New Product Launch Checklist

ACC NCR May 2016

 Today’s Speakers

Kevin Minsky Burt Amernick Spencer Wood Colin Raufer

Associate General Counsel Shareholder Shareholder Intellectual Property Counsel

Booz Allen Hamilton Polsinelli Polsinelli Boeing
 Today’s Program
 Intellectual Property Checklist
 Transactional Considerations
 Software Issues
 International Product Launch: Compliance
Checklist for In-House Counsel
Burt Amernick

INTELLECTUAL PROPERTY
CHECKLIST
 Agreements
 Have Employees sign agreements that require
assignment of inventions made in the course of
employment.
– Inventions made on company time or facilities or materials or
relate to business.
– State laws may limit the scope of pre-assignment obligations.
– Include a confidentially clause-non-disclosure of confidential
information of company. Obligation continues after the
employment and until information no longer trade secret.
– Non-complete clauses-reasonable time, geography and
subject matter.
– Consulting agreements similar terms as employee
agreements.
 Agreements
 Non-Disclosure Agreements with third parties
typically include the following:
1. Purpose of the disclosure
2. Prohibit any use except for the stated purpose
3. Standard exceptions include the following:
– Information already known
– Public information
– Information from third party
– Information independently developed
4. Time period
5. Return tangible material
 Searching
 BACKGROUND
– Start of project- what has already been done.
– Extent of activity, the important players, types of
approaches pursued, problems encountered, and
attempted solutions.
 FREEDOM TO OPERATE
– Product refined to extent to be commercialized,
determine whether there are patents that may raise
a question of infringement.
– If so, evaluate for its probable validity, possibility of
designing around and/or negotiating for a
license/purchase.
 Clearance Procedures
 Procedures to record and identify
patentable inventions.

 Clearance of publications, public disclosures

and offers for sale. These events prior to
having a patent application on file in a
patent office can result in loss of potential
patent rights.
 Intellectual Property

Trade Mask
Patents Trademarks Copyrights
Secrets Works
 Patents
 Article 1, Section 8 of the Constitution provides the basis for patents as
well as copyrights. It states the following: Congress shall have the
power to promote progress of science and useful arts by securing for
limited times, to authors and inventors, the exclusive rights to their
respective writings and discoveries.

 A patent is a contract between the applicant and the public.

 The applicant receives the right to exclude others from practicing the
invention for a limited period of time. In turn the public gets a written
description and disclosure of the invention (35 U.S.C. § 112)
 Requirements for Patentable subject matter, 35 USC §101, 35 USC
§102, and 35 USC §103.
 35 USC § 101 defines what general subject matter can be patented. 35
USC §102 concerned with novelty and loss of patent rights. 35 USC
§103 is directed to “non-obvious” subject matter.
 Patents
Patentable Subject Matter
 35 USC §101 states the following “Whoever invents or
discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent
therefore, subject to the conditions and requirements of
this title.”
 Three judicially created exceptions subject matter
capable of patenting- Abstract Ideas, Product of Nature
or Natural Phenomenon and Laws of Nature.
 The Abstract Ideas exception have made it difficult to
obtain patent protection concerned with software and
business methods inventions.
 Patents
Patentable Subject Matter
 The Supreme Court addressed the issue of “abstract ideas” in
Bilski v. U.S., 561 US 593 (2010) and Alice Corporation Pty. Ltd.
v. CIS Bank International et al., 134 S. Ct. 2347 (2014),
discussed in the appendix. In Alice, the Court set forth a two-
step test as follows: 1) Is invention directed to one of the
judicial exceptions? 2) If so, does invention involve an
“inventive concept”.

 Federal Circuit in Enfish, LLC v. Microsoft Corp., Fed. Cir., No.

