January 24, 2008

Intellectual Property
Promise and Practicalities

Rob Cogan, Continuum Law

rcogan@continuumlaw.com
858-348-1005
Overview –
• Ask the right questions – usually “Is it
patentable?” isn’t!
• What IP do you need; What to do?
• What does it cost?
• Know your business model and your
revenue model -- if you want a return.
• Enforcing your rights – it doesn’t always
mean to have to go to court.

One size does not fit all – Customize

protection to your business!
Page 2 Rob Cogan, Continuum Law Rev. Apr. 2009
What Form of Intellectual
Property Do You Need?
• What is your objective in protecting IP?
• What is your business model?
• How does IP fit in your business?
• What will this patent (trademark, copyright)
protect?
• What part of your business will be protected?

Page 3 Rob Cogan, Continuum Law Rev. Apr. 2009

What is a business model?
A business model is a conceptual tool for expressing the
business logic of a specific firm. It contains a set of
elements and their relationships to describe the value a
company offers to its customers. The business model
describes how the firm interacts with its network of partners
for creating, marketing, and delivering this value,
developing relationship capital, and generating profitable
and sustainable revenue streams.

Page 4 Rob Cogan, Continuum Law Rev. Apr. 2009

Elements of a Business
Model
• The value proposition of what is offered to the market;
• The target customer segments addressed by the value proposition;
• The communication and distribution channels to reach customers and
offer the value proposition;
• The relationships established with customers;
• The core capacities needed to make the business model possible;
• The configuration of activities to implement the business model;
• The partners and their motivations of coming together to make a business
model happen;
• The revenue streams generated by the business model constituting the
revenue model;
• The cost structure resulting of the business model.

Page 5 Rob Cogan, Continuum Law Rev. Apr. 2009

 SIMPLIFIED IP INVENTORY

Marketing Assets Technical Assets Business Assets

Company Name Patents Customer Lists

Logo Patent Applications Supplier Lists

Primary Brand Unpatented Technology Pricing Formulas
Secondary Trademarks, e.g., Trade Secrets, e.g., formulas Business processes
model names
Unregistered Trademarks Technology Exchange AgreementsMailing Lists

Registered Trademarks Technology Licensed from Others Training materials

Copyrights Manufacturing Methods Data Mining Search Results

Packaging Design Product Physical Specifications Distributor Network
Trade Dress Performance Specifications Sales Representative Network
Internet Domain Names Product Shapes and Sizes
Product Performance and Failure
Statistics
Software and Source Code
Drawings, Manuals
Bills of Material
Page 6 Rob Cogan, Continuum Law Rev. Apr. 2009
Intellectual Property
Protection
Type Protects
• Patents and inventions, industrial designs
applications and plants
• Trademarks designations unique to
a source
• Copyright expression, not
information
• Trade Secret know-how
• Terms of Use software – object or source
code
• Mask Works IC topography
Page 7 Rob Cogan, Continuum Law Rev. Apr. 2009
• Personal image, character
 l
Some uses for patents
• They protect commercial market share.
• They demonstrate competence to customers.
• Patents can produce royalty income.
• They give you something to trade with other
patentees.
• Patent portfolios identify major players in a
market and provide bargaining power.
• Patents recognize the efforts and contributions
of inventors.

Page 8 Rob Cogan, Continuum Law Rev. Apr. 2009

When to apply l

• The right to apply for a United States

patent is barred one year (the “grace
period”) after certain events, e.g.
publication, sale or “commercialization.”
An offer for sale or inclusion in a
proposal, even in confidence, is
“commercialization.
• If foreign rights are a must, file in the
United States before the year starts.
Europe has no grace period. Japan gives
no grace period for sales in Japan or
Page 9
publication anywhere.
Rob Cogan, Continuum Law Rev. Apr. 2009
 What can be the subject of
patent application?
• Virtually anything you do can be considered.
• Algorithms, software and general schemes of doing things are the basis
for many issued patents.
• Do NOT ask, “Is it patentable?” Patentability is an abstract legal concept.
• Do ask, “Is it cost-justified to file a patent application.
• There is no “goodness of invention” requirement. When you file in the
United States, you only declare that:
– 1. It is an original invention by you and any coinventor;
– 2. You have not disclosed this publicly or “commercialized” it over a
year before filing;
– 3. You’re not aware of prior invention or publication by others.

Page 10 Rob Cogan, Continuum Law Rev. Apr. 2009

Keep a Written Record
• When you have a new idea, write it in an
invention notebook and sign and date it in ink.
• Another person who understands what you did
should witness the written disclosure and sign,
“Witnessed and understood by me” with
signature and date in ink.
• Do NOT mail a registered letter to yourself!

