Introduction to Key Concepts (Series: Intellectual Property Boot Camp)

Practical and entertaining education for
attorneys, accountants, business owners
and executives, and investors.
2

The material in this webinar is for informational purposes only. It
should not be considered legal, financial or other professional
advice. You should consult with an attorney or other appropriate
professional to determine what may be best for your individual
needs. While Financial Poise™ takes reasonable steps to ensure
that information it publishes is accurate, Financial Poise™ makes
no guaranty in this regard.
DISCLAIMER
3

MEET THE FACULTY
MODERATOR:
Kimberly A. Berger Miller Canfield
PANELISTS:
Eugene Goryunov Kirkland & Ellis
Jim Medek Jump Trading LLC
Ada C. Nielsen The Peregrine Maven Group
Sanjay Prasad Prasad IP, P.C.
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ABOUT THIS WEBINAR
Intellectual property or “IP” is a term used to describe certain types of intangible property. Like other
forms of property, such as real estate and personal property, IP can be owned, purchased or
transferred. How ownership is determined differs according to the type of IP. This webinar discusses
the importance of certainty in ownership of IP, how ownership of IP is entangled with areas of
corporate law and employment law, and it defines the key types of IP.
This webinar is delivered in Plain English, understandable to you even if you are not an Intellectual
Property Law Specialist. It brings you into an engaging, even sometimes humorous, conversation
designed to entertain as it teaches. And, it is specifically designed to be viewed as a stand-alone
webinar, meaning that you do not have to view the other webinars in the series to get a lot out of it.
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ABOUT THIS SERIES
Intellectual property (IP) rights constitute an important asset class. Indeed, the “information economy” and high tech
have made this asset class go from one that few understood and even fewer invested in to one watched and invested in by
millions..
IP includes patents, trademarks, copyrights, and trade secrets. How do you create rights in one of these assets? How do
you protect those rights? How do you transfer them (or have them transferred to you)? How do the interact with each
other?
This information-packed webinar series focuses on the intricacies of IP rights as they relate to the specific areas of brand
protection, IP transactions, internet marketing, and other IP issues that are critical when representing innovators and
inventors.
As with every Financial Poise Webinar, each episode is delivered in Plain English so that you do not have to be an
Intellectual Property Law Specialist to understand and benefit from them. And, as with every Financial Poise Webinar,
each episode brings you into engaging, sometimes humorous, conversations designed to entertain as it teaches. Each
episode in the series is designed to be viewed independently of the other episodes so that participants will enhance their
knowledge of this area whether they attend one, some, or all episodes.
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Dates shown are premiere dates; all episodes will be available on demand after
their premiere date.
EPISODES IN THIS SERIES
Episode#1 Introduction to Key Concepts 2/7/2019
Episode#2 Choosing, Building, & Protecting Your Brand 3/7/2019
Episode#3 Buying & Selling IP 4/4/2019
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..,,,Episode#1: Introduction to Key Concepts
8© 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™

..,,,
PRESENTATION OVERVIEW
What is intellectual property (IP)?
Basic IP Rights:
• Copyrights
• Trademarks
• Patents
• Trade Secrets
How do you protect your IP and avoid infringement?

..,,,
TYPES OF PROPERTY
Under the law, property is generally categorized as:
• Real property – buildings and land.
• Personal property – all other property, including:
• tangible property (e.g., office equipment and furniture) and
• intangible property (e.g., stocks, bonds, and intellectual property).

..,,,
WHAT IS INTELLECTUAL PROPERTY?
Intellectual property (IP) refers to intangible creations of the mind.
There are four main types of IP:
• Copyrights – protect works of authorship, such as books, music, or
pictures.
• Trademarks – protect company identifiers, such as logos or package
designs.
• Patents – protect new and useful inventions and discoveries.
• Trade Secrets – protect commercially valuable protected information,
such as business plans, formulas, or customer information.