2015-1244, 5/12/2016 - Software creating an innovative
logical model for a computer database is not directed to an
abstract under step one of the Supreme Court’s test. Software
not inherently abstract and not only analyzed at the second
step in Alice.
 Patents
Patentable Subject Matter
 This issue is not limited to software and business methods
inventions. See Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, (2012) and Association
for Molecular Pathology et al. v. Myriad Genetics., et al.
discussed in the Appendix.
 Patents
 Design Patents
– If the overall appearance of the product is novel and
non-obvious, eligible for obtaining a Design Patent.
A Design Patent provides protection for the overall
visual or ornamental appearance of the product.
 Marking
– Consider marking the product as Patent pending or
with the Patent number upon grant. Marking with
the Patent number acts as constructive notice to an
infringer and can be helpful in maximizing damages.
 Trade Secrets
 Determine whether the technology related to
the product to be commercialized would be
protectable by patenting and/or by keeping as a
trade secret.
 One trade secret definition is a “Formula,
pattern, device or compilation of information,
used in one’s business and gives an opportunity
to obtain advantage over competitors who do
not know or use the secret.
 Trade Secrets
 Some states have enacted laws that define a
trade secret as meaning information, including
a formula, pattern, computation, program,
device, method, technique, or process that:
1. Derives independent economic value, actual or
potential, from not being generally known to, and
not being readily ascertainable by proper means
by, other persons who might obtain economic
value from its disclosure or use, and
2. Is the subject of efforts that are reasonable under
the circumstances to maintain its secrecy.
 Trade Secrets
 The information must be secret and novel. However, the difference over the
prior knowledge is not as stringent as those needed to obtain a patent.
 Reasonable precautions must be taken to keep the information secret. Some
internal procedures can include the following:
1. Give access to only those who needed to know the information.
2. Have employees sign confidentiality agreements.
3. Have consultants, vendors, customers, and joint venture and other partners sign
confidentiality agreements prior to disclosing trade secrets.
4. Limit Physical Access to your facility.
5. Limit electronic access (password protected), both internal and remote.
6. Monitor emails and inform employees of your right to do so.
7. Utilize locks and alarm systems.
8. Mark Documents, e.g. “Confidential”
9. Pre-clear Papers/ Speeches
10. Conduct an Interview with Exiting Employees reminding them of continuing obligations.
 Trade Secrets
 When deciding between seeking protection by patenting or
maintain as a trade secret, a few factors to consider are:
1. the apparent scope of patentability,
2. the probability of obtaining a valid patent,
3. the estimated life of an invention (e.g. if invention will probably
not be used by your company and/or competitors after X years
from its application filing date, the worth of any patent based on
the invention is very questionable),
4. the development expense of the invention,
5. the commercial importance of the invention,
6. the difficulty in circumventing a prospective patent, market
advantages which might reside in exclusivity,
7. difficulty in detecting infringement and
8. the advantages of keeping the invention a trade secret.
 Trade Secrets
Advantages of a patent include:
– a definite property right defined by the
patent claims
– it can be enforced against an
independent developer
– can act as a deterrent against others
entering the field
Disadvantages of a patent include:
– the cost
– patents are limited to the country in
which they are obtained
– the requirements of disclosure in the
application
– expires after a fixed period of time
Advantages of a trade secret include:
– no additional costs
– protection not limited geographically
– no time limitation
– no disclosure of the information to
competitors.
Disadvantages of a trade secret include:
– it is not well defined
– cannot be enforced against an
independent developer
– might have a short life span before it is
copied
– does not act as deterrent to
competitors
– potentially loss due to former
employees
 Trade Secrets
 On May 11th, the Defend Trade Secrets Act (DTSA) of 2016
became law creating a nationwide trade secrets law. Prior to this
law, trade secrets were handled at the state level, which varied
from state to state, notwithstanding the Uniform Trade Secrets
Act.

 The new law means that suit can automatically be brought in

federal court to remedy misappropriation for trade secrets
“related to a product or service used in, or intended for use in,
interstate or foreign commerce. The DTSA enables courts to
order seizure of property involved in the misappropriation,
including ex parte seizures. An objective is to have developed a
unified national case law.
 Trade Secrets
 DTSA provides certain safeguards to “whistleblowers” and
requires employers to inform employees of the safeguards.
Failure-not able to claim enhanced damages or reasonable
attorney fees. Motivate employment contracts, employee non-
disclosure agreements and confidentiality.

 Not liable if:

1. disclose trade secret in confidence to government official or
attorney “solely for purpose of reporting or investigating
suspected violation of law or

2. in document under seal in lawsuit or other proceeding. Can

disclose under seal in retaliation suit by employer against
employee for reporting suspected violation of law.
 Trade Secrets
 In addition, the Economic Espionage Act (18 USC 90)
criminalizes trade secret misappropriation wherein
actual or potential economic value is established
independent from the trade secret not being known.
The Act provides for fines and/or imprisonment.
 Copyrights
 The copyright statue, (17 USC) provides for protection of
works of authorship that are fixed in any tangible
medium of expression. Does not extend to the
underlying idea, only the way in which expressed.

