KCC/IPTL Intellectual Property Management Course, Fall 2012 Term

Date/Time: September 13, 2012, 6pm to 8pm, and consecutive Thursday evenings
Location: Kapiolani Community College, Manono Building, Room 104
Website or Map: http://continuinged.kcc.hawaii.edu
For Registration, Phone: 734-9211
Email: srtsukano@hawaii.edu


The Intellectual Property Management Course, co-directed by Martin Hsia and Leighton Chong, will again be offered this Fall Term by KCC Continuing Education Dept. in conjunction with the IPTL Section of HSBA. It is a 10-week series designed for innovation companies and entrepreneurs to gain practical and in-depth knowledge in protecting their intellectual property (IP) assets, establishing best practices for management of IP, and optimizing IP strategies in the U.S. and foreign countries.


The series will cover the main areas of IP protection, including patents, trademarks, copyrights, trade secrets and company information. It will pay particular attention to business issues relating to technology, innovative products, product brands, media, music and software. New sessions are offered this year on Publicity and Privacy Law and Native Hawaiian IP Rights.


The series will be held at KCC Diamond Head Campus, Manono Building, Room 104, from 6 pm to 8 pm, on 10 consecutive Thursday evenings starting September 13. Attendees can register for any sessions at $35/each, or all sessions at a discount to $300.


A course outline of topics is as follows:


1. Intellectual Property (IP) Management Overview: Martin Hsia, Attorney (Sept 13)
a. How IP protections protect major business assets and enterprise value
b. Technology, product designs, brands, copyrighted works, business information
c. Importance of establishing internal company management of IP
d. How strong IP management adds to and protects enterprise value
e. Real-life examples: what to do, what not to do

2. Patenting Technology, Innovative Products: Leighton Chong, Attorney (Sept 20)
a. What can be patented?
b. Defining what is “new” and “non-obvious” from what is “old”
c. Process for filing for patent: prior art search, completing R&D, documentation
d. Types of patents: provisional vs. formal; utility; design; plant patent
e. Patent prosecution: examination before the U.S. Patent Office over prior art
f. IP management: R&D reporting; documenting inventions; clearing right-to-use

3. Trademarking Product Names, Consumer Brands: Seth Reiss, Attorney (Sept 27)
a. What kind of protection does a trademark offer?
b. When is a new trademark “distinct” from prior trademarks?
c. How does a trademark acquire value?
d. How do you secure and register a trademark?
e. How are trademark rights enforced?
f. Company trademark management: clearance, filing, use, maintenance

4. Copyrights: What Creators, Users Need to Know: Stephen Street, Attorney (Oct 4)
a. What can be protected by copyright?
b. “Original” work versus “pre-existing” or “unprotectible” matter?
c. How are copyright rights enforced?
d. What is “fair use”? How much can you use without infringing another’s work?
f. Independent contractors; work-for-hire agreements; company IP management

5. Protecting Trade Secrets, Company Information: Martin Hsia, Attorney (Oct 11)
a. How are trade secrets and company proprietary information protected?
b. What are reasonable measures to protect secrecy?
c. Company employee agreements, confidentiality obligations
d. Confidentiality in joint development, supply, subcontractor agreements
e. Licensing of confidential engineering data, mfg know-how, databases
e. Company information management: employees, security, inventory/audits

6. Publicity and Privacy Law, Shannon Pierce, Attorney, Goodsill Anderson et al (Oct 18)
a. How does a right of publicity arise and what does it cover?
b. Can a right of publicity be inherited? Who inherits it? In what states?
c. What are typical terms for license under a right of publicity?
d. How does a right of privacy arise? Do employees have a privacy right?
e. When does a person become ‘newsworthy and lose a privacy right?
f. What legal remedies are there for invasion of a right of privacy?

7. Native Hawaiian IP Law, Danielle Conway, UH Law Professor (Oct 25)
a. Do native (indigenous) people have intellectual property rights?
b. Who owns native IP rights? Practitioners? Community? Native trust?
c. Examples: traditional medicine; cultural arts/practices; chants; biologics
d. Are native IP rights recognized under U.S. or state laws? World laws?
e. How can native IP rights be protected? Are laws necessary?

8. Profiting from Patented Technology Licensing: Leighton Chong, Attorney (Nov 1)
a. Securing IP rights early; developing strategic portfolio for technology or product
b. Adding value: expanding the scope of product exclusivity
c. Dealing with competitors: competitive monitoring, strategic alliances, enforcementd. IP monetization options: licensing, sale, enforcement of infringement damage claims
e. IP valuation methodologies: depends on context of IP use or assertion

9. IP Management of Copyrighted Media, Original Works: Martin Hsia, Attorney (Nov 8)
a. Expanding registration of copyright to modified or improved works
b. Giving notice of copyright; policing infringements, counterfeits, takedowns
c. Digital rights management: watermarks, tracers, locks, encryption, monitor bots
d. Shrink-wrap licensing; limited use licensing; differential pricing
e. Civil & criminal enforcement; Customs, Intl Trade Commission exclusion orders

10. IP Management of Foreign IP Rights: Leighton Chong, Attorney (Nov 15)
a. Developing an international IP strategy: strict time requirements & budgeting costs
b. Multiplied costs: individual countries, foreign IP agents, translations, annual fees
c. Business options: licensing, supply contracts, spinning off rights to foreign partners
d. Time management: home country filing, intl reservation of rights, foreign filings
e. Finding foreign partners: trade councils, export services, foreign IP firms, brokers