IP – An Overview

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Different Forms of IP

Patents, Trade Secrets, Trademarks, and Copyrights are different

facets of Intellectual Property and serve different purposes.

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What is a Trademark?

Definition: A trademark is a word, phrase, symbol or

design, or a combination of words, phrases, symbols or
designs, that identifies and distinguishes the source of
the goods of one party from those of others.

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What is a Trade Secret?

Definition: Trade Secrets is information that

companies keep secret to give them an advantage
over their competitors.
The formula for Coca-Cola is the most famous
trade secret.
Trade secret protection is very limited.

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What is Copyright?

Definition: Copyright protects "original works of

authorship" that are fixed in a tangible form of
expression.

Examples-literary works, musical works, dramatic

works, choreographic works, pictorial, graphic,
and sculptural works, motion pictures and other
audiovisual works etc.

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What is a Patent?

Definition: A patent gives its holder the right to

prevent others from making, using, selling,
offering to sell, or importing the claimed
invention

A patent does not grant the owner the right to

practice the invention, since this might require
the use of technology patented by someone else.

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What is Patentable?

ALMOST ANY: THAT IS:

– Device – New (“ novelty” )
– Process – Non obvious
Thanks Sai Tejaswini.
– Material – Useful (“ utility” )
– Improvement

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Legal Terminology

CONFIDENTIALITY
 Asserts a legal nature of a communication
 Will not prevent discovery of information or documents
 Should advise the recipients as to how to treat the information
 If a NDA (or like) is in place with a third party, marking of
confidentiality generally invokes terms of the agreement with respect
to the document
 Typically obligations of confidentiality imposed by an agreement or
situation

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Legal Terminology

ATTORNEY-CLIENT PRIVILEGE
 Preserves confidentiality of communication between attorney and clients (extends to
agents of both)
 What is protected:
 Oral and written communications
 Communication between an agent of University and an Attorney
 Information for purpose of requesting/providing legal advice on University
matters
 What is not protected:
 A lawyer called upon to be present or participate in a discussion does not make
all communications privileged
 Communications made in “public” settings, or in presence of third parties are
not deemed confidential, and are not privileged

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Communication-Dos and Don’ts

MEETINGS/DISCUSSIONS
Limit participants to those with a “need to know”
Never allow privileged information to come up in a meeting with third parties- even
if a NDA is in place
Never allow confidential information to come up in a meeting with third parties
unless an NDA is in place

EMAILS
Use some sort of “confidentiality block” on all communications
Print and file all important communications including emails
Do not let your guard down as to emails—treat them as you would any formal letter

Do not assume attachments will not be retransmitted  

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Communication-Dos and Don’ts
DOCUMENTS
Use some sort of “confidentiality block” on confidential documents
Purge files periodically (i.e. destroy documents and communications)
DO NOT purge any documents if there is a threat of litigation
Take care not to overuse “privilege” marking where it does not apply

PHONE CALLS
If a potential infringement question or other conflict arises, be careful with
communications. If very relevant, use the phone and not email
Do not discuss communications from or to counsel or documents prepared at
the request of Legal with persons not directly associated with the matter

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Communication-Dos and Don’ts

Never use the word "infringe" in any email communications. Also avoid
words such as "blocks us" or "prevents us."

 Can say "This is relevant to our project" or "We would like to review
further together".

Do not assume that your product is “Infringing” or may have plans that
would “Infringe” a claim of another’s patent

Avoid making any conclusive comments in written correspondence

 When in doubt- Ask!

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