 A “tangible medium of expression” is considered to be

any medium from which the work can be perceived,
reproduced, or otherwise communicated, either directly
or with the aid of a machine or device.
 Computer programs are included within this definition.
“Computer program defined as a set of statements or
instructions to be used directly or indirectly in a
computer to bring about a certain result (17 USC § 101).
 Copyrights
 Since computer programs often include trade secret information,
the Copyright Office has established a procedure for registering
computer programs that contain trade secrets. In particular, the
owner is permitted to deposit either:
1. the first and last 25 pages of the source code with some, but not
most portions blocked out;
2. at least the first and last 10 pages of the source code with nothing
blocked out; or
3. the first and last 25 pages of the object code plus any 10 pages of
the source code with nothing blocked out; or
4. in the case of programs of 25 pages or less, up to a maximum of
50 percent of the program could be blocked out or withheld,
provided the rest of the program shows sufficient copyrightable
authorship.
 Copyrights
 Registration with the Copyright Office only required prior
to filing a lawsuit, if the work originated in the United
States. If it did not originate in the United States,
Registration is not required. Certain litigation advantages
if registered within 3 months of the first publication or
prior to the infringement.
 The copyright notice which consists of 1) the symbol ©
(the letter “C” in a circle), or the word “Copyright” or the
abbreviation “Copr.”; 2) the year of first publication of
the work and 3) the name of the owner, is not required.
There are certain advantages by doing so.
 For infringement to exist, it is necessary for the accused
infringer to have had access to the copyrighted work.
 Mask Works
 The Semiconductor Chip Protection Act concerned with the protection
of "mask works" and provides for the registration of mask works with
the Copyright Office.
 A mask work is defined in the law [17 USC § 901] as a series of related
images with the following characteristics:
1. The images have or represent the predetermined three-dimensional pattern of
metallic, insulating, or semiconductor material present or removed from the layers
of a semiconductor-chip product.
2. The relation of the images in the series to one another is that each image has the
pattern of the surface of one form of the semiconductor chip product.
3. A semiconductor-chip product is defined by the law [17 USC § 901] as the final or
intermediate form of any product with the following characteristics:
4. It has two or more layers of metallic, insulating, or semiconductor material placed
on (e.g., deposited) or removed from (e.g., etched) a piece of semiconductor
material in accordance with a predetermined pattern.
5. It is intended to perform electronic circuitry functions.
 Mask Works
 It is not necessary for the copyright notice to
appear on a mask work. If the owner desires,
however, he can apply such a notice [17 USC §
909], which should consist of the following:
1. The words "mask work," the symbol "M," or the
symbol for mask work (the letter M in a circle)
2. The name(s) of the owner(s)
3. Even though the notice is not required, it is
desirable to include one so that those who obtain
a chip product with registered mask work be made
aware of the protection.
 TRADEMARKS, SERVICE MARKS
AND TRADE DRESS (Oh My!)
 Have searching conducted to pre-clear a mark prior to using it.
 A trademark is defined as a Word, Logo, Symbol, or Device, or
any combination thereof, used by a manufacturer or vendor in
connection with a product to identity and distinguish its goods
from others. A service is similar to a trademark except that it is
used to identity and distinguish the services performed by a
particular business from those performed by others.
 Rights in trademarks and service marks are created by use of the
mark. Enhanced by registering the mark on the Federal Register
and to a lesser extent by obtaining state registrations. After a
mark is federally registered, such fact can be shown by placing
the registration symbol ® or “Reg. U.S. Pat. and Trad. Off.” or
“Registered U.S. Patent. and Trademark Office.”
 TRADEMARKS, SERVICE MARKS
AND TRADE DRESS (Oh My!)
 The Federal Trademark Laws, (Title 15 USC) are
founded upon Article 1, Section 8, Clause 3 of the
Constitution which states:
 “The Congress shall have power …to regulate
commerce with foreign nations and among several
states, and with the Indian tribes.”
 Also, closely akin to trademarks is trade dress. Trade
dress refers to the total image of a product and may
include such features as size, shape, color, color
combinations, texture, graphics, or sales techniques.
Spencer Wood
TECHNOLOGY PRODUCT RELEASE:
TRANSACTIONAL CONSIDERATIONS
 Overview

