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Recognizing A Business's Intellectual Property Needs
 

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/