Protecting Novel Packaging from the Competition Tracy-Gene G. Durkin, Esq.

Who is Sterne Kessler? Intellectual Property Law Firm Celebrated 30 th anniversary in 2008 More than 120 patent attorneys, agents and technical specialists (more than 50 of them have Ph.D.'s) Reputation for high quality patent preparation and prosecution supported by a deep technology bench (mechanical and chemical engineering; clean technology and nanotechnology) 2 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

Types of Intellectual Property Utility Patent Design Patent Trademark and Trade Dress Any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof Copyright Trade Secret U.S. Patent No. 4,435,941 Packaging machine 5 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

Utility Patents The right to prevent others from making, using, selling, offering to sell or importing what is protected by the patent Patents are for inventions that are: Useful, novel, and not obvious Granted for 20 year term 6 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

What is the Value of a Patent? Virtual monopoly Injunction and damages for infringement Damages can be tripled for willful infringement License for royalties Capital asset 10 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

But Do Not Delay! A U.S. patent on an invention is barred if any of the following events occur more than a year before the application is filed: 1. The invention is patented or described in a printed publication available anywhere in the world; 2. The invention is in public use in the United States; or 3. The invention is on sale in the United States 11 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

But Do Not Delay! Unlike the United States, most countries do not allow a one-year grace period. For these countries, a patent application must be filed before any enabling disclosure of the invention is made public. 12 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

The Other Side of the Coin How to Avoid Patent Infringement? Freedom to operate study when you enter new field or use a new technique Indemnification from suppliers 13 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

Types of Intellectual Property Utility Patent Design Patent A new and nonobvious ornamental design for an article of manufacture Trademark and Trade Dress Copyright Trade Secret U.S. Patent No. D557,606 Soap bottle 14 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

What is the Value of a Design Patent? Like a utility patent: Virtual monopoly Injunction and damages for infringement Damages can be tripled for willful infringement License for royalties Capital asset But, unlike Utility patent you can be awarded the infringer s profit as damages 15 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

What is the Value of a Design Patent? But: Term is only 14 years from date of issue Design must be ornamental Design must not be dictated by function 16 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

Types of Intellectual Property Utility Patent Design Patent Trademark and Trade Dress Copyright Trade Secret Trademark A distinctive sign or indicator used to identify the source or origin of a product or services Trade Dress The visual appearance of a product or its packaging that identify the source of the product to consumers 23 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

Trademarks Anything used to identify the source of a product Words, Logos and slogans With a name like Smucker s it has to be good. Serial Number: 73703036 Serial Number: 71532512 26 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

Why are Trademarks Valuable? Rights can last indefinitely Distinguishes one product from another in the marketplace Influences purchaser decisions Generates goodwill and positive emotions 31 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

Advantages of Trade Dress over Design Patents Can claim color alone No registration required Registration process less costly Can apply for registration at any time, regardless of length of use Protection is perpetual so long as trade dress is in continuous use 32 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

Disadvantages of Trade Dress over Design Patents Must show inherent distinctiveness Must be in use Test for infringement: likelihood of confusion, may be more difficult to prove Not available in all countries 33 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

Types of Intellectual Property Utility Patent Design Patent Trademark and Trade Dress Protects original works of authorship, including literary, dramatic, musical, artistic, and certain other intellectual works in any tangible means of expression Copyright Trade Secret 39 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

What are Copyrights? Right to prevent copying of original works of authorship fixed in a tangible medium of expression. Works: literary, dramatic, pictorial, sound recording, sculptural, architectural Tangible medium: writing, recording, performance 40 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

Is It Necessary to Register a Copyright? Common Law Rights Federal Registration Public record of claim Prerequisite to Infringement suit Wider scope of damages 41 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

Copyright Notice and Term Notice: year author All Rights Reserved. Term: life plus 70 years Term for works for hire: 95 years from publication 120 years from creation 42 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

Copyright Example It s packed with Fresh Release Essentials that give you Time Released Freshness while wearing your clothes! It will add moments of delight to your day. Fresh Rain HE will allow you to savor a freshness like a gentle shower on a spring day. It is a specially designed low sudsing formula to help ensure the best performance of your HE washer. Enjoy Time Released Freshness in your clothes; it will add moments of delight to your day. 43 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

What are Trade Secrets? Business Information Value - economic advantage Secret - capable of being kept secret Perpetual protection 45 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

Other uses for Trade Secrets Protect "negative know-how" Information you've learned during the course of research and development on what not to do or what does not work optimally Protect any other information that has some value and is not generally known by your competitors For example, a list of customers ranked by how profitable their business is. 46 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

McDLT Intellectual Property MCDLT Serial Number: 73542347 Serial Number: 73769409 Serial Number: 73542348 Serial Number: 73002420 Patent Number: D292,878 Patent Number: 4,653,685 49 2009 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.