Invention 2 Venture: Chris Rothe

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INTELLECTUAL PROPERTY

October 24, 2009

Christopher A. Rothe RatnerPrestia, PC

Information contained in this slide show, and any statements made by the presenter during presentation of this slide show, are provided solely for educational purposes for the NCIIA Invention to Venture Workshop, and do not constitute legal advice. Individuals seeking legal advice about intellectual property should consult with competent legal counsel and explain their specific circumstances. Laws are subject to change. © 2009 RatnerPrestia

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Intellectual Property = “creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce.” - WIPO

•  But what makes it property?

What is Intellectual Property?

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Legal Categories of IP in US:

  Copyrights   Trademarks   Trade Secrets   Patents

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Copyrights

  Protect works that are: Original; Creative; and Fixed in a tangible medium of expression

  Purpose: protects the expression of an idea, not the idea itself Examples: Paintings, photographs,

sound recordings, source code

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Copyrights   What you get:

Exclusive rights to (and authorize others to) – Reproduce the work – Prepare a derivative work – Distribute copies – Publicly perform or display the work

  Fair use exception

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Copyrights

Copyright term (first published in US):

70 years after the death of author.

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Trademarks   A trademark is a word, phrase, symbol or

design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.

Examples:

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Trademarks   A service mark is the same as a

trademark, except that it identifies and distinguishes the source of a service rather than a product. Examples:

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Trademarks   Trade dress is any other feature seen in

the presentation of a product or service – Product configuration – Product packaging

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Trademarks

  What you get: a right to exclude others from using a mark in a manner that creates a likelihood of confusion as to source

  Purpose: to protect consumers from confusion or deception when purchasing

  Term: Indefinite but must renew every 10 years

  Use it or lose it

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Patents

  A “deal” with the government:

– A patent grants an inventor the right to exclude others from making, using, offering for sale, or selling the invention in the U.S. or importing the invention into the U.S. - for a limited patent term

–  In exchange, the government publishes your invention & public gets to see it

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Types of U.S. Patents Utility patents   Protect processes, machines, articles of

manufacture, compositions of matter, etc.   Term: 20 years from date of filing Design patents   Protect new, original, and ornamental designs for

articles of manufacture   Term:14 years from date of filing Plant patents   Protect distinct and new varieties of asexually-

reproduced plants   Term: 20 years from date of filing

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Requirements for Utility Patent

Must be:

  Novel over prior art   “Non-obvious” over prior art   Useful

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Hypothetical

  US Patent issued to Smith   Title: A Seating Apparatus

Claim: A seating apparatus comprising four legs and a seat.

Smith

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Hypothetical

  US Patent Appln. filed by Jones   Title: Improved Seating Apparatus

Claim: A seating apparatus comprising four legs, a seat and a back rest.

Jones

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Hypothetical

Assume:   Only prior art to Jones:

Smith patent This boulder

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Hypothetical

1) Is the Jones chair patentable?

Useful?

Novel?

Non-obvious?

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Hypothetical

2) If Jones gets a US patent, is he free to make, use and sell his chair?

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Hypothetical

2) If Jones gets a US patent, is he free to make, use and sell his chair?

NO ! Patent provides right to exclude, not to practice

The Jones chair would infringe the claim in Smith’s patent

Smith = dominant patent

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Hypothetical

3) Can Smith make and sell the Jones chair in view of Smith’s dominant patent?

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Hypothetical

3) Can Smith make and sell the Jones chair in view of Smith’s dominant patent?

NO !

Smith would be infringing the Jones patent.

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Patent Novelty & Time Bars

  One year grace period in U.S. to file patent application after commercial disclosure:

• Sale or Offer for sale • Public use (“experimental use” exception)

  After that, you are barred from obtaining a patent in the U.S.

  Most other countries: no grace period

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Territorial Protection

  U.S. patents - enforceable only in U.S.   Filing options outside U.S.:

– File in individuals countries; OR

– Patent Cooperation Treaty (PCT)

• one procedure allowing party to apply for patents in multiple countries that are members of the PCT

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Trade Secrets

  Trade Secret - information, including a formula, pattern, compilation, program, device, method, technique, or process that: –  provides value because it is not known to others who

could benefit from it; AND –  safeguarded by the owner in a way that can reasonably

be expected to prevent others from learning about it

  No term limit, so long as the info remains “secret”

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Patents vs. Trade Secrets

  Conditions favoring patents: –  the technology is easily discoverable or reverse

engineered –  licensing revenues

  Conditions favoring trade secrets: – Life cycle is short (e.g. technology is obsolete

in <3 years) – Proving infringement would be difficult – Technology can be easily “designed around”

once it is known

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What to Do If You Have “Something”

1. Articulate your invention –  New Apparatus / System? –  New Process / Method? –  All of the above? –  What exactly is novel? –  Explain the invention in one sentence.

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What to Do If You Have “Something”

2. Is a patent a good idea? –  Would a trade secret be better? –  Who would infringe the patent? –  How would you know about infringement? –  Is the prior art “crowded”?

•  USPTO search

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What to Do If You Have “Something”

3. Get the record straight –  Keep dated information, preferably in a

permanently bound notebook –  Document all contributors, and what they

contributed –  If you disclosed it, record disclosure date –  Complete an “invention disclosure form”

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What to Do If You Have “Something”

4. Control your Disclosure –  Try to get an NDA –  Limit disclosure to general summaries

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What to Do If You Have “Something”

5. File a patent application before you disclose the invention

Option: “provisional application”

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Provisional Applications   Purpose: Gets you a U.S. filing date (f/d)

  Does not get you a patent

  Must file a “full-blown” patent application to obtain a patent

  Full blown application can claim the provisional’s f/d if it is filed within 1 year of the provisional “full-blown” = U.S. non-provisional or PCT

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Provisional Applications Benefits:   inexpensive   buys 1 year of time after f/d to determine

commercial interest & refine invention   “patent pending” status But note:   Must be detailed and descriptive

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For More Information…

  For general IP questions: www.uspto.gov

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QUESTIONS ?