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Presenter

Jeffrey Siew

United States Patent and Trademark Office

Fundamentals of Intellectual Property

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Objectives

This module presents the fundamentals of intellectual property, including the following topics:

(1) Definition of Different Types of Intellectual Property (IP)

(2) Strategic Application of IP

(3) Rights reserved to the rightful IP owner

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Patented Products

Inventor: Timothy Miller Steven Jobs Alexander Graham Bell

Invention: Ergonomically condensed Touch screen device, Improvement in telegraphy QWERTY keyboard method and graphical

user interface for determining commands by applying heuristics

Patent number: 5,660,488 7,479,949 174,465

Application filed: 9/23/94 4/11/08 2/14/1876

Patent granted: 8/26/97 1/20/09 3/7/1876

Can you identify a patented product on this desk?

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Intellectual Property Identified

LCD monitor

Computer mouse

LCD stand

Binder clip

PC speaker

Ergonomic keyboard

Phone

Printer

Staple remover

iPhone

Computer mouse pad

Keyboard support

2 hole punch

Stapler

Post-it Notes

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Types of Property

Real property

Personal property

Intellectual property

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What is Intellectual Property

4 types of intellectual property:

(1)Copyright

(2)Trademark

(3)Trade Secrets

(4)Patent

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Copyright

Definition: A form of protection provided to the authors of “original works of authorship”

Protects: Literary, dramatic, musical, artistic, and certain other intellectual works

Duration: In general, author’s life + 70 years

For more information on copyright, visit the U.S. Copyright Office website at http://www.copyright.gov

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Trademark

Definition: Any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods or services

Protects: All of the above & logo, banner, sound, smell, etc.

Duration: 10-year terms with 10-year renewal terms

Trademark Registration #: GE: 3386370, Kellogg’s : 3445274, LG: 3250589, FedEx: 3413407, Starbucks: 3428128, IBM: 3002164

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Trade Secrets

Definition: Any information that provides economic value that is not in the public domain and that has been reasonably kept secret

Protects: Formulas, patterns, compilations, programs, devices, methods, techniques or processes

Duration: As long as they remain secret

Trademark Registration #: Coca Cola: 3252896, KFC: 2800403

What is a Patent?

• A grant by the U.S. Government conferring to an inventor the right to exclude others from the: • manufacture• sale or offering for sale• use• or importation of

her/his invention

in/into the U.S. Letters Letters PatentPatent

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Patent Fundamentals

U.S. patent system is a quid pro quo

The inventor discloses the invention to the public in specific terms

The government grants exclusive rights to the inventor

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Types of Patents

UtilityNew and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof

DesignAny new, original and ornamental design

PlantWhoever invents or discovers and asexually produces any distinct and new variety of plant

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Design Patent Applications

• Design patents protect the way an object appears, ornamental features of invention

• No provisional application• 15 year term, from issue• No maintenance fees

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Designs

(1)

Surface ornamentation applied to an article

(2)

Configuration embodied in an article

(3)

Configuration and Surface

ornamentation for an article

Design may consist in configuration or ornamentation or both.Design may consist in configuration or ornamentation or both. In re Schnell, 8 USPQ 19 (CCPA 1931)

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Design vs. Utility

• A design patent protects the way an article looks;

• A utility patent protects the way an article is used or works

• Both design and utility patents may be obtained for the same article.

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• Creation of Assets (To Sell or License, Collateral for Financing)

• Building Block for Future Inventions

• Source of Historical Information

• Contribution to Society

Filing for a Patent – Why bother?Filing for a Patent – Why bother?

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Who Enforces Patents?

Infringement: Violation of any of the patent rights – unauthorized use, sale, offer for sale, or importation into the U.S. of the invention

Enforcement: Private right enforced by Patent Owner, not the government. U.S. Patent enforceable only in U.S.

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Overlapping IP Protection

• These IP rights are often confused. – There are some similarities, but these IP rights are

different and serve different purposes.

• But they need not be mutually exclusive. – For any one product, more than one form of IP protection

may apply, as long as it meets the requirements of the laws that govern that form of protection.

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Overlapping IP Protection

For a CLASSIC example of overlapping IP protection….

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Overlapping IP Protection:The Coca-Cola Contour Bottle

In 1915, the Root Glass Company won a Coca-Cola Company contest for a bottle design that would be recognizable to everyone, even by touch in the dark.

The first design patent on the “hobble skirt” contour bottle was granted on Dec. 25, 1923, to the bottle manufacturer (known as “the Christmas bottles”).

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Overlapping IP Protection:The Coca-Cola Contour Bottle

The second design patent for the contour bottle was granted to the Coca-Cola Company on August 3, 1937, preventing imitation of the bottle for another 14 years.

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Overlapping IP Protection:The Coca-Cola Contour Bottle

• The bottle shape became so well known that it became synonymous with the Coca-Cola product.

• The Coca-Cola Company sought and obtained a federal trademark registration for its contour bottle shape on April 12, 1960, enabling the company to safeguard the bottle design indefinitely.

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Overlapping IP Protection:The Coca-Cola Contour Bottle

•Trademark: COCA-COLA, COKE, shape of bottle

•Copyright: Advertising and Promotion

•Trade Secret: The formula (SHHH! It’s a secret!)

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Utility Patent Applications

Provisional:

• One year period

• Filed for filing date priority

• No claims required

• Not examined, so no patent

• Not allowed for design

Non-Provisional:

• 20-year patent protection from filing date

• Examined for patentability

• Claims required

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#1 Problem – Territoriality

• Failure to understand that almost all countries of the world require trademark registration to have effective trademark protection AND failure to understand that a patent is required in any country where a company wants to enforce its patent rights.

– Use of a trademark on goods or services without registration does not provide effective trademark protection, except in a handful of countries (like the U.S.).

– The concept of “prior art” may not protect a patent holder against issuance of an infringing patent; the patent holder must have a patent in that country to enforce against infringers.

Protection Outside the U.S.

Using a U.S. patent application for priority elsewhere:

Paris Convention:

Filing individual patent applications in the US and each other country where protection is desired, based upon Paris Convention priority (Must file all applications within 12-months of filing the U.S. patent application)

Instead of, or in addition to claiming priority, may file under the:

Patent Cooperation Treaty:

Filing a single application designating all the countries which are part of the treaty

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Who is entitled to a patent?

Throughout the world

The first (inventor) to file a complete application is entitled to a patent, provided the invention was not copied from another

In some countriesGrace Period

Overview of Website

Click on

“Inventors”

Helpful links for independent inventors - General Information - Introductory Guides - FAQs - Upcoming Events - Registered Attorneys & Complaints Against - Inventors Assistance Center - and much more…

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Inventor Resources

• Wide variety of resources to help the independent inventor

• FAQs, Online Chat Transcripts, events, and more

• www.uspto.gov/inventors

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Inventors Eye

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Contacts For Direct Help

• Inventor Assistance Center (IAC) for general questions about the application process• Telephone: (571) 272-1000 or (800) 786-9199,

8:30 a.m. - 5:00 p.m., eastern time M-F

• Office of Innovation Development: • (571) 272-8877• independentinventor@uspto.gov

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Ideas for Your Ideas

Collegiate Inventors Competitionhttp://www.invent.org/collegiate/

National Collegiate Inventors and Innovators Alliancehttp://nciia.org/competitions

The Lemelson-MIT Awards for Invention and Innovationhttp://web.mit.edu/invent/a-main.html

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Questions

Jeffrey SiewJeffrey.Siew@uspto.gov

USPTO Website: www.uspto.gov