Fall National SBIR/STTR Conference Intellectual Property Overview Intellectual Property Overview Utility Patent Design Patent Trade Secrets Copyrights Trademarks What is protected Inventions -Process, machine, manufacture, or composition of matter Ornamental characteristics embodied in, or applied to, an article of manufacture Business related information (formulas, techniques, information) Art, in an all encompassing sense Marks that indicates the source or origin of goods or services Requirements Utility, novelty, and non-obviousness Novelty and non-obviousness Commercial value, generally not known, and reasonable efforts of secrecy Original, authorship, and fixation in a tangible medium Use in commerce and either distinctiveness or secondary meaning Protects Against Making, selling, offering for sale, and importing Making, selling, offering for sale, and importing Stealing Copies, performances, displays, and derivative works Use of a mark that causes the likelihood of confusion Endures until 20 years from filing date 14 years from issuance Public Disclosure The life of the author +70 years Abandoned Rights of Independent Creators None None Full Full None 1
Constitutional Language Congress shall have the power to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. U.S. Const. art. I, 8, cl. 8. Patents - Before you Begin! Do your homework Make a thorough search Understand what you want to protect Create a business plan Keep a notebook Read as many patents as possible Know types of patent applications 2
Patent Fundamentals U.S. system is quid pro quo The inventor discloses the invention to the government in specific terms The government grants exclusive rights to the inventor Nature of a Patent A U.S. patent is a grant by the Government to an inventor (or his/her heirs and assigns) of a right to exclude others from making, using, offering for sale, or selling the invention throughout the U.S. or importing the invention into the U.S. If the invention is a process, to exclude others from using, offering for sale or selling throughout the U.S., or importing to the U.S., products made by that process for a set period of time 3
Types of Patents Utility New and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof Design Any new, original and ornamental design Plant Whoever invents or discovers and asexually produces any distinct and new variety of plant... What Type of Application? Provisional - one year period, no claims required, written disclosure must meet same requirements as non-provisional, not allowed for design. Non-Provisional - claims required, written disclosure must meet requirements of 35 USC 112 1st paragraph. Examined for patentability, can result in a patent. 4
Pitfalls of Provisional Applications must file a non-provisional within 1 year of filing date to keep date might affect foreign filing may not give full coverage for regular application attorney cost almost equal to non-provisional Patent Value Applications for patent and patents have the attributes of personal property and may be sold to others, mortgaged, assigned, given away, bequeathed in a will and inherited, licensed and taxed (when transferred) An inventor s assignee can be any legal entity, including partnerships and governments, as well as individuals and corporations. When a patent is assigned to another in writing, the assignee becomes the owner of the patent and has the same rights as the original patentee. 5
Pitfalls of patents! A patent does not assure that the patentee can practice the invention during the entire patent term. There may be a dominant, or background, patent owned by another, which must be honored, until that patent expires. Who can get a patent? The first inventor to file a complete application is entitled to a patent, provided the invention was not copied from another. Effective date of change was March 16, 2013. 6
Allowance & Issue of Patents Term Utility, Design and Plant Maintenance of Patent Patent Marking & Patent Pending Is the patent good everywhere? Each country has its own patent laws U.S. patents only effective in the U.S. What is done here may affect rights elsewhere and vice versa 7
Patent Cooperation Treaty Enable a US applicant to file an international application in a standardized format in English at the US Receiving Office (USPTO). PCT is a filing system, it does not grant a patent. Only inventions have protection under PCT - no design or trademark protection. Trade Secrets Trade secrets - based on contracts - may offer protection indefinitely Is it better to patent or keep a trade secret? Coca Cola; KFC 8
Trade Secrets Any information that derives economic value from not being generally known or ascertainable Can be formulas, patterns, compilations, programs, devices, methods, techniques or processes Protection stems from common law dating to the 1800 s All states have some sort of trade secret protection Most laws based on the Uniform Trade Secrets Act Useful USPTO Programs Assesses intellectual property knowledge Provides personalized training resources for small businesses and inventors www.uspto.gov/inventors/assessment 9
Inventors Resources Wide variety of resources to help the independent inventor FAQs, Online Chat Transcripts, events, and more www.uspto.gov/inventors Inventors Eye 10
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