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Business Law & Order - October 15, 2012
 

Business Law & Order - October 15, 2012

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SPARK proudly presents another installment of intellectual property (IP) law for entrepreneurs and business leaders via its Business Law & Order series. In this session, we have assembled an All-Star ...

SPARK proudly presents another installment of intellectual property (IP) law for entrepreneurs and business leaders via its Business Law & Order series. In this session, we have assembled an All-Star line-up of IP experts to discuss the basics of intellectual property, registration, enforcing and maintenance so that you can protect and grow your business’s portfolio of intellectual property assets. The PowerPoint from this event is attached.

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    Business Law & Order - October 15, 2012 Business Law & Order - October 15, 2012 Presentation Transcript

    • Business Law & OrderIntellectual Property I: Understanding the Basics October 15, 2012 © Ann Arbor SPARK
    • Intellectual Property: Understanding the Basics Jeremy D. Bisdorf, Esq. Jaffe Raitt Heuer & Weiss, P.C. 201 S. Main Street, Suite 300 Ann Arbor, MI 48104 www.jaffelaw.com2
    • PATENT ASPECTS OF INVENTIONDEVELOPMENT & COMMERCIALIZATION Ann Arbor SPARK 10/15/2012 William G. Abbatt, Shareholder Copyright © 2010 Brooks Kushman P.C.
    • Today’s Goals • Patent sensitivity training – IP issue-spotting for the inventor • How patents might touch you & your practice • Not to make you into a patent attorney ! • Discuss commercial exploitation of your – innovation – professional reputation & – creativity 4 Copyright © 2010 Brooks Kushman P.C.
    • You Can Be a "Legend" (If You Want To Be . . .) ! • Conceive an invention – Define & – Protect it • Recognize it for what it is - a potentially valuable IP • Dont give it away ! – Avoid untimely unprotected disclosure • Get professional help early on 5 Copyright © 2010 Brooks Kushman P.C.
    • Today’s Topics • Idea conception to patent issuance - "patent pending“ • Subject matter - what can be patented? • Patent (novelty) searching • Types & content of patent applications • How do I get a patent? – patent prosecution procedure: costs & timing • Issuance to enforcement - what can I do with it? • Selecting & dealing with patent counsel 6 Copyright © 2010 Brooks Kushman P.C.
    • Intellectual Property ("IP") Issues &Opportunities • IP = patents, trade secrets, trademarks & copyrights . . . – We focus today on patents • Question time . . . – After our session, or – Privately at your convenience 7 Copyright © 2010 Brooks Kushman P.C.
    • Handouts • Brooks Kushman’s IP Primer • Info about – BK – Patents 8 Copyright © 2010 Brooks Kushman P.C.
    • Raise Your Hand If You Have . . . • Ever invented anything ? • Been named in – A patent application ? – An issued patent ? . . . or • Would like to be . . .! • Been involved in research ? 9 Copyright © 2010 Brooks Kushman P.C.
    • Can the Patents of Others Block YourActivity? (“Freedom to Practice”) • Yes - if your use – infringes anothers valid patent & – is unauthorized by the patent holder • Ignorance may be blissful – but is not an excuse . . . • USPTO issues about 4500 utility patents per week – there are now over 8 million U.S. patents • Heads-up . . . be aware . . . . ! 10 Copyright © 2010 Brooks Kushman P.C.
    • What Can Be Patented - Patentable SubjectMatter - Examples • Medical devices – A catheter • Process – A method for using a catheter • Chemical composition – A drug • Useful improvements – You name them! 11 Copyright © 2010 Brooks Kushman P.C.
    • What Does A Patent Look Like ? 12 Copyright © 2010 Brooks Kushman P.C.
    • Judging A Book By Its Cover . . . • US Patent 7,641,682 • Issued January 5, 2010 • Scope - defined by its claims • Owner • Inventors – One inventor is named in over 30 US patents • Why so many, one wonders . . . .? 13 Copyright © 2010 Brooks Kushman P.C.
    • Why Seek A Patent? • Recognition • Reward - $$$ • Acquire rights to – Exclude others – Sell the patent outright – Grant a license in return for monies (royalties) paid to you – Settle a dispute: a bargaining chip 14 Copyright © 2010 Brooks Kushman P.C.
    • Policy Behind Patents – US Const. Art I, Sec. 8 – “. . . promote the progress of science – . . . by securing for limited times – . . . to inventors – . . . the exclusive right – . . . to their discoveries . . . “ • The bargain – You disclose your invention to Uncle Sam . . . – Uncle Sam grants you a period of exclusivity 15 Copyright © 2010 Brooks Kushman P.C.
    • Main Types Of Utility Patent Applications • Provisional • Non provisional – Original – Continuation – Continuation-in-Part • Secret until published 18 months after filing – Can withdraw from publication – But no foreign protection 16 Copyright © 2010 Brooks Kushman P.C.