..,,,
WHY IS INTELLECTUAL PROPERTY
IMPORTANT?
Intellectual property can be a company’s greatest asset. For example,
intellectual property:
• Builds brand loyalty and awareness;
• May be sold, licensed, or leveraged for profit; and
• Protects interests in inventions, technology, goods, and services used
and sold by companies.

..,,,
WHAT IS A PATENT?
A patent is a right granted by the U.S. government to an inventor for a limited
time to exclude others from:
• Making, using, offering to sell, or selling the patented invention; or
• Importing the patented invention into the United States.
Patents protect inventions and discoveries, including new and useful processes,
machines, products, compositions, or manufactures. Types of patents include
design, utility, and plant patents.

..,,,
PATENT ELIGIBILITY REQUIREMENTS
For an invention to be patentable, the invention must fall within a category of
patentable subject matter and must be useful, new, and non-obvious.
• Patentable subject matter excludes abstract ideas, laws of nature, and
natural phenomena.
• Usefulness or utility
• New or novelty
• Non-obviousness

..,,,
PATENT PROSECUTION AND OWNERSHIP
To obtain a patent on an invention, an inventor, patent agent, or patent
attorney must file a patent application with the U.S. Patent & Trademark
Office (USPTO). The process of filing a patent application and negotiating the
patent application with the USPTO is known as patent prosecution.
A patent application is made in an inventor’s name, and the inventor is
presumed to initially own rights in the invention. An inventor may assign (or
may be required to assign) the patent application or patent to another party.

..,,,
PATENT RIGHTS AND LITIGATION
A patent provides a right to exclude others. It does not give the right to make,
use, or sell the patented invention.
A party that practices an invention claimed in a patent without a license from
the owner infringes the patent.
• Direct Infringement vs. Indirect Infringement
• Remedies

..,,,
WHAT IS A TRADEMARK?
A trademark identifies the source of a good or service used in commerce.
• Words, phrases, or letters (e.g., APPLE®, McDonald’s slogan I’m Lovin’
It, General Electric’s GE mark)
• Symbols or shapes (e.g., Nike’s , Pepsi’s )
• Product, package, or store design (e.g., 7-Eleven store design, APPLE
store design, adidas’ three stripes)
• Sounds, scents, colors, or patterns (e.g., NBC’s 3-note chimes, Tiffany’s
blue packaging, Burberry’s plaid )

..,,,
TRADEMARK REQUIREMENTS
A trademark must be used in commerce and be distinctive. A hierarchy of
distinctiveness exists to determine the strength of a mark.
• Coined (no commonplace meaning) (e.g., KODAK®)
• Arbitrary (e.g., APPLE® for computers)
• Suggestive (e.g., KOOL-AID®)
• Descriptive (cannot be registered unless the mark acquires
distinctiveness) (e.g., NO SPOT RINSE SYSTEM®)
• Generic (can never be registered as a trademark) (e.g., BAKERY,
SOAP, ICE CREAM)

..,,,
GENERAL RULE FOR TRADEMARKS
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The MORE information
a trademark conveys about the
associated product or service,
the LESS useful and valuable
it is as a trademark.
© 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™

..,,,
TRADEMARK OWNERSHIP AND
REGISTRATION
Trademark rights and ownership are acquired through use of the mark in
commerce.
Registration of a trademark is not necessary, but registration provides benefits to
the owner. Benefits include:
• Rights extend nationwide from the filing date of a trademark application, even
if use is in a limited region;
• Constructive notice to the public of ownership;
• Legal presumption of ownership of the mark and the exclusive right to use the
mark nationwide on or in connection with the goods and/or services listed in
the registration;
• Use the U.S. registration as a basis to obtain registration in other countries;
• Right to use the registered trademark symbol “®”

..,,,
WHAT CAN BE PROTECTED BY A
COPYRIGHT?
• Original works of authorship fixed in a tangible medium (the work to be
perceived, reproduced, or otherwise communicated)
• Protects the expression of an idea, but not the idea or concept itself
• Copyright generally not available for:
a. words
b. symbols
c. slogans
d. common designs

