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 independentinventor@uspto.gov

• 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 OmbudsmanProgram@uspto.gov

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 NYOutreach@uspto.gov www.uspto.gov/cornell

10/21/2015 42