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Recognizing A Business's Intellectual Property Needs
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Recognizing A Business's Intellectual Property Needs

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An overview of the intellectual property information every business owner and business attorney should know.

An overview of the intellectual property information every business owner and business attorney should know.

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Recognizing A Business's Intellectual Property Needs Recognizing A Business's Intellectual Property Needs Presentation Transcript

  • Recognizing A Business’s Intellectual Property Needs& Other IP Info for Business Law Attorneys
    Presentation for UI College of Law Third-Year Law Students
    Boise, Idaho
    October 7, 2010
    Elizabeth Herbst Schierman schierman@dykaslaw.com
    Patent Attorney (208) 345-1122
    Dykas & Shaver, LLP Twitter: @EHSchierman
  • Background
    Degrees: B.S.Ch.E.; J.D.
    Work Background: Higher Ed Tech Transfer; Industry R&D; U.S. Courts for Idaho; Private Practice IP Practitioner
    Practice Areas:
    Prosecution: Patents; Trademarks; Copyrights
    Litigation: Internet / Domain Name; Infringement
  • IP101 – What is IP?
    Patents:
    New, Nonobvious, & Useful Inventions
    Trademarks & Trade Dress:
    Anything indicating source, origin, or sponsorship of a good or service
    Copyrights:
    Original works of authorship in tangible form
  • IP101 – Patent Practitioners
    Patent Practitioners:
    Patent Attorneys – Pass State Bar & Patent Bar
    Patent Agents – Pass Patent Bar
    Do not practice patent law if not registered with the USPTO
  • IP101 – Patenting Process
    Patent Search
    Patent Application Preparation & Filing
    Utility:
    Provisional
    Nonprovisional
    Design
    Foreign:
    PCT (Patent Cooperation Treaty)
    Individual Foreign Countries
  • IP101 – Patenting Process (cont.)
    Patent Application Prosecution
    Patent Examiner evaluates patent application
    Patent Examiner issues Office Action
    3-6 months to file Response to Office Action
    Repeat…indefinitely?
    Allowance & Issuance of Patent or Abandonment
    Maintenance Fees
    Expiration
  • IP101 – Trademark Reg. Process
    Trademark Search
    Federal Marks
    State Marks
    Common law Marks
    Domain Names
    Business Names
    Trademark Application Preparation & Submission:
    Federal or State
    In Use or Intent-to-Use
  • IP101 – Trademark Reg. Process (cont.)
    Trademark Application Prosecution
    Trademark Examining Attorney evaluates application
    Examining Attorney Issues Office Action
    6 Months to File Response to Office Action
    Published for Opposition
    Registered
    Principal Register
    Supplemental Register
    Declarations of Use / Incontestability
    Abandonment?
  • IP101 – Copyright Reg. Process
    Select Correct Form - Copyright.Gov
    Complete Form
    Submit Form & Pay Fee $35-$65
    Registration
  • IP Litigation 101 – Patent Infringement
    Jurisdiction: Federal Question
    Standard: Practicing each and every element, literally or by doctrine of equivalents, of at least one claim of the patent
    Local Patent Rules
    Claim Construction – Markman Hearing
  • IP Litigation 101 – Patent Infringement (cont.)
    Patent Owners:
    Have a Patent to Assert
    Evaluate Accused Product / Claim Chart
    Cease & Desist?
    Sue for Infringement
    Accused Infringers
    Evaluate Infringement Allegations
    Search for Invalidating Prior Art
    Search for Errors in the Patent or Prosecution
    File Decl. Action Seeking Determination of No Infringement / Invalidity / Unenforceability
  • IP Litigation 101 – Trademark Infringement / Dilution
    Jurisdiction: Federal or State
    No Registration Required
    Common Issues:
    Does the plaintiff have a trademark?
    Who is senior user?
    What is the scope of rights?
    Is there likelihood of confusion?
  • IP Litigation 101 – Copyright Infringement
    Jurisdiction: Federal
    Registration Required
    Common Issues:
    Damages: Statutory Damages Available?
    Willfulness
  • Spotting Your Client’s IP Issues – Identifying Their IP
    Patents:
    Brand New Products
    Improvements to Known Products
    Machinery
    Processes ?
    Software ?
  • Spotting Your Client’s IP Issues – Identifying Their IP (cont.)
    Trademarks:
    Business Name
    Product Name
    Logo
    Slogan
    Product design or business design
  • Spotting Your Client’s IP Issues – Identifying Their IP (cont.)
    Copyrights:
    Packaging
    Website
    Advertising
    Guides / Information Publications
    Logo
  • Spotting Your Client’s IP Issues – Ownership of IP
    Employees vs. Independent Contractors
    Employment Contracts
    Invention Disclosure Forms
    Inventor Notebooks
    Non-disclosure / Non-compete / Assignment Agreements
    Transfer of Ownership:
    Control Issues
    Tax Issues
  • Spotting Your Client’s IP Issues – Development
    Patents: Product Development:
    Patent Clearance Search
    Avoid Infringement
    Patent Novelty Search
    Evaluate Potential for Acquiring a Patent
    Identification of Correct Inventorship
    Patent Application Filed Before Marketing, Public Use or other Public Disclosure
    Correct Patent Marking
  • Spotting Your Client’s IP Issues – Development
    Trademarks:
    New Business Name
    New Product Name
    New Logo
    New Domain Name
    Trademark Clearance Search
    Avoid Infringement
    Trademark Registerability Search
    Evaluate Potential for Acquiring a TM Registration
    Correct Trademark Marking
  • Spotting Your Client’s IP Issues – Development
    Copyrights:
    Ownership!
    Who ACTUALLY made the work?
    Relationship of the worker to the business?
    Registration within 3 months of publication
  • Spotting Your Client’s IP Issues – IP Transactions
    Patents:
    Infringement Insurance
    Transfers of Ownership – Particularities
    Assignment
    Indemnification or Warranty in Case of Infringement Allegations
    Before Buying Patent Rights: Evaluation & History of Patent
    Licensing
    Ownership of Modifications/Improvements
  • Spotting Your Client’s IP Issues – IP Transactions
    Trademarks:
    Infringement Insurance
    Ownership Determinations – Particularities
    Assignment
    Indemnification or Warranty in Case of Infringement Allegations
    Before Buying Rights: Evaluation & History of Mark
    Licensing
    Right to Quality Control
    Standards for Use of Mark
  • Spotting Your Client’s IP Issues – IP Transactions
    Copyrights
    Ownership Determinations – Particularities
    Assignment
    Indemnification or Warranty in Case of Infringement Allegations
    Ownership Determination
    Moral Rights May Not Transfer
    Licensing
    Spell Out Rights Licensed
    Limitations on Use: When/Where/How/What
    Limitations on Modification: (e.g., No Reverse Engineering)
    Ownership of Modifications/Improvements
  • QUESTIONS????
    Elizabeth Herbst Schierman schierman@dykaslaw.com
    Patent Attorney e@dykaslaw.com
    Dykas & Shaver, LLP (208) 345-1122
    Twitter: @EHSchierman
    LinkedIn: http://www.linkedin.com/in/idahopatentattorney
    Firm Profile: http://www.dykaslaw.com/professionals/schierman/