Introduction to Intellectual Property

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2 Introduction to Intellectual Property October 20, 2015 Matthew DeSanto Assistant to Mindy Bickel, NYC Engagement Manager United States Patent and Trademark Office

3 Outline Types of Intellectual Property What is a Trademark? Why get a Patent? Design Patents vs Utility Patents What is Patentable? The Patent Process Tools for Applicants 3

4 Types of Intellectual Property Patents Trademarks Copyrights Trade Secrets

5 Can you find the IP in a smart phone? Trademarks: Made by Apple Product iphone Software Siri, Safari, ios (under license from Cisco) Copyrights: Software code Instruction manual Ringtone Utility patents: Semiconductor circuits Chemical compounds Battery/Power Control Antenna Electronic displays Trade secrets:??? Design patents: Form of overall phone Graphical user interface/computer icon 5

6 IP Awareness Assessment Tool 6

7 What is a Copyright? Protects original works of authorship e.g., presentations, company operating/instructional manuals, whitepapers, computer software code, screen displays, and graphical user interfaces Does not protect company names Copyright holder is granted exclusive right to copy and distribute work and prepare derivative works Only protects expression not functionality Does not protect facts, ideas, systems, or methods of operation Obtain rights once the work is fixed

8 What is a Trademark? Any Word, Name, Symbol, Device (or any combination thereof) used to identify and distinguish goods or services and to indicate their source Federal trademark registrations can be owned indefinitely if properly maintained Protects source identifiers 8

9 Key Purposes of Trademarks Allow consumers to distinguish between different products and services helps their buying decisions Encourage trademark owners to provide goods and services of consistent quality and to build goodwill in the trademark 9

10 What do Trademarks offer? Brand recognition distinguishing goods or services from competitors in the marketplace Public notice of ownership - exclusive right to use Right to enforce nationally and bring legal action in federal courts Use of federal trademark registration symbol Right to record mark with Customs Serve as basis for foreign filing Publication in U.S. trademark database 10

11 Why use a Trade Secret? Trade Secret Basics: Protects commercially valuable proprietary information, e.g., formulas or business information that gives a competitive advantage Trade Secrets are not generally known and must be subject to reasonable efforts to preserve confidentiality Common Ways to Lose a Trade Secret: Failure to take adequate steps to prevent disclosure Owner or owner-authorized disclosure Reverse engineering Independent development 11

12 What is a Patent? A Property Right Right to exclude others from making, using, selling, offering for sale or importing the claimed invention Limited term Territorial: protection only in territory that granted patent; NO world-wide patent 12

13 Why get a Patent? A patent can be: Used to gain entry into, and deter others from, a market Used as a marketing tool to promote unique aspects of a product Assert/enforce rights against an infringer or competitor Used as collateral to obtain funding Create revenue sell or license like other property 13

14 Design Patents v. Utility Patents Utility Patents (35 U.S.C. 101) Protects the way an article is used and works Term = 20 years from filing Design Patents (35 U.S.C. 171) Protects the way an article looks No provisional application or maintenance fees Term = 15 years from issue Can obtain both a design and utility patent If invention resides both in the article s utility and ornamental appearance 14

15 Design Patents Scope of Design Claim: (1) Surface ornamentation applied to an article (2) Configuration or shape embodied in an article (3) Configuration/Shape and Surface ornamentation for an article 15

16 Design Patents A design claim may be directed to an entire article or less than the entire article. 16

17 What is patentable? Process Manufacture NEW, USEFUL, NONOBVIOUS, ENABLED & CLEARLY DESCRIBED Machine Method of making Improvements thereof 17

18 Patent Scope Too Specific Not valuable Invention Too General Not patentable 18

19 More on Utility Patent Claims Must commence on a separate sheet Must particularly point out and distinctly claim the subject matter which applicant regards as their invention or discovery Every claim needs a preamble and a transition: i.e. A headgear apparatus, comprising: Must conform to the invention as set forth in the specification terms and phrases used in the claims must find clear support or antecedent basis in the written description The claims shall be numbered consecutively and the original numbering of the claims must be preserved throughout prosecution 19

20 Patent Process Overview Patent Law is complex Each stage of the patent process involves decisions that must be made by the applicant. Many pro se applicants don t know there are multiple steps in the process or how to complete them. 20

21 Patent Examination Patent Examiner reviews contents of the application for compliance with all U.S. patent legal requirements Burden is on the examiner: An applicant is entitled to a patent unless Requirements of U.S. patent law are not met 21

