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 firstname.lastname@example.org 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 (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