Supply Chain
Branding and Marketing
Sales and Distribution
Support
 Supply Chain

 Securing consistent, timely supply of component

parts
 Sole sourcing or multiple vendors?
 Rolling forecasts w/ obligation to maintain adequate
inventory
 Right to engage alternate supplier
• Define triggers (price, quality, delivery schedule,
scalability)
• Ability to sublicense third-party provider
• Vendor’s obligation to assist / right to resume
 Supply Chain

 Securing consistent, timely supply of component

parts
 Non-assertion clause (preventing vendor from
disrupting your supply chain)
 Priority fulfillment of purchase orders
 Sunset restrictions
 Supply Chain

 Protecting competitive advantage

 Exclusive inbound license (field of use / territory)
 MFN clause
 Non-compete / non-collaboration
 Supply Chain

 Other considerations
 Product recalls
 No gaps in indemnity / liability limits
 Change of control issues (if competitor buys vendor)
 Coordination on modifications / upgrades
 Obligations to maintain compatibility / support past
versions
 Branding and Marketing

 Trademark clearance
 Secure domain name(s)
 Agreements with ad / digital marketing agencies
– Secure media buys
– Retain spokesperson
– Obtain licenses to music, photos, videos
– Develop graphics and logos
– Substantiate claims
 Prepare social media campaign
– FTC Endorsement Guidelines
– Considerations for user-generated content
– Moderation of online communities
 Branding and Marketing

 Contests and giveaways

 Retail demonstrations
 Co-branding
 Warnings and labels
 Third-party certifications
 Sales and Distribution

 How will your product be provided?

– Sales terms and conditions
– License terms and conditions (trial license?)
 How will your product reach your customers?
– E-commerce
 Fulfillment obligations
 Terms and conditions for website
 Privacy and data security obligations
– Distributors / Resellers
 Support

 Product manuals
 Online or telephone tech support
 Warranties and returns
 Extended warranties
 Service and support agreements
Colin Raufer, Intellectual Property Counsel
TECHNOLOGY PRODUCT RELEASE
SOFTWARE ISSUES
 Technology Product Release
Taxonomy of Software
 Your company’s source code/object code?

 Third Party Commercial Software?

 Software inside hardware coming up the supply chain?

 Open Source Software?

 Firmware, Software on a chip?

 Does the Product contain Industry Standards software?

 Interface software may be created

 Technology Product Release
 From Laboratory and Development Environment to a commercial sale
 Software as a Service (SaaS)
 Software in the Cloud
 Public Betas
 Apps often have onerous terms
 Where exactly does data reside?
 Servers, Networks, Cyber issues
 Privacy Issues with “personally identifiable information” (PII)
 Export issues
 Classification of Data by Government
 Technology Product Release

 Are the applicable licenses properly custom tailored to reflect the

contemplated transaction?
 Technology Product Release

DEVELOPMENT LICENSE (GOOD LANGUAGE)

 3.1.1 to use the SDK and other component of the Software solely for Customer’s
internal design, development and testing of the Integrated Product so that they
operate on executable “run-time” versions of the Software; and

 3.1.2 to combine, incorporate, embed and/or bundle the Software (in object code
only) with Customer Product in order to create the Integrated Product
 Technology Product Release

DISTRIBUTION LICENSE (MORE GOOD LANGUAGE)

 Subject to the terms and conditions of this Agreement, Supplier
hereby grants to Customer a non-exclusive, non-sub-licenseable
perpetual right and license to distribute the Software to End Users
solely as part of the Integrated Product and so long as such license
and distribution fall within the terms of this Agreement

 Subject to all the terms and conditions in this Agreement, including,

without limitation, the licenses granted to Customer in clause 4.1
Customer will be permitted to grant to each End User a non-
exclusive non-transferable irrevocable (except in the case of an End-
User Material Breach) right and license, without the right to
sublicense, to install and operate the Software solely as part of the
Integrated Product, and solely in machine-readable, executable,
object-code and/or bytecode format, as applicable; provided
however, that any such sublicense shall comply with the licence
restrictions set out in this Agreement
 Technology Product Release