..,,,
WHAT TYPES OF WORK RECEIVE
COPYRIGHT PROTECTION?
Copyright protection available for work that contains sufficient originality and
expressive elements.
Unlike in patent law, there is no requirement that a copyrightable work be
sufficiently distinct from earlier creations.
➢ Independently created
➢ Possess a spark or minimal degree of creativity

..,,,
WHAT TYPES OF WORK RECEIVE
COPYRIGHT PROTECTION?
Examples of copyrightable material include musical compositions, sculptures,
and motion pictures.
• Logos, hangtags, labels, and even packaging that feature artwork or graphic
design elements may be copyrightable.
• Copyright registration for trademarks that incorporate such artwork or
graphic design elements can provide another layer of protection for the
mark/logo.

..,,,
SCOPE OF COPYRIGHT PROTECTION
A copyright protects the elements of a work that are original.
Public domain elements can be “selected, coordinated, and arranged in such a
way as to render the work original.”

..,,,
COPYRIGHT OWNERSHIP
Generally, the creator(s) of the work owns the copyright, except for:
• “Work Made for Hire”
• A work prepared by an employee within the scope of his or her
employment is owned by the employer.
• Certain works specially ordered or commissioned are not owned by
the creator, if the parties expressly agree in a signed writing that the
work is a work made for hire.
• Sale of the entire copyright

..,,,
COPYRIGHTS: 70, 95, 120 YEARS
• Copyright protection (for works created after Jan. 1, 1978): 70 years after
author’s death, or, if a work made for hire, 95 years from year of first
publication or 120 years from year of creation
• Assignment: Author retains right to terminate after 35 years (17 U.S.C §
203); If less than all rights conveyed, author may be able to exploit work in
derivatives.

..,,,
COPYRIGHT RIGHTS AND REGISTRATION
A copyright gives its owner the exclusive right to:
• Reproduce the work
• Prepare derivative works
• Distribute copies of the work
• Perform certain works
• Display certain works
Copyright registration is not necessary for protection, but registration provides
certain benefits to owners.

..,,,
WHY REGISTER A COPYRIGHT?
• Copyright protection (for works created after January 1, 1978) vests as soon as
the copyrightable work is fixed in a tangible medium
• Obtaining a copyright registration enhances this protection
• Evidence of ownership and facts in registration:
If copyright application is filed within 5 years of publication, registration
certificate will be prima facie evidence of the validity of the copyright and of the
facts stated in the certificate

..,,,
WHY REGISTER A COPYRIGHT? (CONT)
• Registration is generally a prerequisite for filing a copyright infringement
lawsuit for works of U.S. origin.
• Registration prior to infringement of the work, or within three months of
the work’s publication, entitles copyright owner to seek statutory damages
(in lieu of actual damages and profits) and attorneys’ fees.

..,,,
WHAT IS A TRADE SECRET?
A trade secret is any information, including a formula, pattern, compilation,
program, device, method, or process:
1. That derives economic value from not being readily ascertainable; and
2. Is the subject of efforts that are reasonable under the circumstances to
maintain its confidentiality.
Example: KFC’s Fried Chicken Recipe.

..,,,
TRADE SECRET REQUIREMENTS AND
LIMITATIONS
To receive trade secret protection, information must be:
1. An actual secret;
2. Protected by reasonable efforts; and
3. Valuable as a secret.
Limitations on trade secret protection include:
• Independent discovery; and
• Reverse engineering

..,,,
IS THERE A TRADE SECRET?
Is there a trade secret? 6 factors used in both common law & statutory
jurisdictions:
• Extent of the measures used to protect the secrecy of the information
• Commercial value of the information to the business and to its competitors
• Extent to which those in the company knew about it
• Extent to which those outside the company knew about it
• Ease/difficulty with which it was developed
• Ease/difficultly with which it could be duplicated by another

..,,,
TRADE SECRET MISAPPROPRIATION
Trade secret misappropriation occurs when there is a wrongful use, disclosure,
or acquisition of the trade secret by “improper means.”
Trade secret misappropriation typically occurs in the context of employer-
employee relationships, but may also occur when any person or thing is given
access to protectable information.