22 What does a Patent Examiner do? Reads and understands invention Determines whether the application is adequate to define the metes and bounds of the claimed invention Determines the scope of the claims Searches existing technology for claimed invention Determines patentability of claimed invention Writes opinion called an Office action that notifies applicant of the examiner s patentability determination 22

23 The Examination Process Rejection First Examination First Examination Amendment Appeal Brief Second Second Examination Examination Appeal Appeal Process Process Allowance Notice of Allowance Please note that a negative opinion by the examiner may be correct. In those instances, a patent will not be granted. 23

24 When should you file? United States is a First Inventor to File System! Looking for international protection? You must file before public disclosure Only want US protection? You can file within one year after public disclosure 24

25 Provisional vs. Non-provisional

26 Common Misunderstandings Pro se applicants: Are not always aware of what protection a patent gives them Are not always aware of what the difference between a provisional and a non-provisional application is Often lack the necessary knowledge to draft their own patent applications (format, forms, fees, prior art, search, etc.)

27 Common Misunderstandings Pro se applicants: Are unfamiliar with prior art and the terminology used in Office Actions Frequently fail to respond in writing in a timely manner or with the necessary fees Frequently fail to ask for help!

28 Helpful Hint: Have an Interview Interview Pro Se In person, over the phone, or via WebEx Attorney/Agent In person, over the phone, or via WebEx Inventor cannot have an interview without their attorney or agent present

29 Resources -USPTO on the Web 29

30 Overview of Website 30

31 Features of the Website Apply Online for a Patent using EFS-Web Obtain Status of a Patent Application Determine when application will be picked up for examination, see First Office Action Estimator Search US Patent Database Search Patent Classification Manual Download Forms and Fee Schedules Patent Help Resources Access Details of All Currently Pending Published Patent Applications (Public PAIR) IP Awareness Assessment Tool Information about Pro Se and Pro Bono programs Link to StopFakes.gov site 31

32 Inventor & Entrepreneurs Resources Wide variety of resources to help the Independent Inventors and Entrepreneurs Pro se, Pro bono, Education & Information, Current Events, State Resources and more 32

33 Pro Bono (Free Legal Representation) In general, there are three basic requirements: Income below a certain threshold; Knowledge of the patent system; and Possession of an actual invention (not just an idea). More information can be found at: 33

34 Pro Se Assistance Program The Pro Se Assistance Program offers various services for the public, including: Dedicated personnel for assisting pro se applicants Walk-in assistance for the general public at USPTO Headquarters Targeted support to connect applicants with relevant resources and information Online resources 34

35 STOPfakes.gov One-stop shop for U.S. government tools and resources (from multiple agencies) on intellectual property rights (IPR) Provides information and assistance on IPR protection including: IPR protection in the U.S. IPR protection abroad How to report counterfeit and falsely labeled goods 35

36 Assess Costs Everywhere (ACE) 36

37 Patent Litigation Information and Resources 37

38 Process designed for issues that arise during patent application prosecution; used to get an application back on track More information can be found at: This program brings a voice to the inventor that he normally would not have THANK YOU!!!!!

39 Contacts for Direct Help Pro Se Assistance Program Inventors Assistance Center (IAC) or Monday Friday, 8:30 AM 8:00 PM (ET) Patent Ombudsman

40 Overview of Intellectual Property What s Protected? Examples Protection Lasts for: Utility Patent Inventions ipod, chemical fertilizer, process of manipulating genetic traits in mice 20 years from the date of filing regular patent application Design Patent Ornamental (non functional) designs Unique shape of electric guitar, design for a lamp 15 years from issue Copyright Books, photos, music, fine art, graphic images, videos, films, architecture, computer programs Michael Jackson s Thriller (music, artwork and video), Windows operating system The life of the author plus 70 years (or for some works, 95 years from first publication) Trade Secret Formulas, methods, devices or compilations of information which is confidential and gives a business an advantage Coca-Cola formula, survey methods used by a pollster, new invention for which patent application has not been filed As long as information remains confidential and functions as a trade secret Trademark Words, symbols, logos, designs, or slogans that identify and distinguish products or services Coca-Cola name and distinctive logo, Pillsbury doughboy character As long as business continuously uses trademark in connection with goods or services 40

41 Thank You! Matthew DeSanto Assistant to the NYC Engagement Manager United States Patent and Trademark Office

42 42

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