    • Prior Art • If an invention is described in the “prior art”, no valid patent may issue • Prior art is all info available to the public in any form before a given date that might be relevant to a patent’s claims of originality • Consider your own prior art – Beware of premature disclosure • Speeches, published papers, sale, use, etc • Dont shoot yourself in the foot ! 17 Copyright © 2010 Brooks Kushman P.C.
    • Nuts & Bolts - How Do I Get A Patent - What Can IDo Then? • Let’s break it up into two periods . . – Idea (invention) conception to patent issuance – Issuance to enforcement 18 Copyright © 2010 Brooks Kushman P.C.
    • Conception To Issuance • Birth of the invention – Conception – “[T]he formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is to be applied in practice . . ." – "[C]onception is established when the invention is made sufficiently clear to enable one skilled in the art to reduce it to practice without extensive experimentation or inventive skill. . ." • Disclosure of the invention is evidence of conception: what & when – To others - in confidence ! – To patent counsel 19 Copyright © 2010 Brooks Kushman P.C.
    • Patent Searches • Types – Novelty: is my invention new (define your niche)? – Infringement: is my patent infringed by someone else? – Freedom to practice: can I make, use or sell without infringing the patents of others? • Why search? – Know the mines in the minefield! – Formulate design-around strategies if needed – Prepare for meetings with investors • Timing – ideally, not just once – periodically watch • Cost 20 Copyright © 2010 Brooks Kushman P.C.
    • Anatomy of a Patent Application • Prior art & unsolved problems • Summary of Invention & how it solves them • Drawings • Claims – Avg claims per patent = 15 - 20 • Costs – Attorney (scrivener) – Patent draftsman (drawings) – U.S.P.T.O (filing, issue & maintenance) 21 Copyright © 2010 Brooks Kushman P.C.
    • When To File The Patent Application – The new America Invents Act • Be the first inventor to file • Contrast: the first to invent gets the valid patent – The 1 year US grace period • Absolute novelty requirement elsewhere 22 Copyright © 2010 Brooks Kushman P.C.
    • Duty Of Candor • “Each individual associated with [filing & prosecuting a patent application] has a duty of candor and good faith in dealing with the USPTO . . . to disclose . . . all information known to that individual to be material to patentability“ • Inequitable conduct arises if the information was material to patentability & withheld with an intent to deceive the USPTO • Examples – Prior use, sale, disclosure, derivation (copying), known prior art (omitted or mischaracterized) • Adverse consequences: patent is unenforceable • Practice tip: be up-front with patent counsel & USPTO! 23 Copyright © 2010 Brooks Kushman P.C.
    • PTO Examination Of The Application • The Examiner considers compliance with these requirements • Written description • Enablement • Best mode – Novelty: he does his own search – Non obviousness • More than a trivial advance • Sequence: Application; Office Action; Amendment; Final OA; RCE – Avg actions per disposal - 2.5 • Examiner interviews (there are 6865 examiners) – Telephonic – In-person • Average “patent pending” period is 41 months • Total pending non-provisional utility patent apps = 1.1 million 24 Copyright © 2010 Brooks Kushman P.C.
    • Issuance • Term – 20 years after filing • Maintenance Fees – Due 4, 8, 12 years post-issuance • Geographic Scope – US • Foreign Protection – Seek within 1 year of US filing 25 Copyright © 2010 Brooks Kushman P.C.
    • Issuance To Enforcement - What Can I Do WithMy Patent? • Right to – Exclude others • Sell the patent outright • License – Others pay you for the right to use your patented invention • Cross license to – acquire something of use – settle a dispute 26 Copyright © 2010 Brooks Kushman P.C.
    • Dealing With A Patent Attorney • How to select – it’s like choosing a doctor . . . • Things to ask – Professional qualifications & affiliations • Prior litigation and licensing experience? • Real world business experience? – Process details – Timing – Seek estimate of entire project cost – Written engagement agreement – Alternative billing arrangements ? – Contingent fee representation ? 27 Copyright © 2010 Brooks Kushman P.C.
    • Opinion Practice - Types & Timing - Patent WatchServices • Novelty – Is my invention new? – Seek opinion early • Consider design-around alternatives • Infringement (Defensive) – Will my use infringe anothers patent (Freedom to Practice)? – Seek opinion before you commit • Infringement (Offensive) – Does a competitor infringe my patent? – Seek opinion early & watch periodically • Keep eyes open & an ear close to the ground 28 Copyright © 2010 Brooks Kushman P.C.
    • Entrepreneurial Considerations • Define & protect your invention – Patent search – File patent application(s) • Only then might the investor or company take you seriously • Prototyping • Funding – Valuation • Business plan • Exit strategy 29 Copyright © 2010 Brooks Kushman P.C.