..,,,
PROTECTING TRADE SECRETS
• No need to file / register
• But, you must be proactive:
• Stamp “confidential” on appropriate files
• Instruct employees to not disclose secrets
• Install security systems
• Use non-disclosure and confidentiality agreements
• Duration: lasts until it becomes public knowledge

..,,,
BEST PRACTICES FOR PROTECTING IP
• Develop an IP company policy and portfolio
• Obtain non-disclosure agreements and assignment agreements
• Mark protected products and goods
• Weigh costs and benefits of registering copyrights and trademarks and
applying for patents
• Weigh costs and benefits between potential patent and trade secret
protection
• Enforce rights against infringers

..,,,
BEST PRACTICES FOR AVOIDING
INFRINGEMENT
• Perform research on existing IP
• Question and understand how employees obtain and develop ideas,
marks, or publications
• Understand the marketplace prior to launching new products and
services
• Engage services to monitor new IP filings and perform infringement
analysis

ABOUT THE FACULTY
KIMBERLY A. BERGER
berger@millercanfield.com
Kimberly A. Berger is a principal at Miller Canfield in its Detroit office. She specializes in domestic and international
trademark prosecution and intellectual property litigation, including domain name disputes, trade secrets, unfair
competition, false advertising, and trademark and copyright infringement. Her practice includes managing domestic and
international trademark portfolios; trademark selection, clearance and prosecution; negotiating use agreements; U.S.
Patent and Trademark Office proceedings, including opposition and cancellation actions; and intellectual property
litigation in both state and federal courts. Kim is a member of the council of the Intellectual Property Law Section (IPLS)
of the State Bar of Michigan and currently serves on the Internet Committee of the International Trademark Association
(INTA). She has been recognized as a Michigan Super Lawyer since 2010 and as a Top Lawyer in intellectual property
by “dbusiness” in 2013 and 2018.
37

ABOUT THE FACULTY
EUGENE GORYUNOV
egoryunov@gmail.com
Mr. Goryunov is an experienced trial lawyer that represents clients in complex patent matters involving many diverse technologies. He is
deeply involved, as trial counsel, in all aspects of cases pending in Federal courts, at the U.S. International Trade Commission involving
Section 337 investigations, and in appeals at the U.S. Court of Appeals for the Federal Circuit. He also regularly serves as first-chair trial
counsel in post-grant review trials, on behalf of both Petitioners and Patent Owners, pending at the U.S. Patent & Trademark Office. To
date, he has been involved in over one-hundred post-grant review trials.
Mr. Goryunov is a regular contributor to intellectual property publications, including the Intellectual Property Magazine, The Patent
Lawyer, and the IPO Law Journal. To date, he has published more than sixty articles, many of which discuss post-grant review trial
practice. Mr. Goryunov also speaks about diverse issues of patent law and post-grant review trial practice. He also teaches patent law and
intellectual property litigation at the Columbia University and previously at the University of Notre Dame.
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ABOUT THE FACULTY
JAMES MEDEK
jmedek@jumptrading.com
Jim is an attorney at Jump Trading. He focuses on intellectual property and technology law at Jump, providing counsel on a broad range
of issues including IP and software licensing, trade secret protection, patent strategy, and negotiation of service agreements. Due to Jump’s
focus on research and development, he gets to work with a variety of technology areas such as high-performance computing, software
development, telecommunications, and data analysis.
Prior to joining Jump, Jim was a partner at Kirkland & Ellis, focusing on intellectual property and technology litigation and transactional
matters involving a wide range of technologies. As a litigator, he was involved in both jury and bench trials in federal court, and have
extensive experience in arguing motions, managing associate teams, taking and defending depositions of fact, corporate, and expert
witnesses, and coordinating all other aspects of discovery and e-Discovery. He also advised on various technology transactions relating to
software and digital devices, including software and technology service agreements, licensing agreements, and mergers and acquisitions.
39

