A Non-IP Lawyers Guide to Intellectual Property Fraser Clemens Martin & Miller LLC Patent, Trademark, Copyright & Intellectual Property Counsel Perrysburg,

A Non-IP Lawyer’s Guide to

Intellectual PropertyFraser Clemens Martin & Miller LLC

Patent, Trademark, Copyright

& Intellectual Property Counsel

Perrysburg, Ohio - Detroit, Michigan

© 2007 Fraser Clemens Martin & Miller, LLCAll rights reserved.

Rick MartinRick MartinDoug MillerDoug Miller

09/27/07

Intellectual property can be your client’s most valuable asset

Types of IP Assets - Patents Trademarks Copyrights Trade Secrets Licenses Other IP Agreements

Other IP Topics - Websites Infringement

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A Look at the IP

Forest . . .

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Patents

A patent covers an invention or an improvement to an invention

Invention must be “new, useful and unobvious” 35 U.S.C. § 101 (see handout)

A negative right - the right to exclude others from making, using, or selling the invention

The “claims” identify the invention covered by the patent

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Types of Patents (Utility)Utility Patent - covers a product or processCan also cover a method of doing business (Business Method Patent) or software algorithmsGood for 20 years from the date of filing“Prosecution” can take 1 to 3 years-or morePeriodic maintenance fees are required during life of the patent (3.5 years / 7.5 years / 11.5 years)

U.S. patent is good only in the U.S.Expiration = public domainCost to obtain (order of magnitude) - $4,000 - $10,000 Sample patent (see handout)

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Types of Patents (Provisional)

Much less expensive (perhaps $1,000-$1,500)

Not examined

Expires after one year

Primary benefit - filing date priority

Can use “Patent Applied For” or “Patent Pending”

Must file U.S. utility and foreign applications within 1 year, if at all

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Types of Patents (Design)

Covers the ornamental features of an object

Good for 14 years

No maintenance fees

Similar to a copyright in a 3-dimensional object or work

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Types of Patents (Plant)

Covers the discovery or invention of a distinct, new variety of plant asexually reproducedDiscovery of mutated/cross-bred plants,

not naturally occurring

20 years from date of applicationPeriodic maintenance fees are required during life of the patent (3.5 / 7.5 / 11.5 years)

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Foreign Patent Protection

Requires a patent in each country

Patent Cooperation Treaty - one application for 125+ countries

But grant fees required in each country

And annuity fees in each country

Can be very valuable - and very expensive

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Patent Searching“Prior art” searches www.uspto.gov (see handout)

Can help determine whether patentable subject matter existsSome public libraries have resourcesPatent Office WebsiteGoogle PatentsFirms can provide a search and opinion$500-$1,500 - depending on complexity

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Patent “Prosecution”

Application filed

Patent Office issues “Office Actions” (months to years later)

Negotiations regarding claims (narrowing)

Published at 18 months, with exceptions

Notice of Allowance and Issue Fee Due ($700-$900)

Can appeal an adverse decision

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Caveats

Public disclosure or offer to sell starts the filing clockOne year time limit from date of first disclosure/saleForeign countries require “absolute novelty”Any public disclosure may destroy “absolute novelty” -No foreign patentUse non-disclosure agreements

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CaveatsPatents can be expensive - To obtain, maintain, and defendBut patents can be extremely valuableClaims can be broadly- or very narrowly - drawnCan often be designed aroundPossible to obtain a patent that you can’t practiceStill - very powerful protection

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Trademarks

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“What do we call this thing?”

Selection of a trademark is a very important processA trademark clearance search should be conducted www.uspto.gov (see handout)

Searches federal, state, and common law uses of trademarksAnd trade namesAnd uses on the internet

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Trademarks - What are they?

Any word, name, symbol, device, or combination thereof Lanham Act: 15 U.S.C. § 1052 (see handout)

Used to identify your goods And distinguish them from the goods of othersTrademarks are source identifiersCan include sounds, smells, product design, or packaging

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Trademarks – Types

Fanciful (coined) XEROX copiers (Very Strong)

Arbitrary APPLE computers (Strong)

Suggestive TIDE detergent (Weaker)

Descriptive LOCK TITE locks (Weakest)

Generic words Aspirin, escalator (Not TM)

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Trademark RightsRights come from use - not registration

But registration is important Sample registration (see handout) Can use ®

Use ™ for unregistered, common law marks

First use of the mark = priority of rights

Duty to police the mark

“Use it or lose it”

Rights last forever - as long as the mark is used

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Trademark “Prosecution”

Clearance search should be conducted

Application filed – may be filed on-line

Filing basis - actual use

Filing Basis - “intent to use”Same prosecution as actual use, until

allowanceThen must file “Statement of Use”

Extensions can be obtained for 3 years

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Trademark “Prosecution”

Trademark Office issues “Office Actions” See handout

Negotiations with the Examining Attorney

Published for Opposition

Notice of Allowance - Certificate of Registration

Renewals - in perpetuity

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Prosecution

Oppositions can be encountered

Cancellations after registration

Incontestability status after 5 years

Costs - under $2,000 to registration

Renewals every 10 years - about $500 (single class)

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Copyrights

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Copyright Basics

Protects the “works” of “authors”

