Introduction to Intellectual Property
October 20, 2015 Matthew DeSanto Assistant to Mindy Bickel, NYC Engagement Manager United States Patent and Trademark Office
Outline • Types of Intellectual Property • What is a Trademark? • Why get a Patent? • Design Patents vs Utility Patents • What is Patentable? • The Patent Process • Tools for Applicants
3 10/21/2015
Types of Intellectual Property
• Patents • Trademarks • Copyrights • Trade Secrets
5 10/21/2015
Can you find the IP in a smart phone?
Trademarks: • Made by “Apple” • Product “iPhone” • Software “Siri”, “Safari”, “iOS” (under license from Cisco)
Utility patents: • Semiconductor circuits • Chemical compounds • Battery/Power Control • Antenna • Electronic displays
Copyrights: • Software code • Instruction manual • Ringtone • … Trade secrets: • ??? Design patents: • Form of overall phone • Graphical user interface/computer icon
IP Awareness Assessment Tool
6 10/21/2015
What is a Copyright?
• Protects original works of authorship – e.g., presentations, company operating/instructional
manuals, whitepapers, computer software code, screen displays, and graphical user interfaces
– Does not protect company names • Copyright holder is granted exclusive right to copy
and distribute work and prepare derivative works • Only protects “expression” not functionality
– Does not protect facts, ideas, systems, or methods of operation
• Obtain rights once the work is “fixed”
• Any Word, Name, Symbol,
Device (or any combination thereof) used to identify and distinguish goods or services and to indicate their source
• Federal trademark registrations can be owned indefinitely if properly maintained
• Protects source identifiers
10/21/2015 8
What is a Trademark?
Key Purposes of Trademarks • Allow consumers to distinguish between
different products and services – helps their buying decisions
• Encourage trademark owners to provide goods and services of consistent quality and to build goodwill in the trademark
9 10/21/2015
What do Trademarks offer? • Brand recognition – distinguishing goods or
services from competitors in the marketplace • Public notice of ownership - exclusive right to use • Right to enforce nationally and bring legal action
in federal courts • Use of federal trademark registration symbol ® • Right to record mark with Customs • Serve as basis for foreign filing • Publication in U.S. trademark database
10/21/2015 10
Why use a Trade Secret?
Trade Secret Basics: – Protects commercially valuable proprietary information, e.g.,
formulas or business information that gives a competitive advantage
– Trade Secrets are not generally known and must be subject to reasonable efforts to preserve confidentiality
Common Ways to Lose a Trade Secret: – Failure to take adequate steps to prevent disclosure – Owner or owner-authorized disclosure – Reverse engineering – Independent development
11 10/21/2015
What is a Patent?
• A Property Right – Right to exclude others from making,
using, selling, offering for sale or importing the claimed invention
– Limited term – Territorial: protection only in territory that
granted patent; NO world-wide patent
12 10/21/2015
Why get a Patent?
• A patent can be: – Used to gain entry into, and deter
others from, a market – Used as a marketing tool to promote unique aspects
of a product – Assert/enforce rights against an infringer or
competitor – Used as collateral to obtain funding – Create revenue – sell or license like other property
13 10/21/2015
Design Patents v. Utility Patents
14 10/21/2015
Utility Patents (35 U.S.C. § 101) • Protects the way an article is used and works • Term = 20 years from filing
Design Patents (35 U.S.C. § 171) • Protects the way an article looks • No provisional application or maintenance fees • Term = 15 years from issue
Can obtain both a design and utility patent • If invention resides both in the article’s utility and
ornamental appearance
(1) Surface
ornamentation applied to an article
(2) Configuration or shape
embodied in an article
(3) Configuration/Shape
and Surface ornamentation for an article
Scope of Design Claim: Design Patents
15 10/21/2015
A design claim may be directed to an entire article or less than the entire article.
Design Patents
16 10/21/2015
What is patentable?
NEW, USEFUL, NONOBVIOUS,
ENABLED & CLEARLY
DESCRIBED
Process
Machine
Method of
making
Manufacture
17 10/21/2015
Improvements thereof
Patent Scope
Invention
Too General 18 10/21/2015
Not valuable
Not patentable
Too Specific
More on Utility Patent Claims
• Must commence on a separate sheet • Must particularly point out and distinctly claim the subject
matter which applicant regards as their invention or discovery • Every claim needs a preamble and a transition:
– i.e. “A headgear apparatus, comprising:…”
• Must conform to the invention as set forth in the specification – terms and phrases used in the claims must find clear support or antecedent basis in the written description
• The claims shall be numbered consecutively and the original numbering of the claims must be preserved throughout prosecution
10/21/2015 19
Patent Process Overview
10/21/2015 20
Patent Law is complex • Each stage of the patent
process involves decisions that must be made by the applicant.
• Many pro se applicants don’t know there are multiple steps in the process or how to complete them.
Patent Examination
• Patent Examiner reviews contents of the application for compliance with all U.S. patent legal requirements
• Burden is on the examiner: An applicant is entitled to a patent unless… – Requirements of U.S. patent law are not met
21 10/21/2015
What does a Patent Examiner do?
