to ensure that a thirdparty does not own rights which would block theparty does not own rights which would block theproduct or service of the startup.product or service of the startup.

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Patent StrategyPatent Strategy

Build a process for identifying potentially patentableBuild a process for identifying potentially patentableinventions.inventions. tradeoff between patent and trade secret protectiontradeoff between patent and trade secret protection review the patent portfolios of competitorsreview the patent portfolios of competitors

focus on chokepoint inventions and limit competitorsfocus on chokepoint inventions and limit competitors patenting both the product and the method of manufacture.patenting both the product and the method of manufacture.

Decide which countries to patentDecide which countries to patent

Do it before public disclosureDo it before public disclosure

Disclose invention intentionally to prevent other partyDisclose invention intentionally to prevent other partyfrom patenting itfrom patenting it

Participate in standard bodies if appropriateParticipate in standard bodies if appropriate

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Copyright StrategyCopyright Strategy

Ensure appropriate transfers of copyrightsEnsure appropriate transfers of copyrightsdeveloped by employees and independentdeveloped by employees and independentcontractors.contractors.

Register the copyright of the mostRegister the copyright of the mostimportant productsimportant products

Avoid unauthorized use of third partyAvoid unauthorized use of third partysoftware, manuals or other copyrightablesoftware, manuals or other copyrightable

materials.materials.

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Licensing StrategyLicensing Strategy

Carefully review inbound licensesCarefully review inbound licenses Sufficiently broad to cover future product developmentSufficiently broad to cover future product development Subleasing rights?Subleasing rights? Transferable in the case of a merger or asset sale.Transferable in the case of a merger or asset sale.

Clearly define exclusive licenses coverage soClearly define exclusive licenses coverage socan exploit others marketscan exploit others markets

Carefully consider acceptable liability throughCarefully consider acceptable liability throughwarranties and IP indemnities to its clients.warranties and IP indemnities to its clients.

Establish a policy for the use of open sourceEstablish a policy for the use of open sourcesoftwaresoftware

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ConfidentialityConfidentiality

Prevent competitors get hold of your valuablePrevent competitors get hold of your valuablebusiness ideas.business ideas.

Print Confidential on each page and treat yourPrint Confidential on each page and treat your

business plan a trade secrete.business plan a trade secrete.You should ask Nondisclosure AgreementYou should ask Nondisclosure Agreement(NDA), but do not expect everyone will sign it.(NDA), but do not expect everyone will sign it.

Suggest not to include in a business plan theSuggest not to include in a business plan the

most sensitive market or technical information.most sensitive market or technical information.

20080701-196-高科技產業專利

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