Category Archives: Patents

Trade Secret Protection – Key Points for Entrepreneurs to Know

Stephen LaCount Intellectual Property Talk Trade Secrets CSUF Startup Incubator IrvineDuring Stephen LaCount’s talk titled Intellectual Property and the Entrepreneur at the CSUF Irvine campus Stephen went over a lot of interesting topics; topics that are immediately valuable to the entrepreneurs that were there. One of the parts of his talk that I liked in particular was his information on trade secret protection.

Here are some key takeaways that I had:

  • If you do it right, a trade secret can last forever (i.e. Coca Cola)
  • “Trade Secret” means information, including a formula, pattern, compilation, program, device, method, technique, or process that: 1. Derives independent economic value… from not being generally known to, and not being readily ascertainable by proper means by other persons… and 2. Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.
    • This is from the Model Trade Secrets Act
  • One example that Stephen gave was how Texas Instruments successfully sued someone who flew a plane over a factory that they were building so that he could get pictures of how they were doing things, which violated their trade secrets
    • (I tried finding this story but, alas, couldn’t find it)
  • If the company or person with a trade secret doesn’t properly maintain it’s trade secrets then they will go to the public domain
    • That is, obviously, not good, so you have to work to protect your trade secrets
  • How to protect your Trade Secrets:
    • Restrict visitors to your work site – control or deny access to sensitive areas
    • Limit disclosure – implement strict “need to know” standard
    • Internal procedures and safeguards – you will need to create these, train your people on how to properly follow them, and have a system that ensures employee fidelity to your procedures and safeguards
    • Explicit written agreements: what is being disclosed and for what purpose?
      • Any relationship of importance should have a non-disclosure agreement (NDA) attached to it
    • Stamp and legend documents: such as “Confidential and Proprietary”; “Do Not Duplicate or Distribute”
  • Even though there is a lot that goes into protecting a trade secret there is no paperwork that you have to file with the government and a trade secret theoretically will never expire
  • What about past employees? Do they have to protect trade secrets from their former employer?
    • The answer is, of course, yes. Past employees do have a duty to protect the trade secrets of their former employees

The part about trade secrets was only a small fraction of Stephen’s overall talk and we will be working on putting together video segments of this talk for our Knowledge @ CSUF Entrepreneurship video series and Stephen’s segments will be published over the next couple of months.

So make sure to check back in frequently so you won’t miss any of the videos or, better yet, become a CSUF Entrepreneurship Insider. Insiders get a weekly update featuring the ideas, news, events, and success stories that are coming out of the CSUF Entrepreneurship community.


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Join CSUF Entrepreneurship this Wednesday at the CSUF Irvine Campus for a Special Event


IP Talk in Irvine for CSUF EntrepreneurshipThis Wednesday at 6pm at the CSUF Irvine campus we are thrilled to have lawyer and professor Stephen LaCount come in to give a talk titled Intellectual Property and the Entrepreneur. I am sure that this will be a fascinating event with a lot of great information that entrepreneurs can use to bolster their IP game. And, even if you don’t think you have any IP (i.e. patents, trademarks, copyrights, etc.) you should still attend this event because 1. You probably do have IP and 2. Even if you don’t have IP now you will at some point in the future and you need to know how to protect and leverage these incredibly important assets.

We hope to see you there!

The remainder of this post is the weekly CSUF Entrepreneurship Insider. If you haven’t already done so, make sure to become an Insider so that you don’t miss any of the news, events, or knowledge that comes out of the CSUF Entrepreneurship community.

The CSUF Irvine campus represents a special opportunity for the CSUF Entrepreneurship community. There, we will be able to reach more people from the community in the classroom, at the new CSUF Startup Incubator location at the CSUF Irvine campus once it opens (hopefully) later this year, and through events there as well.

Our first event for the public will be held this Wednesday at 6pm at the Irvine campus. Professor and lawyer Stephen LaCount will be giving a talk titled Intellectual Property and the Entrepreneur at that time. At this talk, Stephen will be going over IP essentials that every entrepreneur and business owner must know to effectively protect their IP (i.e. patents, copyrights, trademarks, etc.) and how to leverage those assets to get the most out of them.

We will be serving pizza and soft drinks at this event. To register, including learning important information about parking at this location, please go to the event page.

We look forward to seeing you at our first event on the CSUF Irvine campus and at our events in the future in Irvine, the Fullerton campus, the CSUF Startup Incubator office in Placentia, and wherever else we have events!


