Parsons Behle & Latimer webinar presented on Feb. 9, 2022 by Attorney Paul Evans.

1. Capturing & Protecting Your
Company’s Intellectual Property
Paul Evans
February 9, 2022

2. Legal Disclaimer
This webinar is based on available information as of February 9, 2022,
but everyone must understand that this webinar is not a substitute for
legal advice. This presentation is not intended and will not serve as a
substitute for legal counsel on these issues.

3. Presenter
Paul Evans
208.528.5251
pevans@parsonsbehle.com

4. Intellectual Property (IP)
• IP – legal processes used to capture the intangible value
of creativity
• Key questions – how to:
 Identify
 Value
 Procure
 Monetize
 Enforce IP protected assets

5. Why IP Strategy Matters?
 Freedom to operate
o Ensure you have the rights you need to conduct and grow your business
 Investment
o Innovation based investment can be expensive and risky. By protecting
your output you increase investor confidence in long-term potential.
 Value creation
o Creativity creates value. Your IP assets reflect the value of creative
potential in your business.
 Increase competitive advantage
o IP allows you to cultivate a dominant brand, reputation and offering in your
market.

6. Types and Nature of IP:
• Copyrights
• Trademarks
• Trade Secrets
• Patents

7. Copyrights – Expressions of Ideas
• Original created works:
 Software, databases, publications, art, literature, video, music,
architecture, performance, recordings, etc.
• Copyright protects against copying and distribution and
does not protect the ideas (17 U.S.C. 102(b))
• Two elements to a copyright infringement claim: (1)
ownership of a valid copyright, and (2) copying of
constituent elements of the work are original (show
“substantial similarity.”)

8. Trademarks
• Any word, symbol, logo or combination thereof used to
designate the origin of goods or services
• Government registration ®
• Common law protection ™ Symbol
• Right to exclude others

9. TRADE SECRETS: Why are trade secrets important?
• Protect ideas that offer a competitive advantage
• Protect valuable business information.
• Protect proprietary “know-how”
• No governmental registration process
• Might be only protection available
• No expiration date
• Relatively inexpensive

10. Notes on the Definition – Defend Trade Secrets Act
• Any type of information of any subject matter can be a trade secret. Trade
secret defined as:
“All forms and types of financial, business, scientific, technical, economic, or
engineering information, including patterns, plans, compilations, program
devices, formulas, designs, prototypes, methods, techniques, processes,
procedures, programs, or codes, whether tangible or intangible, and whether
or how stored, compiled, or memorialized physically, electronically,
graphically, photographically, or in writing….”
• Must take reasonable measures to keep such information secret.
• Information is only a trade secret if it derives independent economic value
(actual or potential) from not being generally known or “readily ascertainable”
through proper means.

11. Protection Guidelines:
• Confidentiality agreements/document disclosure
• Physical security measures
• Limiting access/disclosure
• Mark as “Confidential Information”

12. Misappropriation
• Liability for trade secret misappropriation arises when trade secret
information is disclosed or utilized in violation of a confidential
relationship
o Acquisition of a trade secret by a person who knows or has reason to
know that the trade secret was acquired by improper means; or
o Disclosure or use of a trade secret of another without express or implied
consent

13. Civil Seizure and Other Remedies
• Civil seizure mechanism: preventative tool employed prior to a formal finding of misappropriation in
which a court, on ex parte application by a trade-secret owner, may “issue an order providing for the
seizure of property necessary to prevent the propagation or dissemination of the trade secret that is the
subject of the action.”
• Injunction: A court may grant an injunction to prevent any actual or threatened misappropriation,
provided that the injunction does not “prevent a person from entering into an employment relationship,”
and that any conditions placed on employment are based on “evidence of threatened misappropriation
and not merely on the information the person knows.”
• Reasonable Royalty: in “exceptional circumstances that render an injunction inequitable,” the court
may condition future use of the trade secret on the payment of a reasonable royalty.
• Damages: Following a finding of misappropriation, a court may also award damages.
• Exemplary Damages / Attorney Fees: Where the trade secret is “willfully and maliciously
misappropriated,” a court may award exemplary damages double the damages amount already
awarded. A court may also award attorney fees where the misappropriation or claim of misappropriation
was in bad faith, or where a motion to terminate is made or opposed in bad faith.

