Intellectual Property Introduction
What is Intellectual Property?
Intellectual Property Introduction
An overview of the various types of intellectual property and how to protect them.
Bryan S. Redding, Esq.
317.426.1316
What is Intellectual Property??
My Definition:
The intangible property that results from creations of the mind; for which property rights are recognized.
USPTO definition:
It is imagination made real. It is the ownership of a dream, an idea, an improvement, an emotion that we can touch, see, hear, and feel. It is an asset just like your home, your car, or your bank account.
Kinds of IP
· Patents
· Trademarks
· Copyrights
· Trade Secrets
PATENTS
Interesting Patent Facts:
First Patent issued on July 31, 1790 to Samuel Hopkins for an improvement "in the making of Pot ash and Pearl ash by a new Apparatus and Process.”
This patent was signed by then President George Washington.
The first 10,280 patents issued between 1790 and 1836 were destroyed by a fire; fewer than 3,000 of those have been recovered and re-issued with numbers that include an "X". The X distinguishes the patents from those issued after the fire, which began again with patent number 1.
What is a Patent?
“A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office.”
Types of Patents
· Utility –for anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
· Design – for anyone who invents a new, original, and ornamental design for an article of manufacture [i.e. BIC
lighter];
· Plant – for anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
What can be patented?
In the language of the statute, any person who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent," subject to the conditions and requirements of the law. "process" is defined by law as a process, act or method, and primarily includes industrial or technical processes. "machine" used in the statute needs no explanation. "manufacture" refers to articles that are made, and includes all manufactured articles. "composition of matter" relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds.
These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.
What can’t be patented?
Can’t patent your atomic weapon.
The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.
42 U.S.C. 2181 (a).
What also can’t be patented
· Something not "useful;"
· Laws of nature;
· Physical phenomena;
· Abstract ideas;
· Mere idea or suggestion.
Conditions for Patenting
Must be “New” but also not out of the bag
Cannot get a patent if: the invention has been described in a printed publication anywhere in the world, or if it was known or used by others in this country before the date that the applicant made his/her invention; the invention has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year before the date on which an application for patent is filed in this country (immaterial when the invention was made, or whether the printed publication or public use was by the inventor himself/herself or by someone else); the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he/she must apply for a patent before one year has gone by, otherwise any right to a patent will be lost. However, to preserve most patent rights in foreign countries, the inventor must file on the date of public use or disclosure.
Also can’t be “obvious”
The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable.
Provisional Patent Application
· Buying you some time (12 months)
· Never actually examined by the USPTO
· Does need adequate disclosure
· If decide to file utility app, you merely reference the provisional and get the benefit of its earlier filing date
· Also, get the benefit of a patent term calculated from the later filing date, so you get more patent term.
Patent Marking
· Do it right.
· Marking or asserting that your product is “patented” “patent ######” “patent pending” “patent applied for” or anything in this nature, when it is not, is subject to penalties.
· This is known as “improper marking.”
Improper Marking
35 U.S.C. 292
(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person within the United States, or imported by the person into the United States, the name or any imitation of the name of the patentee, the patent number, or the words "patent," "patentee," or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made, offered for sale, sold, or imported into the United States by or with the consent of the patentee; or Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word "patent" or any word or number importing the same is patented, for the purpose of deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising in connection with any article the words "patent applied for," "patent pending," or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public - Shall be fined not more than $500 for every such offense.
(b) Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.
What should you do re Marking??
1. maintain a record of the your marked products, and
2. develop business policies to comply with the false marking statute, such as implementing procedures to ensure that products are properly marked, and that patent numbers and “patent pending” designations are removed when no longer applicable.
TRADEMARKS
A trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller's products and distinguish them from the products of another.
15 U.S.C. 1127.
What do they do?
Make it easier for consumers to quickly identify the source of a given good.
Instead of reading the fine print on a can of cola, consumers can look for the Coca-Cola trademark. Instead of asking a store clerk who made a certain athletic shoe, consumers can look for particular identifying symbols, such as a swoosh or a unique pattern of stripes.
By making goods easier to identify, trademarks also give manufacturers an incentive to invest in the quality of their goods. After all, if a consumer tries a can of Coca-Cola and finds the quality lacking, it will be easy for the consumer to avoid Coca-Cola in the future and instead buy another brand.
