SBIR/STTR Fall Conference Austin, Texas · SBIR/STTR Fall Conference Austin, Texas ... might affect foreign filing ... Pitfalls of patents! •A patent does not assure that the

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SBIR/STTR Fall Conference

Austin, Texas

Anthony Knight

Assoc. Comm. Innov. Devel.

November 13, 2014

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

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Congress shall have the power …

to regulate commerce with foreign

nations, and among the several states, and

with Indian tribes. U.S.

Const. art. I, § 8, cl. 3.

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.

Constitutional

Language

What is a Trademark?

• Any word, name, symbol or device (or any

combination thereof) used to identify and

distinguish goods and services and to

indicate their source (15 U.S.C. § 1127)

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Trademarks

Trademarks

typically protect brand names and logos used on goods and services

identify the source of the goods or services

registration (®) can last indefinitely as long as maintenance documents are filed and mark does not become generic

Term of Registration

10-year term with 10-year renewal terms

Patent Fundamentals

• U.S. system is quid

pro quo

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The inventor discloses the

invention to the government in

specific terms

The government grants exclusive

rights to the inventor

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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...

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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.

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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

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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.

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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.

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Allowance & Issue of Patents

• Term

• Utility, Design and Plant

• Maintenance of Patent

• Patent Marking & “Patent Pending”

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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

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Trade Secrets

• How is this different from Patents, Trademarks and Copyrights?

• What constitutes a trade secret?

• How can we determine a trade secret?

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Trade Secrets

• Trade secrets - based on contracts -

may offer protection indefinitely

• Is it better to patent or keep a trade

secret?

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Coca Cola; KFC

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

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Copyright

COPYRIGHT - Library of Congress

– Protects “original works of authorship” including literary, dramatic, musical, artistic and certain other intellectual works.

– Term - Author’s life + 70 years

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Useful USPTO Programs

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IP Awareness Tool

• Assesses intellectual property knowledge

• Provides personalized training resources for small businesses and inventors

• www.uspto.gov/inventors/assessment

Inventors Resources

• Wide variety of

resources to help the

independent inventor

• FAQs, Online Chat

Transcripts, events,

and more

• www.uspto.gov/invent

ors

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Inventors Eye

THE END