14. Defenses:
• Reverse Engineering
• Independent discovery/development

15. Patents generally
• A patent is an exclusive right granted for an invention, which is a
“any new and useful process, machine, article of manufacture
(products), or composition of matter, or any new and useful
improvements thereof.”
• Government registration
• Right to exclude others
• Infringement
• Duration of protection (20 years from filing – utility patents)

16. Two-Step Mayo/Alice inquiry for § 101 subject
matter eligibility
1) Determine whether the claims are directed to a patent-ineligible
concept (claims directed to nature, natural phenomena, and
abstract ideas). Claims must be directed to one of the four
statutory categories;
2) Determine whether the claim’s elements, considered both
individually and as an ordered combination, transform the nature
of the claims into a patent-eligible application.

17. Software Protection:
• Broadly speaking, software is protectable under 3 areas
of IP law:
 Patent law
 Copyright law
 Trade secret law

18. USPTO Criteria:
• USPTO established 3 parts to be considered by examiners in
determining whether method claims are directed to unpatentable
abstract ideas:
• Is the claim a process, machine, manufacture, or composition of matter? If so,
determine if the claim is directed to a judicial exception such as a law of nature,
a natural phenomenon, or an abstract idea;
• An abstract idea may include “a fundamental economic practice, a method of
organizing human activity, and idea itself (standing alone), or a mathematical
relationship; and
• If the claim is directed to an abstract idea, determine if the claim recites
additional elements that amount to significantly more than the judicial exception.

19. Computer Implemented Inventions:
• USPTO guidelines provide examples of prima facie unpatentable
subject matter:
• Basic economic practices or theories (e.g., insurance, financial transactions);
• Basic legal theories (e.g., dispute resolution, contracts);
• Mathematical concepts (e.g., algorithms);
• Mental activity (e.g., forming a judgment, observation, evaluation or opinion);
• Interpersonal interactions or relationships (e.g., dating);
• Teaching concepts; and
• Instructions on how to conduct business.

20. What is the Patent Process?
• Alerting the company to an invention – the invention
disclosure
• Determination of whether a patent application should be filed
- Commercial evaluation
- Legal review: patentability & freedom-to- operate
• Preparation of patent application

21. Important actions of an inventor:
• Prompt submission of an invention disclosure and filing of
a patent application before any publication
• Informing the Company of prior art
• Keeping clear records

22. Don’t Have it? Get it
• Purchase it
 Get an assignment and record at the USPTO
• Get a license
 Exclusive
 Non-exclusive

23. Can’t Get It? Cover Yourself
• Get a legal opinion from outside counsel on infringement
and validity of a potential threat
• Design around – get confirming opinion of outside counsel

24. What Do You Do With It?
• Offense – keep competitors out!
• Defense – keep your market open
• Money Maker
 Assign
 License
 Leverage

25. Manage Wisely
• Have internal procedures to manage ownership and stay
ahead of disclosures
• Use software to get a 3-D look at where you stand
• Review competitors’ intellectual property

26. Manage Wisely (cont’d)
• Maintain or increase your market share
• Block competitors regardless of rush to the market
• Supplement the bottom line

27. “Examples of Game Changer Patents”

28. Amazon’s 1-Click Patent
Method and System for Placing a
Purchase Order Via a
Communications Network
Inventors: Peri Hartman, Jeff Bezos,
Shel Kaphan, Joel Spiegel
Issued: Sep. 28, 1999
Expired: Sep. 17, 2017
In broad terms, the patent protected any
E-commerce transaction executed with
one-click using stored customer
credentials to validate.

29. Alexander Graham Bell’s Telephone
Improvement in Telegraphy
Inventor: Alexander Graham Bell
Issued: Mar. 7, 1876
The patent for the telephone is often
considered to be the most valuable
patent in history.

30. Google’s Famous PageRank Patent
Method for Node Ranking in a Linked
Database
Inventor: Lawrence Page
Issued: Sep. 4, 2001
PageRank was developed in 1996 by Stanford
grad students Larry Page and Sergey Brin
based on the idea of citations. The basic idea
was that information on the World Wide Web
could be catalogued or ordered in a hierarchy by
“link popularity”; the more links a page had, the
more popular it was, and thus should be ranked
higher.

31. Other Examples

32. FILTER 2000
 Human Gas Filter Pad for Wearing
in the Underwear
 Inventor: Michael Welch
 Issued: Sep. 29, 1998

33. Pantyhose with Three Legs
 Pantyhose Garment with Spare Leg
Portion
 Issued: Feb. 3, 1998
 If a run or hole develops in one of
the legs being worn, the wearer can
easily and rapidly switch to the
undamaged spare leg.

34. Questions?

35. Thank You
Paul Evans
208.528.5251
pevans@parsonsbehle.com