INTELLECTUAL PROPERTY LAW

Transcription

1 INTELLECTUAL PROPERTY LAW ME 481 Presentation Michigan State University Oct. 4, 2010 Jason Heist Steven Wangerow WHO WE ARE Jason Heist: BSChem 99, JD 06 Steven Wangerow: BS Mech. Eng. 03, JD 09 Harness Dickey: founded in 1921; exclusively IP law; offices in Troy, MI; St. Louis, MO; Reston, VA; Portland, OR national and international client base What is a patent? A U.S. Patent is a contract between the inventor and the US government: you teach your idea preserved forever in the US Patent Office government grants a monopoly for a limited number of years What rights does a patent give? The right to exclude others from: Making Using Selling Offering to sell Importing Patent rights are national: a U.S. Patent covers the entire United States What a patent does not do... Someone else s patent claim may read as follows: A light bulb comprising: Owning a patent does not give you the right to make, use, sell, or import your invention. a glass housing; a filament member disposed in said glass housing; wherein said filament member glows when provided with electricity. 1

2 Your patent claim to an improvement may read as follows: A light bulb comprising: a glass housing; a threaded base connected to said glass housing; a filament member disposed in said glass housing; wherein said filament member glows when provided with electricity. How you can get a patent Prepare invention disclosure dated and witnessed Search prior art Prepare application after application is filed with U.S. Patent Office = patent pending Prosecute application amend as required by Patent Office persuade U.S. Patent Examiner to allow claims and issue patent Patent Requirements: Idea must be: Patentable subject matter; Novel; and Non-obvious Statutory time bars begin after two key events: (1) Your date of invention: conception + reduction to practice (2) Your application filing date: patent application is filed in the U.S. Patent Office No Patent For You. if before your Invention Date: Your invention was already known or used in the United States Your invention was patented or described in a printed publication anywhere in the world No Patent For You if more than one year before your Application Filing Date: Your invention was in public use or on sale in the United States Your invention was patented or described in a printed publication anywhere in the world 2

3 What to watch out for... Careers in Patent Law Events that may start the clock running: published papers presentations federal grant awards purchase orders price quotes Patent Agents: a technical education requirement pass the patent bar examination Patent Lawyers: Patent agent requirements must also have a law degree pass a state bar examination Patent Bar Examination: Tests knowledge of patent examining procedures Online examination at designated test sites approximately a 30-45% pass rate What do Patent Agents and Attorneys do? Patent Agents prepare and prosecute patent applications Patent Attorneys wear many hats Work with interesting cutting edge technologies Electrical Computer Chemical Biotechnology Design Mechanical Structures Controls Thermodynamics Heat Transfer Dynamics Patentability and Infringement Investigations Working with the inventors to understand the invention Searching (prior art) to determine what has been done previously and monitor competitor patents Defining the invention over known prior designs Recommending design changes to avoid infringement of others patents Preparing Patent Applications Writing a detailed description of the invention using statutory guidelines Preparing claims for the invention taking into consideration case law and statutory requirements Preparing drawings illustrating the claimed invention 3

4 Prosecuting Patent Applications Requires knowledge of the statutes, rules and procedures of patent practice Negotiation with examiners In depth understanding of technical details and the prior art Intellectual Property Litigation Asserting a client s patent rights against an infringer Defending a client against infringement claims Licensing Negotiations Negotiations can involve millions of dollars and can be highly complex Breadth of knowledge legal (IP, contract) business practices industry details COPYRIGHTS Protects original works of authorship Expressions, not ideas Copyrights-Literature Copyrights - Music 4

5 Copyrights- Movies Copyrights- Art Trademarks Trademarks -Services Used to designate the source of goods or services Primarily product/service names and slogans Registration lasts as long as Mark is used Quiz What is oldest Trademark Registered in United Kingdom (1876)? 5

6 Trademarks- Logos Trademarks- Sparty Questions Thank you! 6