Intellectual Property for Managers and Investors doc

This page intentionally left blank Intellectual Property for Managers and Investors Te c hnologists have the ideas. Lawyers know the rules. But for business man- agers and investors, rules and ideas do not readily combine into a strategic vision. No longer is intellectual property (IP) just a necessary expense for large technology companies. Competing and succeding in today’s market- place requires an in-depth understanding of IP – its use as a weapon, as a shield, and as a monetizable asset. Ye t, in a world where fortunes can rise or founder on the strength of an IP portfolio, hesitation to enter this arcane, unfamiliar world still abounds. This book equips the business manager with a working, practical knowledge essential tocreatingandexploiting IP wealth. Itshows investorshow toevaluate IP strength and competitive value. With its results-oriented perspective and international focus, Intellectual Property for Managers and Investors is essential for those with decision-making responsibility at the interface where business and innovation meet. Steven J. Frank is a partner in the Boston law firm Goodwin Procter LLP and specializes in intellectual property and businesstransactions that involveIP. He graduated from Brown University (Sc.B., Chemistry, magna cum laude) and Harvard Law School (J. D., cum laude), and has authored numerous publica- tions involving legal aspects of technology, as well as the legal primer Learning the Law. He regularly speaks at conferences relating to law and technology, and is a member of the Sigma Xi Society, and IEEE. [...]... not, in itself, enforceable anywhere Instead, it must be “validated” in each European state where it is to be enforced Significantly, each such country is free to interpret and enforce the patent in accordance with its own laws There is, therefore, no unified law in Europe relating to enforcement and infringement of patents 14 Intellectual Property for Managers and Investors File Foreign/ Nonprovisional... secrecy orders, but the standards by which the occasional order is issued and its longevity can vary widely A 1958 patent application filed by three US Army chemists for a method of synthesizing the deadly nerve agent VX was understandably suppressed by the US PTO, but less understandably declassified in 1975 It is now publicly available 10 Intellectual Property for Managers and Investors occurs rather... wasn’t so long ago that intellectual property (IP) didn’t much matter to company managers and investors Copyright was for writers and artists, trade secrets were difficult to protect, and, as for patents, they seemed at best a necessary expense for large technology companies Not that IP was exactly ignored; epic patent battles followed the introduction of photography, the telegraph, and television, to name... lamp bases 16 Intellectual Property for Managers and Investors Beyond qualifying subject matter, the eligibility criteria for copyright are minimal: r originality, r fixation in a tangible medium of expression For both of these requirements, the bar is set low “Originality” means that a work has been created independently and reflects at least a smidgeon of intellectual effort But it need not be original... law performs quite the opposite function: it assists active efforts to maintain confidentiality The law of trade secrecy is quite unconcerned with protecting innovation The goal, instead, is to enforce norms 13 Although a scathing parody might negatively affect sales of the parodied work, that is not a copyright concern 22 Intellectual Property for Managers and Investors of commercial conduct and prevent... works of art, musical and dramatic compositions and performances, sound and film recordings, radio and television broadcasts, and, most problematically, computer software Despite its broad repertoire, copyright ultimately remains bound to its motivational roots – the ease with which creative effort can be reproduced, and thereby stolen, mechanically (or, today, electronically) The core and simplest offense... implementation Framing a description of the objective and how it is achieved without being limited to a specific set of parts is the essence, and the challenge, of a good patent claim 12 Intellectual Property for Managers and Investors point, the invention can no longer be maintained as a trade secret What’s worse, publication usually takes place before a patent examiner has even got round to reviewing... countries In the United Kingdom, moral rights can be waived on a blanket basis, and do not cover software Canadian moral rights cover software but blanket waivers are permitted In Australia, moral rights cover software and can only be waived on a case-by-case basis for particular uses 18 Intellectual Property for Managers and Investors Copyright Convention, bind together the copyright laws of most of... what he creates may take the form of IP or may be protectible by IP, but the obligation itself stems from the employment relationship and stands outside IP law It is also important to distinguish the IP right from the fruits of its exploitation Suppose a battery manufacturer obtains a patent on a long-life battery A customer buys one 1 2 Intellectual Property for Managers and Investors Do the manufacturer’s... profits it would have obtained had it made the infringer’s sales 8 Intellectual Property for Managers and Investors had been carried out in the US More on these exceptions later For now, think of patents basically as creatures of their home countries As a result International rights applicants seeking protection abroad must apply for patents on a countryby-country basis The Paris Convention helps . left blank Intellectual Property for Managers and Investors Te c hnologists have the ideas. Lawyers know the rules. But for business man- agers and investors, . law and technology, and is a member of the Sigma Xi Society, and IEEE.