Rights Granted (More Difficult Language)

 Upon Licensor’s acceptance of your order, you have the non-exclusive,
non-assignable, royalty free, perpetual (unless otherwise specified in the
ordering document), limited right to use the programs and receive any
services you ordered solely for your internal business operations and
subject to the terms of this agreement, including the definitions and
rules set forth in the order and the program documentation. You may
allow your agents and contractors (including, without limitation,
outsourcers) to use the programs for this purpose and you are
responsible for their compliance with this agreement in such use
Technology Product Release
 Technology Product Release

 Do not be lulled to sleep by the no-cost software license

 While no royalties are due or payable, the other terms of the

license may create significant risk and exposure for your Company
 Conclusion

NEED TO SPOT ISSUES AND RAISE ISSUES:

“This particular matter was easily resolved, but you may not be so
lucky in the future!”
Kevin Minsky, Associate General Counsel
INTERNATIONAL PRODUCT LAUNCH:
COMPLIANCE CHECKLIST FOR
IN-HOUSE COUNSEL
 Where to begin?
 What are you selling, to whom, how, and where?
– Understand and plan for well in advance of the product
launch:
• What are your company’s internal clients planning to sell
or offer internationally?
• Who are they planning to sell to?
• How are they planning to sell in-country: use of employees or
by local partners?
• Where (what countries) will the product/service be sold
in?
– Also, where will you have employees, facilities, and
customer.
– Legal must partner across teams and often outside
of the company.
 What: Protection of Intellectual
Property of Product
 IP laws are different across countries as well
as the EU.
 No worldwide patents.
 Understand what is critical and consider IP
protection strategy before entering
international markets.
 This can take significant time, so plan ahead
and use of outside counsel will be critical.
 What: Sector-Specific Regulation
 Research and develop compliance strategy for product
if regulated in countries (1-2 years in advance of
launch):
– This can be complex as laws may widely vary across countries.
– Examples of sectors with potentially problematic compliance
regimes:
• Critical infrastructure: energy, water, gas, telecom
• Important: telecom regulation may include “internet delivered” services,
apps, and software.
• Health Care
• National defense/military
• Media
– Also, generally applicable laws – such as privacy/data protection –
may pose significant compliance challenges.
– Plan ahead!
Who: do your clients plan to sell to?
 The type of customer may impact the regulations,
discussed below, that apply to your product or
service.

 For example, some countries have more extensive

protections applicable to sales to consumers than
enterprise customers.
 How: Hiring Locally - Employment
Law Considerations
 If you plan to hire employees in-country to sell
products and support sales:
– Understand how and who you can hire in
each country
– Limitations may apply to foreign nationals
– Corporate and tax considerations may
impact analysis
 How: Selling Through Use of
Partners/Vendors
 Care and due diligence must occur where local
partners are used to sell, market, or support
products
 Do your due diligence
 Develop a compliance and monitoring program
for partners/vendors to ensure they meet your
company’s compliance regime
***Big risk of anti-corruption and kickback
enforcement from US and UK regulators worldwide.
 Where: Local Country
Considerations
 Will you need a new company, subsidiary, or
branch office to sell services in the target
countries?
– Some form of local entity required
• E.g., branch office or wholly-owned sub?
 Considerations:
– Tax impact (critical)
– Corporate structure
– Applicable sector-specific regulations (e.g., telecom)
– Expense of creating/managing
 Keys: It takes a village
 In-house product counsel cannot address all of the above issue
alone
 Many companies have a stable of stakeholders that will be
involved in international launch: tax, HR, corporate lawyers, IP
lawyers, product team leadership, outside counsel/other outside
advisors, and c-suite
 Keys:
– Need a working group of key stakeholders with a single POC –
typically a senior leader in the business – to keep the workstreams
on track.
– Need to create a new mindset of international compliance – with
internal guidance and monitoring – to ensure compliance.
– Don’t rush to every country on the global launch list at once: start
with target countries and grow from there.
Questions