John Bradley Jackson
Director & Professor
CSUF Center for Entrepreneurship, CSUF Consulting,
& CSUF Startup Incubator

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Intellectual Property and the Entrepreneur – CSUF Startup Incubator

Join us at the CSUF Irvine campus to learn about Intellectual Property from lawyer Stephen LaCount

Join us at the CSUF Irvine campus to learn about Intellectual Property from lawyer Stephen LaCount

Usually, the most valuable thing that young companies own is their intellectual property. This is the portfolio of patents, copyrights, trademarks, and trade secrets that a company creates and there can be a tremendous amount of value there. Unfortunately, too many businesses do not fully utilize their intellectual property.

That’s where a good lawyer like Stephen LaCount comes in. Stephen works with his clients to develop a strategy to protect their IP and fully utilize it. In this talk at Cal State Fullerton’s Irvine campus for the CSUF Startup Incubator, Stephen will go into the important lessons that every entrepreneur should know about intellectual property. After attending this talk, attendees will have a clearer understanding of what their intellectual property is, how to protect it, and what to do with it.

Pizza and soft drinks will be served at this event.

We hope to see you there! Reserve your ticket today.

[You will need to purchase a parking permit to park on this campus. Information for parking can be found here:]

Stephen H. LaCount Biography

Prior to founding his own boutique firm in March of 2005, Stephen LaCount was affiliated with Nixon Peabody LLP, a top-50 law firm headquartered in the Northeast. He was previously a partner (and member of the firm’s Executive Committee) in the national law firm of Arter & Hadden LLP from 1992-2003. He attended Boston University (B.A.), New York Law School (J.D.) and New York University School of Law (LL.M. Trade Regulation).

Mr. LaCount has extensive experience representing a broad range of corporate clients and has also served as in-house counsel with a number of prominent multinationals, including Studebaker-Worthington, Inc., Westinghouse Electric Corporation, and Esterline Technologies. In 1987, he relocated from Fairfield, Connecticut to Irvine, California to join AST Research, Inc., a Fortune 500 personal computer manufacturer, where he served as General Counsel for three years before entering private practice.

His practice emphasizes domestic and international business transactions, including acquisition and sale of technology assets, general counseling/emerging growth companies, intellectual property protection and exploitation, technology licensing and development, software transactions and information technology contracting, outsourcing, strategic partnering arrangements, internet, e-business, privacy and data protection, antitrust, and specialized regulatory matters involving International technology transfer.

He is also a long-standing member of the American Arbitration Association’s National Roster of Neutrals and has arbitrated a wide variety of disputes involving intellectual property rights and technology and franchise-related agreements and transactions.

Stephen LaCount served as the Laspa Visiting Professor of Entrepreneurship Law and Practice at Harvey Mudd College (the engineering and science school of the Claremont college consortium) and has also taught law-related courses at Cal State Fullerton’s Mihaylo School of Business and Economics, and at Chapman University’s Fowler Law School and Argryos School of Business and Economics.

Mr. LaCount served on the board of directors of the Computer Law Association (currently known as the International Technology Law Association) from 1992-1998 and continues to serve as an active member of ITLA. In 1991 and 1995, he chaired the CLA’s biennial Pacific Rim Computer Law Conferences in Newport Beach and San Francisco. He co-founded the High-Tech Innovation Awards, an annual Orange County technology company showcase currently in its 20th year. In May of 2007, he was awarded Tech America’s prestigious Community Service Award.

He is a nationally recognized lecturer and author on technology contracting and international trade subjects and most recently served on the faculty of the 8th International Asian Conference in Bangalore, India. Mr. LaCount has been ranked by Who’sWho Legal as one of California’s top Information Technology lawyers for the past 15 years.

Stephen LaCount is admitted to the state bars of New York and California.


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Attend one of our events for entrepreneurs or sign up for a free mentoring session:

Knowledge @ CSUF Entrepreneurship video series:


Daily Titan Covers Patent Talk at CSUF Startup Incubator

David Jafari 10 Rules Everyone Should Know About PatentsOn Wednesday, patent attorney and friend of the Center for Entrepreneurship and CSUF Startup Incubator David Jafari gave a great talk on patents titled: 10 Rules Everyone Should Know About Patents. David has given this talk in the classroom but this was the first time that he gave this talk at the CSUF Startup Incubator and two Daily Titan reporters were there to cover it.

Here is an excerpt from the Daily Titan story written up by Andrew Salmi:

Cal State Fullerton’s Center for Entrepreneurship hosted a discussion Wednesday at its CSUF Startup Incubator overviewing what up-and-coming entrepreneurs should know before pursuing a patent for their inventions.