Page 11 Rob Cogan, Continuum Law Rev. Apr. 2009

Look at the “Prior Art.”
• Understand your market niche better.

• See what is similar yet

distinguishable.

• Consider whether your item is already

patented by someone else.

Page 12 Rob Cogan, Continuum Law Rev. Apr. 2009

Software Patents
• Algorithms are not patentable, BUT use of
algorithms to produce a “useful result” is
statutory subject matter.
• Subjects can relate to drug discovery or
bioinformatics.
• Usually, a flow chart of the process and a very
general diagram of the hardware architecture
is adequate disclosure.
• Claims can be drawn to a machine readable
medium that will perform particular methods
steps when executed on a processor.

Page 13 Rob Cogan, Continuum Law Rev. Apr. 2009

Business Method and Data
Processing Patents
• A basic court case related to a bank’s
method for keeping several types of mutual
funds and customer accounts in software.
Something was not unpatentable by virtue of
being a business method.
• The Patent Office recognizes many different
categories of data processing inventions.

Page 14 Rob Cogan, Continuum Law Rev. Apr. 2009

Provisional Patent
Applications
• A provisional patent application will
give you a “patent pending” date.
• There are no formal requirements, but
a “quick and dirty” job may be a false
economy.
• If you leave out certain details, you
may have a false sense of security
while being unprotected.
• The application must be completed in
a year.
Page 15 Rob Cogan, Continuum Law Rev. Apr. 2009
Trade Secrets
• Primary form of protection for “know-how.”
• Can be very valuable and can be easily lost
• Use non-disclosure agreements.
• Control access to the information.
• Protect information with restrictive legends.
• Can be enforced against former employees.

Page 16 Rob Cogan, Continuum Law Rev. Apr. 2009

Trademarks
• In the United States, unregistered
trademarks are valid.
• Place “TM” on the goods or containers or on
promotional literature for services.
• You can register with states.
• Federal registration is best, but need not
always be done right away.
• International protection is available.

Page 17 Rob Cogan, Continuum Law Rev. Apr. 2009

Copyrights
• To create a copyright, produce the
work with the notice:
Copyright © year of creation,
year(s) of revision, [proprietor’s
name]
• “All rights reserved” is traditional
but is generally obsolete.
• Registration is advantageous and
is not complicated.
Page 18 Rob Cogan, Continuum Law Rev. Apr. 2009
Software
• NEVER EVER send out software
without a proper license.
• Generally, sending object code
(machine readable) is less risky
than sending out source code
(human readable).

Page 19 Rob Cogan, Continuum Law Rev. Apr. 2009

Exploiting Inventions
• Ideas can be licensed, but you have
a better chance of selling or
licensing a going product.
• Ask companies for their submitted
idea policy. Most only pay pursuant
to valid patent rights.
• You can find small markets for your
product to get started.
Page 20 Rob Cogan, Continuum Law Rev. Apr. 2009
Using Outside Resources
• Model shops in San Diego can help
you build prototypes.
• There are invention development
companies charging high fees for
very little help. Some have thick
complaint files at the FTC.
• There are helpful, reasonable
marketing consultants, but don’t
underestimate yourself.
Page 21 Rob Cogan, Continuum Law Rev. Apr. 2009
Exploiting Inventions
• Ideas can be licensed, but you have
a better chance of selling or
licensing a going product.
• Ask companies for their submitted
idea policy. Most only pay pursuant
to valid patent rights.
• You can find small markets for your
product to get started.
Page 22 Rob Cogan, Continuum Law Rev. Apr. 2009
Your network of partners
• What niches do they fill in your business
model? (e.g., contract manufacturing,
website design, sales representation)
• Where are you if they disappear?
• Where are you if they work with your
competitor?
• Do you have control over or access to
everything you need for your business?

Page 23 Rob Cogan, Continuum Law Rev. Apr. 2009

Some tools
• Short non-disclosure agreements
(often for piece-part vendors)
• Long non-disclosure agreements
(often for collaborating companies)
• Licenses
• Employee agreements
• Consultant agreements
• Non-competition agreements

Page 24 Rob Cogan, Continuum Law Rev. Apr. 2009

Where are you going?
• Do you want to keep the business
small, or will it grow?
• Will the business stay in the
family?
• Do have an exit strategy? (e.g.,
getting acquired, selling the
business, IPO)

Page 25 Rob Cogan, Continuum Law Rev. Apr. 2009

 THANK YOU!

ROB COGAN

Continuum Law
10085 Carroll Canyon Rd Suite
100
San Diego CA 92131-1100
(858)348-1005
rcogan@continuumlaw.com