Q&A
 Checklist

Intellectual Property Checklist

 Employee Agreement
 Third Party Non-Disclosure Agreement
 Background Searching
 Freedom to Operate Evaluation
 Internal Procedures to Identify Inventions
 Internal Procedures to Preclear Publications, Outside Disclosures & Offers for
Sale
 Patent Applications on File
 Product Marked with Patent Pending/Patent Number
 Patent or Trade Secret Assessment
 Notice to Employees per Defend Trade Secrets Act (DTSA)
 Copyright Protection Assessment e.g. Computer Programs
 Marked with Notice
 Mask Work Protection Assessment
 Marked with Notice
 Trademark Clearance
 Marked with Notice
 Checklist

Transactional Considerations
 If you rely on third-party component suppliers:
 Ensure you have protections in place to maintain adequate / timely supply
 Obligate supply chain to coordinate on modifications / discontinuation
 Secure terms that facilitate competitive advantage
 Account for returns, recalls, warranties and liability issues
 When preparing your marketing / launch campaign:
 Identify and clear branding and secure domain name(s)
 Substantiate any marketing claims and ensure regulatory compliance
 Coordinate your social media strategy
 Finalize logistics for sales, distribution and support:
 Prepare license and/or sales terms and conditions
 Establish e-commerce platform and fulfillment vendor for online sales
 Review product manuals and packaging for claims and warnings
 Prepare model for any extended warranty or support agreement / service level
agreements; establish call centers; create system for product returns
 Appendix
In 2014, Kevin joined Booz Allen Hamilton Inc. (Booz Allen) as Associate
General Counsel to the company’s cyber and technology businesses and
advises the company on product development, global regulatory, and
commercial matters. As part of his role, Kevin negotiates a variety of cloud,
software, hardware, and strategic alliance/partnership agreements with
Fortune 500 tech companies. In addition, Kevin Co-Chairs the Professional
Services Council’s (PSC) Cyber Legislative Working Group and the
Association of Corporate Counsel’s Technology and Intellectual Property
Forum in the National Capital Region.

Prior to Booz Allen, Kevin served as a Senior Attorney at Microsoft where he

advised the Windows Server, Azure, Office 365, Xbox, and Skype businesses
on global regulatory (telecom, privacy, national security, and electronic
surveillance) and transactional matters. Kevin also co-led several of
Microsoft’s major telecom policy initiatives before Congress, Federal
regulators, state governments, and the European Union. While at Microsoft,
Kevin also served as a Vice President of the VON Coalition, a DC-based trade
association, where he helped the tech industry advocate before the Federal
Communications Commission, Federal Trade Commission, and Congress.
 Appendix
As a former patent examiner for the U.S. Patent and Trademark Office, Burt
Amernick uses his extensive knowledge and experience to adeptly guide
clients through every phase of the patent process, including:
 Patent counseling
 Patent opinions
 Due diligence
 Licensing and transactions
 Prosecution
 Reissue and reexamination

He has a background in chemical engineering and specializes in providing

business managers, engineers and scientists with an understanding of
patents and trademarks. He is the author of Patent Law for the Non-
Lawyer: A Guide for the Engineer, Technologist and Manager.
 Appendix
Spencer Wood began his career litigating disputes involving trade secrets,
patents, and commercial contracts. Now, he applies that experience as he
brings value to clients seeking to exploit and protect intellectual property
rights. Spencer focuses on intellectual property asset management,
information technology, digital media, and privacy rights. He regularly
counsels clients engaged in structured acquisitions of technology assets, as
well as the licensing and transfer of trademarks, patents, and copyrights.

Spencer also provides advice on matters in advertising, branded

entertainment and mobile marketing, and assists companies seeking to
monetize their intellectual property assets. He represents companies in
connection with mergers and acquisitions, joint ventures and strategic
alliances, and regularly negotiates patent licenses, transition services
agreements, outsourcing agreements, media distribution and production
agreements, and software development and license agreements.
 Appendix
Colin M. Raufer is an Intellectual Property Attorney with The Boeing
Company’s Defense, Space & Security, Network & Space Systems Group
(BDS-N&SS). Based in Arlington, Virginia, he currently provides support on
a wide range of intellectual property issues across numerous Boeing
programs, specializing in the IP issues associated with Government
Contracts. Prior to joining Boeing in 2005, Colin worked for 6 years at
Raytheon Company where he supported their Intelligence and Information
Systems Division in Reston, Virginia and their Space and Airborne Systems
Division in El Segundo, California. Prior to that, Colin worked as a Patent
Attorney for the Motorola Company where he drafted patents related to
digital cellular telephone technology.