Protects the expression of the idea, not the idea itself

Copyright arises when the “work” is created

The authors of the work own the copyright

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Copyrights

Copyright consists of a bundle of rights: to copy or reproduce the work to distribute the work by sale to control “derivative works” to perform or display the work 17 U.S.C. § 106 (see handout)

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CopyrightsBasic term - Life of the author plus 70 years But duration can be a complex issue

“Work made for hire” (authorship) Statutory employees within scope of duties,or By third parties under narrow circumstances

Use written assignments with any non-employees (ownership)Fair use - a limited defense to copyright infringement Nature of the work Nature of the use Amount of copying Effect on author’s market

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Copyright Registration

VoluntaryInexpensive - $45Downloadable forms www.copyright.gov (see handout)

TX - literary works (see handout) SE - serials PA - performing arts VA - visual arts SR - sound recordings

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Trade Secrets

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Trade Secrets and Proprietary Information

Any valuable informationThat gives you a competitive advantageAnd that is maintained as secret A very important requirement Most “trade secrets” don’t qualify

If lost, lost foreverMisappropriation is theftState Law ORC 1333.61, et seq. (see handout) Uniform Trade Secrets Act (UTSA) (see handout)

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Licenses and

Other IP Agreements

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LicensesLicenses may be granted under: Patent

Only for the life of the patent Sample license (see handout)

Trademark Good will and quality control provisions required Sample license (see handout)

Copyright Must be in writing Copyright reversion after 35 years

Trade secret or any “technical know-how” May be perpetual

Royalties

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LicensesFranchise agreement includes: A trademark license, and A business plan and $$$ royalties

In Ohio called “business opportunities”Watch out for very specific regulatory requirements for franchises at both State and Federal levelViolations = rescission, civil, and criminal penalties

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Other Agreements

Non-disclosure agreements (NDAs) Use NDA’s liberally to protect your IP

Simple NDA (see handout) Complex NDA (see handout)

Employee secrecy agreementsNon-compete agreements / Non-contact provisionsTrade secret protection programsIndependent Contractor Agreement Sample ICA (see handout)

Assignments (see handout)

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Key IP Agreement Provisions

Disclaimers of warrantiesLimitations of liabilitiesIndemnification provisions IP infringement liability can be very substantial Product liability insurance Advertising injury insurance

Improvement ownership and right to useNon-exclusive, Sole, Exclusive

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Websites and IP

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Websites and Patents

Patentable FeaturesMethod of doing businessWebsite functionalitySoftware applications

Infringement of third-party patents

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Websites and Trademarks

A domain name can be a trademarkA domain name can infringe a trademark A prospective domain name should be searched for

trademark conflicts

Metatags, Framing, Deep Linking“Pay per click” advertisingACCPA Bad faith use and registration, and no legitimate claim

UDRP Similar standard to ACCPA

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Websites and Copyrights

Development Agreements (see handout) - Crucial Usual specs - deliverables, timelines, costs, etc. Reps/Warranties, Indemnification, Infringement, ND Ownership of copyright interests

Owner’s content Developer’s content - get license Joint content - content developed specifically for website Third-party content - get permissions

Firing the Developer Do you own your website?

DMCA

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Websites and Trade Secrets

Protectable subject matterClient and customer listsDatabases

Data Spills

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IP Infringement

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Patent InfringementDo the claims of the patent read on the accused device?

Remedies Injunctive reliefDamages (actual, treble, attorney’s fees)Reasonable royaltySeizure

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Trademark InfringementTest - will the use of the mark create a “likelihood of confusion” among consumers as to the source of the goods? Similarity of the marks Relatedness of the goods

Remedies Injunctive relief Damages (actual, treble, attorney’s fees) Reasonable royalty Seizure and destruction

Ohio Deceptive Trade Practices Act Ohio Revised Code Sec. 4165.01 et seq.

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Copyright InfringementTest -AccessSubstantial similarity

Remedies (only with federal registration) Injunctive reliefDamages (actual, treble, attorney’s fees)Statutory DamagesReasonable royaltySeizure and destruction

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ConclusionIntellectual property can be your client’s most valuable assetHelp your clients identify their IP assetsHelp your clients protect their IP assetsHelp your clients enforce their IP rights Help your clients avoid infringement scenarios

Questions?

Fraser Clemens Martin & Miller LLCPatent, Trademark, Copyright

& Intellectual Property Counsel

Perrysburg, Ohio - Detroit, Michigan

© 2007 Fraser Clemens Martin & Miller, LLCAll rights reserved.

Rick MartinDoug Miller

09/27/07

Handout Contents35 U.S.C. § 101 (Patent laws)Sample PatentPTO search page15 U.S.C. § 1052 (TM Lanham Act)Trademark search pageSample TM registrationSample TM Office Action17 U.S.C. § 106 (Copyright laws)Copyright websiteSample Copyright registration form (TX)ORC § 1333.61 (Trade Secret law)Uniform Trade Secrets Act

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Handout Contents, Cont.Patent License Agreement

Trademark License Agreement

Simple Non-Disclosure Agreement

Complex Non-Disclosure Agreement

Independent Contractor Agreement

Patent Assignment

Trademark Assignment

Copyright Assignment

Website Development Agreement