• Reads and understands invention • Determines whether the application is
adequate to define the metes and bounds of the claimed invention
• Determines the scope of the claims • Searches existing technology for claimed
invention • Determines patentability of claimed
invention • Writes opinion – called an Office action that
notifies applicant of the examiner’s patentability determination
22 10/21/2015
Allowance
First Examination First Examination
Notice of
Allowance
Second Examination
Amendment
Second Examination
Appeal Process Appeal Brief
Appeal Process
Rejection
The Examination Process
23 10/21/2015
Please note that a negative opinion by the examiner may be correct. In those instances, a patent will not be granted.
When should you file?
United States is a First Inventor to File System! • Looking for international protection?
– You must file before public disclosure
• Only want US protection? – You can file within one year after public
disclosure
24 10/21/2015
Provisional vs. Non-provisional
Common Misunderstandings
Pro se applicants: • Are not always aware of what
protection a patent gives them • Are not always aware of what the
difference between a provisional and a non-provisional application is
• Often lack the necessary knowledge to draft their own patent applications (format, forms, fees, prior art, search, etc.)
Common Misunderstandings Pro se applicants: • Are unfamiliar with prior art and the
terminology used in Office Actions • Frequently fail to respond in writing in a
timely manner or with the necessary fees • Frequently fail to ask for help!
Helpful Hint: Have an Interview
Interview • Pro Se
– In person, over the phone, or via WebEx • Attorney/Agent
– In person, over the phone, or via WebEx – Inventor cannot have an interview without
their attorney or agent present
Resources -USPTO on the Web www.USPTO.gov
29 10/21/2015
Overview of Website
30 10/21/2015
Features of the Website
• Apply Online for a Patent using EFS-Web • Obtain Status of a Patent Application • Determine when application will be picked up for examination,
see First Office Action Estimator • Search US Patent Database • Search Patent Classification Manual • Download Forms and Fee Schedules • Patent Help Resources • Access Details of All Currently Pending Published Patent
Applications (Public PAIR) • IP Awareness Assessment Tool • Information about Pro Se and Pro Bono programs • Link to StopFakes.gov site
31 10/21/2015
Inventor & Entrepreneurs Resources
32 10/21/2015
• Wide variety of resources to help the Independent Inventors and Entrepreneurs
• Pro se, Pro bono, Education & Information, Current Events, State Resources and more
• http://www.uspto.gov/learning-and-resources/inventors-entrepreneurs-resources
Pro Bono (Free Legal Representation)
33 10/21/2015
In general, there are three basic requirements: • Income below a certain
threshold; • Knowledge of the patent
system; and • Possession of an actual
invention (not just an idea).
More information can be found at: • http://www.uspto.gov/patents-
getting-started/using-legal-services/pro-bono
Pro Se Assistance Program
• The Pro Se Assistance Program offers various services for the public, including: – Dedicated personnel for assisting pro se applicants – Walk-in assistance for the general public at USPTO
Headquarters – Targeted support to connect applicants with relevant
resources and information – Online resources
34
http://www.uspto.gov/patents-getting-started/using-legal-services/pro-se-assistance-program
10/21/2015
STOPfakes.gov
35 10/21/2015
• One-stop shop for U.S. government tools and resources (from multiple agencies) on intellectual property rights (IPR)
• Provides information and assistance on IPR protection including: – IPR protection in the
U.S. – IPR protection abroad – How to report
counterfeit and falsely labeled goods
Assess Costs Everywhere (ACE)
10/21/2015 36 http://acetool.commerce.gov/
Patent Litigation Information and Resources
37 10/21/2015
http://www.uspto.gov/patents-maintaining-patent/patent-litigation/patent-litigation
• Process designed for issues that arise during patent application prosecution; used to get an application “back on track”
• More information can be found at: http://www.uspto.gov/patent/ombudsman-program
“This program brings a voice to the inventor that he normally would not have…THANK YOU!!!!!”
Contacts for Direct Help • Pro Se Assistance Program
1-866-767-3848 [email protected]
• Inventors Assistance Center (IAC)
571-272-1000 or 1-800-786-9199 Monday – Friday, 8:30 AM – 8:00 PM (ET)
• Patent Ombudsman 571-272-5555 [email protected]
40 10/21/2015
Overview of Intellectual Property What’s Protected? Examples Protection Lasts
for:
Utility Patent
Inventions iPod, chemical fertilizer, process of manipulating genetic traits in mice
20 years from the date of filing regular patent application
Design Patent
Ornamental (non functional) designs
Unique shape of electric guitar, design for a lamp
15 years from issue
Copyright Books, photos, music, fine art, graphic images, videos, films, architecture, computer programs
Michael Jackson’s Thriller (music, artwork and video), Windows operating system
The life of the author plus 70 years (or for some works, 95 years from first publication)
Trade Secret
Formulas, methods, devices or compilations of information which is confidential and gives a business an advantage
Coca-Cola formula, survey methods used by a pollster, new invention for which patent application has not been filed
As long as information remains confidential and functions as a trade secret
Trademark Words, symbols, logos, designs, or slogans that identify and distinguish products or services
Coca-Cola name and distinctive logo, Pillsbury doughboy character
As long as business continuously uses trademark in connection with goods or services
Thank You! Matthew DeSanto Assistant to the NYC Engagement Manager United States Patent and Trademark Office [email protected] www.uspto.gov/cornell
10/21/2015 42