Colin holds an Engineering degree from Rutgers University, a Law degree

from the University of Colorado, and an MBA from UCLA. He is a member
of the Patent Bar, the Virginia Bar, and the New Mexico Bar.
 Appendix
 35 U.S.C. § 112 states the following: “The specification shall
contain a written description of the invention, and of the manner
and process of making and using it, in such full, clear, concise,
and exact terms as enable any person skilled in the art to which it
pertains, or with which it is most nearly connected to make and
use the same, and shall set forth the best mode contemplated by
the inventor of carrying out his invention.”
 Appendix
Patentable Subject Matter
 The case of Bilski v. U.S., 561 US 593 (2010)
addressed the issue of “abstract ideas”. The
invention in Bilski was concerned with a method
directed to protecting or “hedging” against the risk
of changes in pricing, which the court found to be a
known fundamental economic practice. Some of the
claims related to hedging in commodities and energy
markets. These limitations did not add enough to the
“abstract idea” to render the claims patentable. The
court stated that a test is whether the process
requires the use of a specific machine or involves a
transformation.
 Appendix
Patentable Subject Matter
 In Alice Corporation Pty. Ltd. V. ClS Bank International et al., 134
S. Ct. 2347 (2014), invention was directed to a computerized
trading platform for exchanging obligations in which a trusted
third party settles obligations between a first and second party
so as to eliminate settlement risks. The Court invoked a two-step
analysis. First the court assess whether the invention is directed
to one of the judicial exception to patent-eligibility. Second, if the
invention does fall within an exception, courts consider whether
the invention involves an “inventive concept”, which is an
element or combination of elements “sufficient to ensure that
the patent in practice amounts to significantly more than a
patent upon the ineligible concept itself”.
 Appendix
 In Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
132 S. Ct. 1289, (2012), the invention was directed to a method
of optimizing the therapeutic efficacy for the treatment of an
immune-mediated gastrointestinal disorder. The method
comprised the steps of (a) administering a drug providing 6-
thioguanine; (b) determining the level of the metabolites of the
drug, and (c) comparing the metabolite levels to certain values
disclosed, wherein the comparison indicates a need to increase
or decrease the drug dosage.
 Appendix
 The Court held that the additional steps purporting to apply the
recited law of nature (correlation of metabolite level and drug
dosage) failed to transform unpatentable subject matter into
patent elgible subject matter. The additional steps involve well-
understood, routine conventional activity previously engaged in
by researchers in the field. The Court concluded that the method
claims merely recited a law of nature and therefore were
unpatentable.
 The case of Association for Molecular Pathology et al. v. Myriad
Genetics., et al. deals with the question as to whether isolated
DNA is unpatentable as being directed to the “natural
phenomenon” or “product of nature” exception to patentable
subject matter. The Supreme Court held that genes and the
information that they encode are not patent eligible under 35
USC § 101 simply because they have been isolated from
surrounding genetic material.
Confidential Nondisclosure Agreement
ABC Corporation (hereinafter referred to as ABC), a Maryland corporation, and XYZ Corporation (hereinafter
referred to as INVESTOR), a corporation of have discussed the possibility of IN-VESTOR investing in the
manufacture and commercialization of the in-ventions pertaining to ABC possesses information pertaining to
these which ABC considers proprietary and has maintained in confidence.