ABOUT THE FACULTY
ADA C. NIELSEN
ada@peregrinemaven.com
Ms. Ada C. Nielsen is a member of newly-formed formed Xinova LicensingMasters and is Managing Director of The
PeregrineMaven Group. She created The PeregrineMaven Group to commercialize inventions, & improve profitability for new
& established businesses, products & services. In addition, she is launching a consulting practice around sustaining the
business/technical cultures of creating and protecting trade secrets. She has commercialized dozens of inventions & created
new ventures in chemicals, materials & energy – as well as in other market areas. She has been successful working for major
companies (such as Amoco, BP, Nalco Chemical Company & Chemical Waste Management) in business development,
finance, sales & marketing - measured by commercial success & an improved bottom line.
She served on the board of the Association for Corporate Growth Chicago for 7 years), is a member of Societe Chemie (NYC),
& Private Directors Association. She served as president of the Licensing Executives Society (USA& Canada) Inc. in 2010, as
Wisconsin Chapter Chair for LES, and as president of the Commercial Development & Marketing Association in 2004. She
has been named one of the Top 300 International IP Strategists for 6 years in a row (IAM Magazine).
She earned an A.B. in chemistry from Wellesley College, an M.B.A. in finance & marketing from the University of Chicago
Booth Graduate School of Business, & studied theoretical physical chemistry in graduate programs at Carnegie-Mellon
University, Tulane University & Dartmouth College. She is a Certified Licensing Professional.
40

ABOUT THE FACULTY
SANJAY PRASAD
sanjay@prasadip.com
Sanjay Prasad is a Principal at Prasad IP, PC in the San Francisco Bay Area. Sanjay has practiced at the forefront of technology and intellectual
property for over twenty years. He is experienced in all business and legal aspects of intellectual property from developing IP strategy for senior
management to execution of the strategy, including patent portfolio development, deal development and negotiation and monetization. His
experience includes:
➢ As outside counsel, advising emerging and established companies on all aspects of patent matters including portfolio development, infringement
matters, patent studies, technology licensing.
➢ As chief patent counsel to a Fortune 100 company, leading the transformation of the patent strategy including its approach to patent
procurement, licensing and litigation, and multiple policy, standard setting and software licensing matters.
➢ As licensing and business executive – deal development, negotiation and close, patent sales and acquisitions, development of patent licensing
programs, building and leading patent licensing/sales teams in the U.S. and abroad.
Sanjay was recently recognized in Intellectual Asset Management Magazine’s 2013 IAM Strategy 300 as one of the world’s leading IP strategists. He
has testified before a U.S. Congressional Subcommittee on hearings that led to passage of §19 of The America Invents Act and is a frequent
speaker on topics pertaining to IP law. He has served on the Board of Trustees for the Software Patent Institute, the Executive Committee of the
Association of Corporate Patent Counsel, the Board of the Intellectual Property Owners Association and as Chair of the IP Counsel’s Roundtable
of the Information Technology Association of America (ITAA). He is admitted to practice in California, Massachusetts, the U.S. Patent and
Trademark Office and various federal courts.
41

The material in this presentation is for general educational
purposes only.
It has been prepared primarily for attorneys and accountants for
use in the pursuit of their continuing legal education and continuing
professional education.
IMPORTANT NOTES
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QUESTIONS OR COMMENTS?
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About Financial Poise™
www.financialpoise.com
DailyDAC LLC, d/b/a Financial Poise™ provides continuing education to
attorneys, accountants, business owners and executives, and investors. Its
websites, webinars, and books provide Plain English, entertaining,
explanations about legal, financial, and other subjects of interest to these
audiences.
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