The event featured David Jafari, a patent attorney licensed in Orange County who has been involved in intellectual property, business law and employment matters. With 17 years of experience, Jafari offered insight on patents and how to avoid making mistakes with them.

“It’s a property right that the government grants to the inventor of the idea that’s memorialized and claimed in that document. It’s a contract between the state and the inventor,” Jafari said.

You should really click on the link above to read the entire article that Priscilla Bui also contributed to. And make sure not to miss any of our other events and news by signing up for our weekly email update, the CSUF Entrepreneurship Insider.

Did you miss David’s excellent talk? You’re in luck! His entire presentation can be viewed in the video below.


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Attend one of our events for entrepreneurs or sign up for a free mentoring session:

Patent It and Grow Rich! @ CSUF Startup Incubator

Today at 6pm at the CSUF Startup Incubator in Placentia we welcome patent attorney John Patent Attorney John Connors to speak at CSUF Startup IncubatorConnors to speak about patents and how they are a vitally important aspect of every startup, whether they know it or not. To get a ticket and please go to our event page.

Guiding Entrepreneurs, Inventors, and Developers through the Intellectual Property Minefield to Protect & Profit from Their Idea

The easiest thing to steal is an idea! But, there are legal ways to protect your intellectual property so that you become the next creator of the Miracle Mop, Snapchat, or Casper Mattress. Patent Attorney John J. Connors shares with audiences the often overlooked legal processes to get them protected, patented, and profiting from their idea!

Key Takeaways

Audiences appreciate John’s candor and first-hand experience when it comes to inventions. They walk away knowing how to:

  1. Invoke trade secret classifications early on to make sure your ideas aren’t stolen!
  2. Raise venture capital money without losing the rights to your app, invention, or product
  3. Differentiate between copyright, trademark, and patents laws so that you pursue legal protection correctly
  4. Recognize how patent, trademark, and copyright laws work together to strengthen your idea again copycats
  5. Obtain foreign intellectual property rights so that you’re covered outside of the United States
  6. Understand the nuances of the massive change in patent law that puts your invention in jeopardy of challenge

You can read more about John Conors here.

#CSUFEntrepreneur #CSUFStartup

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CSUF Patent Troll Seminar – Full Video

At this seminar, panelists Roger N. Behle (IP litigator at Foley, Bezek, Behle & Curtis, LLP), Jerry Conrey (Principal at Conrey Insurance Brokers) and Dr. Robert Kovacev (Professor of Finance at CSUF) discussed:

  • The role of a patent troll and how to identify one
  • Other intellectual property threats
  • Current and pending legislation designed to address patent trolling
  • Legal steps business owners should take when encountering a troll
  • Candidates for insurance protection

For more info, you can get in touch with us directly at csufentrepreneurship@fullerton­.edu

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Patent Trolls in the 19th Century?

Sharks in Iowa?

As strange as it sounds, “patent trolls” are not just a 21st century problem. It turns out this type of predator was also present in the late 1800s. Back then the trolls were called “patent sharks” and they were just as crafty as present day patent trolls.

Circa 1860 the US Patent Office made a decision to loosen up patent standards for designs of farm implements: plows, grain cradles, pitchforks, etc. This policy decision was met with a flurry of inferior and non-specific patents which then opened the door for the patent sharks.

The patent sharks would travel to isolated farm communities and threaten the farmers who were using the farm tools with the oblique patents. A quick cash settlement would normally avoid court. Sound familiar? The farmers protested to the Feds but little happened for about a decade. Later the US Patent Office returned to the higher patent standards that existed prior to the Civil War.

Lessons for the 21st Century? A good patent is a specific patent.  The Federal Government ain’t so smart. The small business man (the farmer of today) is the best prey for the troll. Bad guys follow the money.

Want to learn more about how to protect your small business or start up from the Patent Trolls? Come join CSUF Entrepreneurship at our seminar called:

Patent Trolls and Other IP-Related Threats:
How to Protect Your Business from a New Kind of Predator

Presented by: The CSUF Center for Entrepreneurship and CSUF Center for Family Business

Date: Wed., January, 22, 2014
Time: 6:00 p.m. (reception begins at 5:30 p.m.)
Location: Mihaylo College of Business and Economics
The O’Brien Center, Third Floor
800 N. State College Blvd., Fullerton

John Bradley Jackson
Director, Center for Entrepreneurship