    • Money - How To Fund The Project • Funding models – Pay with your own funds – Seek an investor • He provides $$$$ • He receives a piece of the action • You relinquish at least some control – Patent attorney contributes services or money for equity 30 Copyright © 2010 Brooks Kushman P.C.
    • Quickening The Investors Interest • Non-disclosure (confidentiality) agreements • Have patent protection in process or in place • The Pitch – Timing • When? – Content • Persuasively articulate the unsolved problems in prior approaches • Descripe & depict your invention • Explain how the invention solves un-met needs • Invite patent counsel to invest . . . ? 31 Copyright © 2010 Brooks Kushman P.C.
    • Patent Protection Abroad • One application for many countries • Procedure – Patent Cooperation Treaty (PCT) filing – Direct national entry • Cost • Timing 32 Copyright © 2010 Brooks Kushman P.C.
    • Recap - Weve Touched On . . . • Subject matter - what can be patented? • Patent searching - novelty & infringement • Types & content of patent applications • Procedure – patent prosecution - costs & timing • Enforcement - what can I do with my patent? • Selecting & dealing with a patent attorney • Entrepreneurial acts - due diligence • Foreign filing 33 Copyright © 2010 Brooks Kushman P.C.
    • Conclusion • Have more questions been raised than answered? • Can take your questions now or privately later • Thank you for participating . . .! 34 Copyright © 2010 Brooks Kushman P.C.
    • William G. Abbatt1000 Town Center, 22nd Floor Southfield, Michigan 48075 Phone: 248.358.4400wabbatt@brookskushman.com Copyright © 2010 Brooks Kushman P.C.
    • Four Major Areas of Intellectual Property Law • Trademark law, which protects words, names, and symbols used by manufacturers and businesses to identify their goods and services. • Copyright law, which protects original "works of authorship." • Patent law, which protects new, useful, and "nonobvious" inventions and processes. • Trade secret law, which protects valuable information not generally known that has been kept secret by its owner.36
    • Trademark Law • Trademarks and service marks are words, names, symbols, or devices used by manufacturers of goods and providers of services to identify their goods and services, and to distinguish their goods and services from goods manufactured and sold by others.37
    • Availability of Protection • Trademark protection is available for words, names, symbols, or devices that are capable of distinguishing the owners goods or services from the goods or services of others. • Cannot be: - Descriptive - Likely to cause confusion38
    • Federal and State Law • For trademarks used in commerce, federal trademark protection is available under the federal trademark statute, the Lanham Act. • Many states have trademark registration statutes that resemble the Lanham Act, and all states protect unregistered trademarks under the common law (non statutory law) of trademarks.39
    • Obtaining Protection • Patent and Trademark Office Registration • State Agencies • Common-law trademark40
    • Typical Issues • Choosing a mark • International Protection • Use of trademarks in domain names and “key word” advertising41
    • Copyright Law Copyright protection is available for any “original works of authorship."42
    • Types of Works Protected by Copyright Law • Literary works • Musical works • Dramatic works • Pantomimes and choreographic works • Graphic art • Motion pictures and other audiovisual works. • Sound recordings • Computer code • Screen shots43
    • Obtaining Copyright Protection • Copyright protection arises automatically when an "original" work of authorship is "fixed" in a tangible medium of expression. • Registration with the Copyright Office is optional (but you have to register before you file an infringement suit)44
    • Scope of Protection • Copyright protects against "copying" the "expression" in a work as opposed to the idea of the work. The difference between "idea" and "expression" is one of the most difficult concepts in copyright law. • Protection of the "expression" is not limited to exact copying. Copyright infringement extends to new works which are "substantially similar."45
    • Exceptions to Copyright Protection • Fair Use • Public Domain • Facts and ideas46
    • Typical Issues • Using independent contractors to create works • Using open source software47
    • Trade Secrets “Trade secret” means information, including a formula, pattern, compilation, program, device, method, technique, or process, that is both of the following: (i) 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. (ii) Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.48
    • Typical Issues • Nondisclosure Agreements - When do you use them? - How long is the term of nondisclosure? - Include in employee policies? • How are you protecting your trade secret information from disclosure?49
    • Questions? Jeremy D. Bisdorf Jaffe Raitt Heuer & Weiss, P.C. 201 S. Main Street, Suite 300 Ann Arbor, MI 48104 (248) 727-1386 jbisdorf@jaffelaw.com www.jaffelaw.com50