Trademark law furthers these goals by regulating the proper use of trademarks.
How do I get a Trademark?
· Common law trademark rights arise from actual use of a mark.
· At that time, you can use the "TM" or "SM" (for trademark and service mark, respectively) notation.
· These designations indicate that you are claiming rights in the mark and are often used before a federal registration is issued.
Federal Registration Option
Advantages:
· Constructive notice nationwide;
· Evidence of ownership;
· Federal Courts;
· Basis for foreign TM registration;
· Prevent importation of infringing foreign goods.
Prerequisites of Mark
· In order to serve as a trademark, a mark must be distinctive -- that is, it must be capable of identifying the source of a particular good.
· Courts group into four categories: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic.
· Legal protection afforded will depend upon which category it falls within. Those categories being Arbitrary or fanciful; Suggestive; Descriptive; and Generic.
Ways to Acquire Rights
Assuming that a trademark qualifies for protection, rights to a trademark can be acquired in one of two ways:
1. by being the first to use the mark in commerce; or
2. by being the first to register the mark with the USPTO.
15 U.S.C. 1127(a).
Note: descriptive marks do need secondary meaning.
Basis for Rejection of Marks
15 U.S.C. 1052
1. the proposed mark consists of or comprises immoral, deceptive, or scandalous matter;
2. the proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
3. the proposed mark consists of or comprises the flag or coat of arms, or other insignia of the United States, or of any State or municipality, or of any foreign nation;
4. the proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual's written consent; or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow;
5. the proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use of the mark on applicant's goods or services are likely to cause confusion, mistake, or deception;
6. the proposed mark is merely descriptive or deceptively misdescriptive of applicant's goods or services;
7. the proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant's goods or services;
8. the proposed mark is primarily merely a surname; and
9. matter that, as a whole, is functional.
Trademark Records (what to note/keep)
· Records of all use of new or modified marks.
· Be sure to note the date of use.
· Save electronically for ease.
· Maintain and back-up records, even if don’t
file for registration.
COPYRIGHTS
Copyrightable works include the following categories:
· literary works
· musical works, including any accompanying words
· dramatic works, including any accompanying music
· pantomimes and choreographic works
· pictorial, graphic, and sculptural works
· motion pictures and other audiovisual works
· sound recordings
· architectural works
How do I get a Copyright?
It is secured automatically when the work is created, and a work is "created" when it is fixed in a tangible form.
If a work is prepared over a period of time, the part of the work that is fixed on a particular date constitutes the created work as of that date.
Federal Registration Option
· provides a legal record of copyright ownership
· additional legal benefits in cases of infringement.
· available to both published and unpublished
works.
How long will my Copyright last?
Generally, life of the author/creator, plus 70 years
Records of Interest?
· Any tangible expression of the work
· Back-up and ensure secure
· Keep as long as copyright protection in place
TRADE SECRETS
· Information that companies keep secret to give them an advantage. (formula for Coca-Cola; recipe for KFC)
· Not protected by intellectual property law the same way that patents, trademarks or copyrights are.
· Protection for trade secrets is done by non-disclosure, the information must be kept confidential.
Advantages / Disadvantages
· Can extend indefinitely
· No guarantee as to length
· Subject to reverse engineering
Generic Definition
· not generally known to the public;
· confers some sort of economic benefit on its holder (where this benefit must derive specifically from its not being generally known, not just from the value of the information itself);
· is the subject of reasonable efforts to maintain its secrecy.
Indiana’s Uniform Trade Secret Definition
· information, including a formula, pattern, compilation,
program, device, method, technique, or process, that:
(1) derives independent economic value, actual or
potential, from not being generally known to, and not being
readily ascertainable by proper means by, other persons
who can obtain economic value from its disclosure or use;
and
(2) is the subject of efforts that are reasonable under the
circumstances to maintain its secrecy.
IC 24-2-3-1 (2010).
The Federal Definition
18 U.S.C. 1839
(1) information;
(2) reasonable measures taken to protect the information; and
(3) which derives independent economic value from not being publicly known.
Records of Interest
· whatever contains the trade secret;
· records re: measures taken to maintain the secrecy;
· documentation of the agreements and other things executed in order to secure the secrecy - NDAs, etc.;
· Evaluate annually, change as necessary.
Questions?
Bryan S. Redding, Esq.
317.426.1316