ABC will provide to INVESTOR certain of its proprietary information

concerning. All such information provided to IN- VESTOR hereunder in writing and identified as confidential
and all such information made orally to INVESTOR which is identified at the time of disclosure as being
confidential and which is confirmed in a written resume within twenty (20) days following such disclosure is
hereinafter referred to as INFORMATION and subject to the following conditions.
1. For a period of five (5) years from the date of disclosure of such INFORMATION, INVESTOR (a) will not use
INFORMATION except for the purposes of preparing a proposal to ABC for investing in, and (b) will not
disclose, without ABC's prior written consent, such INFORMATION to anyone other than INVESTOR's
employees who need such INFORMATION for the aforesaid purposes, and (c) INVESTOR necessarily
disclosing any such INFORMATION to its employees, will, in so doing, notify them that such INFORMATION
is confidential and not to be disclosed to others, and (d) INVESTOR will take such precautions and discre-
tion to avoid dissemination of ABC's INFORMATION, as INVESTOR does with respect to similar
INFORMATION of its own which it does not desire to have disclosed, published, or disseminated.
2. INVESTOR's obligations, as stated in (1) above, do not apply to any INFORMATION which (a) is or becomes
available to the public from a source other than INVESTOR and through no fault of INVESTOR, (b) is known
to INVESTOR prior to receipt thereof from ABC as can be shown by INVESTOR's written records, or (c) is
disclosed to INVESTOR by a third party who is not in default of an obligation to ABC in making such a
disclosure.
3. This Agreement shall inure to the benefits of, and be binding upon the successors and assigns of, the
parties.
Employee Confidentiality Agreement
In consideration of employment with the XYZ Company (hereinafter referred to as THE COMPANY) in a capacity in which I may receive or
contribute to the production of CONFIDENTIAL INFORMATION, in consideration of the salary or wages paid to me in connection with such
employment, and for other good and valuable considerations, I agree as follows:
1. Any and all inventions, ideas, discoveries, or original works of authorship, whether patentable or not, or whether copyrightable or
not, conceived and/or made and/or first reduced to practice jointly or solely by me during the period of employment or after the
term of my employment or relationship with THE COMPANY which are made through the use of any of the CONFIDENTIAL
INFORMATION or any of THE COMPANY's equipment, facilities, supplies, trade secrets, or time, or which relate to THE COM-PANY's
business or THE COMPANY's actual or demonstrably anticipated research and development, or which result from any work
performed by the undersigned for THE COMPANY shall become the property of THE COMPANY without additional compensation or
consideration. Without limiting the foregoing, the undersigned agrees that any such original works of authorship shall be deemed to
be "works made for hire" and THE COMPANY shall be deemed the author thereof under the United States Copyright Act, provided
that in the event and to the extent such works are determined not to constitute "works made for hire" as a matter of law, the
undersigned hereby irrevocably assigns and transfers to THE COMPANY all right, title, and interest in such works including, but not
limited to, copyrights.
2. I shall promptly disclose to THE COMPANY all such inventions, ideas.,oriPjnal.works,4.-Inthartilhp,-airtilliscovettes anti time to time,
as requested by THE COMPANY or its authorized representative and at THE COMPANY's expense, make application through THE
COMPANY's attorneys for Letters Patent for such discoveries and inventions in such country or countries as THE COMPANY may
designate and shall assign any and all of the undersigned's rights therein to THE COMPANY. I shall assist THE COMPANY in the
preparation and prosecution of any such patent application filed by THE COMPANY.
3. In as much as I may, during the course of my employment, acquire from THE COMPANY certain secret or confidential informationnot
previously known to me and not known or used by the trade generally, I shall, during employment with THE COMPANY and
thereafter, not disclose to others or use contrary to the interest of THE COMPANY any s-_:ch and shall not. during or after n e::-
.Dlcyrner.: with THE COMPANY, remove from THE COMPANVs premises any written, graphic, or other tangible material relating to
such information.
4. Upon termination of my employment and at such other times as THE COMPANY may request, I shall deliver to THE COMPANY all
notebooks, reports, letters, manuals, drawings, blueprints, notes, data, sketches, materials, references, memoranda, documentation,
and all other materials, including all copies of such material belonging to THE COMPANY which are in my possession or control.
5. I represent that the inventions, discoveries, ideas, and original works of authorship listed on the attachment to this agreement by
title and brief description thereof, were conceived by me prior to the date of my employment with THE COMPANY. Such inventions,
discoveries, ideas, or original works of authorship are specifically excluded from this agreement.
6. In the event that any provision hereof or any obligation or grant of rights by me hereunder is found invalid or unenforceable
pursuant to judicial decree or decision, any such provision, obligation, or grant of rights shall be deemed to construe to extend only
to the maximum permitted by law and the remainder of this agreement shall remain valid and enforceable according to its terms.
7. This agreement shall be binding on my heirs, legal representatives, and assigns and shall inure to the benefit of any successors and
assigns of THE COMPANY.
8. This Agreement supersedes all previous agreements, written or oral, relating to the above subject matter and shall not be changed
orally.
9. This Agreement shall be construed according to the laws of the State of Maryland.

Employee's Signature (including full first name)

Witness:
Date:
Accepted and agreed to: THE COMPANY
By:
Date:
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