5 y's of idea analysis?

Intellectual property is defined by the World Intellectual Property Organization as "creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce."  Ideas are usually a combination of all aspects of intellectual property, even if only certain aspects are protected by law.  In order to adequately protect an idea the analyst must understand the whole idea.  One very important part of the whole idea is it's purpose.  A five y analysis of an idea's purpose helps the analyst to better understand the purpose and therefore better protect the idea.  A five y analysis is done by asking the inventor why they are pursuing the idea, and then asking them four more times why they answered the way they did.

For example, your client has an idea for a new and improved bird feeder.  When you ask her why she wants to work on this idea she says, to make money.  When you ask her why she wants to make money, she tells you that she wants to use that money to develop more interesting and aesthetically pleasing bird feeders.  When you ask her why she wants to do that, she says she is concerned by the lack of certain birds in the area and she thinks that if she made cooler looking bird feeders she might be able to help bring those birds back.  When you ask her why she wants to bring certain birds back to the area, she tells you that those birds are good indicators of ecological health of a certain area and she thinks that by bringing them back she can improve the ecological health of the area.  When you ask her why she wants to improve the ecology where she lives, she tells you because she likes living in a place with a healthy environment.  

In this example you can see that the first question's answer doesn't begin to uncover the purpose of the invention.  If the analyst were to base his analysis and strategy on the answer to the first question he would completely ignore major aspects of the inventors idea.  The analyst would draw artificial boundaries around the idea that weren't there before the interview.  

The other benefit of the five y analysis, is that it gets the inventor thinking about their motivations and all the applications of their idea.  This is important because the idea may be bigger than inventor realizes and the analyst doesn't want to miss that potential and the inventor benefits from it as well.

Considerations for a licensing agreement

Here is a list of things to think about when licensing your inventions.  This is not legal advice or an opinion.  

• Pre-contract conditions - what are the facts that lead the parties to contract? Current market sales, forecasts, technology trends, and understandings etc.
• Scope of license - what is being licensed? geographic exclusivity, product exclusivity, profit margin requirements, distribution requirements etc.
• What is being licensed - specifications of the licensed property?
• Timing - how fast should it come to market, how long is the license for, what is the market schedule?
• Options and contingencies - who owns renewal rights (see stewart v. abend ), option to buy, infringement or invalidation of the idea?
• Money - initial fees, type of royalty, amount of royalty, schedule of royalties.
• Advertising - who will pay for advertising and who will coordinate advertising?
• Approval Process - who is in charge of approving product changes.
• Oversight - who keeps records of the financials and product performance, and what triggers an action based on the financials or product performance?
• Quality Control - who does it?
• Insurance - who carries and what is carried?
• Confidentiality - what is considered confidential and how should parties keep it confidential?
• Ending the license - how can it be terminated and what happens when it's all over?
• Disputes - choice of law, jurisdiction, venue, discovery.
• Assignability - can either party assign rights or responsibilities?
• Integration - this is the whole agreement.
• Amendments - how can the contract be amended?

Stewart v. Abend, 495 U.S. 207

Sandra Day O'Connor -
"It Had to Be Murder" published in 1924 in Dime Detective magazine, written by Cornell Woolrich.  Woolrich assigned magazine publication rights to Popular Publications, Inc.  Woolrich assigned movie rights and promised to renew and re-assign the copyright after 28 years.  Woolrich died before renewing and the executor of his estate assigned the renewed copyrights to Abend.  Jimmy Stewart and several other people, after obtaining the right to make a movie from Woolrich, made a movie called "Rear Window" based the the story "It Had to Be Murder".  After being paid off in the initial release of the movie, Abend (a subsequent owner the renewal rights of the story) sued when the movie was distributed in 35mm and 16mm.

Held:
1)  Any assignment of renewal rights made during the original term is void if the author dies before the renewal period.
2)  Assignee may continue to use the original work only if the author's successor transfers the renewal rights to the assignee.
3)  like all purchasers of contingent interests, Stewart took subject to the possibility that the contingency may not occur.
4)  Congress would not have stated explicitly in 17 USC sec. 304(c)(6)(A) that, at the end of the renewal term, the owner of the rights in the pre-existing work may not terminate use rights in existing derivative works unless congress had assumed that the owner continued to hold the right to sue for infringement even after incorporation of the pre-existing work into the derivative work.
5)  The argument that this gives original works' owners too much economic advantage which leads to the stifling of creation of art, is an argument better directed to congress.