Protecting Intellectual Property

Transcription

1 Protecting Intellectual Property Peter D. Sabido Kolisch Hartwell, P.C Intellectual Property Law Firm Portland, OR Palo Alto, CA Boise, ID Invention to Venture Workshop University of Portland March 3, 2007

2 Objectives Understand the basics of the primary areas of intellectual property law: - Patents - Trademarks - Copyrights - Trade Secrets Understand some entrepreneurial considerations for each of those areas

3 US Patent No: 6,970,105 Passenger Control System During a Plane Flying "The system is designed in a manner that the emotional conditions of the passengers are detected and, in case of change of such conditions, the plane personnel is informed so as to intervene promptly on the related passenger... the system referred to can deliver to the evil minded person a substance like a narcotic or a strong tranquilizer adapted to neutralize the offensive capability thereof

4 PATENTS

5 What is a Patent? Grants the right to exclude others from making, using, selling, offering to sell, or importing into the United States a patented invention for a fixed period of time.

6 Types of Patents Utility Patents Design Patents Plant Patents

7 What can be Patented? Anything under the sun made by man : - Devices - Compositions of Matter - Processes - Articles of Manufacturing - Methods of Use - Software - Business Methods - Genetically Engineered Organisms

8 A Better Mousetrap U.S. Patent No. 5,706,601 to Dail et al. for TRAP AND METHOD FOR TRAPPING A MOUSE OR OTHER RODENT

9 A Better Mouse U.S. Patent No. 4,736,866 to Leder et al. for TRANSGENIC NON-HUMAN MAMMALS

10 What cannot be Patented? Principles Laws of Nature Mental Processes Intellectual Concepts Ideas Natural Phenomena Mathematical Formulae Fundamental Truths Original Causes Motives

11 Requirements for Patents It must be: Useful Novel Nonobvious Invented by you

12 Securing Patent Rights Conception Reduction to Practice Filing of Application Issuance of Patent

13 Patent Considerations Conduct a patent search before filing a patent application File the patent application before disclosure or commercialization - One year grace period in North America - No grace period in many countries

14 TRADEMARKS

15 What is a Trademark? Protects an exclusive sign that is used to distinguish products or services

16 Examples of Trademarks Word Word and Symbol Stylized Word

17 Examples of Trademarks Symbol Device

18 Examples of Trademarks Color Slogan Sound

19 Types of Trademarks Federally registered trademarks State registered trademarks Common law trademarks

20 Selecting a Trademark Two main considerations: A distinctive element - Cannot cause confusion with existing marks

21 Can Cake be a Trademark? No Common commercial name for the goods Does not distinguish goods from others in marketplace Yes Identifies goods Distinguishes goods from others in marketplace

22 Trademark Considerations Conduct a trademark search early Marks need a distinctive element File an application or use the trademark early Present the mark as a mark - Set marks apart from regular text - Follow marks with a trademark symbol (TM, ) - Marks are always adjectives, never nouns

23 US Patent No: 5,509,859 Leash With Sound "A novelty item for creating the illusion of an imaginary pet including a hollow, elongated leash with a handle at one end and a collar and harness adjacent the other end. Housed within the handle, which is hollow, is a battery power source and an integrated circuit for producing a plurality of animal sounds.

24 COPYRIGHTS

25 What is a Copyright? Grants the right for a fixed period of time to exclude others from: copying, distributing, and performing or displaying publicly an original work of authorship, and preparing derivative works based on the original work of authorship

26 What are Original Works of Authorship? Literary works Pictorial, graphic, and sculptural works Audiovisual works Musical works Dramatic works Sound recordings Architectural works Choreographic works

27 Examples of Copyrights Harry Potter Book (Literary Work) Harry Potter Movie (Motion Picture)

28 Examples of Copyrights Harry Potter Soundtrack (Sound Recording) Harry Potter Movie Poster (Pictorial Work)

29 What are not Original Works of Authorship? Ideas Procedures Processes Systems Titles Short Phrases Methods of Operations Concepts Principles Discoveries Useful Articles

30 Types of Copyrights Automatic Rights Registered Rights

31 Copyright Considerations Owner must provide notice Owner must register to enforce Independent contractors own the copyrights in their work unless you have an agreement to the contrary

32 US Patent No: 7,062,320 Device for the Treatment of Hiccups "A device for curing hiccups, comprising: a metallic cup-like vessel being a first electrode for producing electricity adapted to be applied to the lip of the user; and a second electrode electrically insulated from said first electrode being affixed to said vessel and extending from a point substantially within said vessel to a point substantially above a rim of the vessel.

33 TRADE SECRETS

34 What is a Trade Secret? A right that protects against acquisition or disclosure by improper means - Theft Bribery Misrepresentation Breach of a duty to maintain secrecy Espionage

35 Examples of Trade Secrets Drawings Cost Data Customer Lists Compositions Patterns Compilations Programs Devices Techniques Processes Methods of Assembly Other Methods

36 Trade Secrets Specific Examples KFC s 11 Secret Herbs and Spices Coca-Cola s Secret Soft Drink Formula

37 Acquiring Trade Secrets Information that: Derives independent economic value from being not generally known Is the subject of reasonable efforts to maintain its secrecy

38 Trade Secrets Considerations May last forever but all value may be lost at any time If others patent what you have as a secret, they could prevent you from using your secret

39 US Patent No: 5,996,127 Wearable device for feeding and observing birds and other flying animals "A device for feeding and observing flying animals comprising: a hat, the hat including a front portion and a rear portion; a first support mounted on the hat and extending forward of the front portion of the hat; and a feeder configured to contain food for flying animals mounted on the first support, wherein the flying animals can be observed while they feed.

40 Peter D. Sabido Kolisch Hartwell, P.C. Intellectual Property Law Firm (503)