Legal

I. Description

Legal topics usually comprise intellectual property and software license law issues. Intellectual property refers to a category of intangible rights protecting commercially valuable products of the human intellect. The category comprises primarily trademark, copyright and patent rights, but also includes trade-secret rights, publicity rights, moral rights and rights against unfair competition. The terminology regarding intellectual property has shifted from "industrial property" to the various terms that exist today. This area of law has also expanded to encompass licensing, biotechnology and other subject areas that are related to conceptions of property that are abstract in nature. In this group we will concern ourselves only with trademark, copyright, patent, license to use and trade secret rights.

Intellectual property is distinct from real (e.g., land) or personal (e.g., car) property and includes the licensing of software.

The legal policy for intellectual property encourages invention, creativity, newly developed products and competition over time. It does this by making available to the owner exclusive rights to a given effort for a measurable time period and protecting the owner from loss due to possible infringement for that time period.

Recently, there has been an evolution in software license-to-use law. This evolution has been based upon the application of intellectual property concepts to the software industry and its products and services.

An understanding of intellectual property rights, including software license-to-use rights, is essential to protect the acquisition agent. The agent needs to understand how his/her rights are affected when there is a possibility of licensing for use, using, selling, making, enhancing or effectively competing with a given protected effort. A good understanding of software license law and other intellectual property rights will enable one to effectively develop successful acquisition strategies.

II. Functions to be performed

1. Maintain currency of understanding of intellectual property law through ongoing review of recent intellectual property literature, seminars and workshops.
2. Identify intellectual property ownership issues in contract language
3. Determine ownership options and associated costs or revenues
4. Obtain or establish ownership rights
5. Track fixed and ongoing costs or revenues
6. Project costs or revenues
7. Develop strategies for minimizing cost to use other’s intellectual property while maximizing cost to own one’s own intellectual property.
   

III. Skills required

1. An understanding of intellectual property, rights and responsibilities
2. Legal research - conduct searches on legal databases for recent intellectual property case law at both state and federal levels
3. Legal research - conduct searches for legislative or executive activity that could affect intellectual property
4. Ability to analyze the values and costs of intellectual property rights
5. Ability to negotiate
6. Knowledge of state contract law affecting intellectual property
• Jurisdiction - choice of law and venue
• Indemnification
• Third-party acquisition
• Nondiscrimination
• Affirmative action
• Arbitration provisions
7. Knowledge of state trade secret law
8. Knowledge of state trade and consumer protection law
9. Knowledge of federal antitrust law
10. Knowledge of federal copyright law
• Work Made for Hire
11. Knowledge of federal trademark law issues
12. Knowledge of federal patent law issues
13. Able to establish, maintain, and cancel ownership rights for each property type
• Trade Secret Rights
14. Ability to draft an Information Exchange Agreement
15. Ability to draft a Non-Disclosure Agreement
• Copyright Rights
16. Ability to file an application
• Trademark rights
17. Ability to file an application
• Patent Rights
18. Ability to understand the patent application process

IV. Instructional Topics

1. General understanding of intellectual property rights and responsibilities
2. Research Techniques
• Internet
• Westlaw
• Lexis
• Publications
• White papers
3. Establishing ownership and use rights
4. Maintaining ownership and use rights
5. Terminating ownership or use rights
6. Intellectual Property Infringement and Infringement Indemnification