Session 7: October 15, 2007

Intellectual Property

Guest Lecturer: Robert Sachs (Attorney, Fenwick and West)

Quote of the Day

"Build a better mousetrap and the world will beat a path to your door." ~ Anonymous

Summary

Intellectual Property is the lynchpin of a technology venture. Whereas old economy businesses built value in the form of factories and equipment, new economy businesses create the lion share of their value in intangibles; patents, copyrights, trade secrets and trademarks. An effective entrepreneur knows how to establish these key assets, and how to use them with investors, partners and competitors.

Robert Sachs, from Fenwick and West, will provide a brief roadmap of the world of intellectual property (patent, trade secret, trademark, and copyright) and then focus for most of class intensely on his specialty (and probably one of the two most relevant for technology entrepreneurs) -- patents.

Please be prepared to listen and engage Mr. Sachs with questions about his presentation by doing the required readings below. Although there is no case, you will still be monitored and evaluated on your participation.

Required Readings (Policy on Required Readings.)

• Readings from the Textbooks:
• The Monk and the Riddle by Randy Komisar, Chapters 4-10
• Technology Ventures (Dorf and Byers): Ch 9 Knowledge, Learning and Design; Ch 10 Legal Formation and Intellectual Property (Highlights: 9.3; 10.3-10.8)
• Web Reading (Patents)
• Patent Summary Materials (Fenwick and West)
• "High Court Puts Limit on Patents" - NYT 4/30/07
• SKIM for the high-level points: The U.S. Supreme Court Decision in KSR International
• Optional Web Reading (Copyright and Trade Secret)
• Zimmerman, Mitchell, “Copyright Basics: Just Enough Copyright Law if You are Not an Attorney or IP Expert”, Fenwick & West (Undated)
• "Viacom Tells YouTube: Hands Off" - NYT 2/3/07
• Long, Timothy J., James H. McQuade and Matthew Poppe, “Keeping Your Employees from Competing or Working for Competitors upon their Departure” in Chapter 19, Practicing Law Institute Employment Law Yearbook, 2002.
• "The Noncompete Clause: Balk at Your Own Risk" - NYT 1/21/07

Watch the following short video clips:

• John Hennessey (Stanford) - Observations on the Biotech and Biomedical Devices Space
• Katharine Ku (Stanford OTL) - Royalties and Patents

Study Questions (Policy on Study Questions.)

• What is a patent? What is a copyright? What are primary differences between the two, and when would you choose one over the other? How different is the world of patents in light of the Supreme Court's 2007 decision in KSR?
• What is a trade secret? How do you establish one? How do your protect it?
• Are trademarks valuable to technology companies? Give an example of why or why not?
• What is the difference between an assignment and a license? What are the critical issues to be defined in negotiating either?