PROTECTING YOUR BUSINESS WITHPATENTS, TRADEMARKS, ANDCOPYRIGHTS       Daniel Jon Holmander, Esq.       Barlow, Josephs & H...
©2012 Barlow, Josephs & Holmes Ltd.Introduction to Intellectual Protectionfor Small Business• IP Law is important because ...
What are Some Types ofIntellectual Property Rights?1. Patents2. Trademarks3. Copyrights
©2011 Barlow, Josephs & Holmes Ltd.Types of Intellectual PropertyRights1. Copyrights – protects original works of authorsh...
Patents - Overview• What is capable of being patented?  • Any novel and non-obvious invention  • In the US this includes b...
©2011 Barlow, Josephs & Holmes Ltd.Types of Patents in the U.S.  • Utility Patents    • Provisional Applications    • Non-...
©2011 Barlow, Josephs & Holmes Ltd.Patentable Subject Matter   • A. Apparatus/Device or Article of Manufacture   • B. Comp...
©2011 Barlow, Josephs & Holmes Ltd.Not Patentable Subject Matter   • A. mathematical formulae   • B. algorithms   • C. men...
Types of Utility Patents in the U.S.    • A. Apparatus/Device or Article of Manufacture    • B. Method of Manufacture    •...
Benefits of Patents for Small Business • 1. increase valuation of company • 2. support higher profit margins by offering e...
©2011 Barlow, Josephs & Holmes Ltd.Provisional Patent Application  • Inexpensive filing     • Get filing date, Serial No.,...
©2011 Barlow, Josephs & Holmes Ltd.Non-Provisional PatentApplications  • Covers functional/utilitarian aspects of an inven...
Business Method Patents  • Covers new methods of doing business  • Claims define the scope of protection  Patentability Re...
Amazon 1-Click Patent ClaimU.S. Pat. No. 5,96,411  • 1. A method of placing an order for an item comprising: under control...
Software Patents  • patent on any performance of a computer realized by    means of a computer program  • Claims define th...
Ebay Software Patent ClaimUS Pat. No. 7,702,540  • 1.A computer-implemented method for conducting auctions on the Internet...
Design Patents  • Ornamental design on a functional product (Coke    bottle)  • Claims define the scope of protection  Pat...
Google HomepageUS Pat. No. D599,372
©2011 Barlow, Josephs & Holmes Ltd.Plant Patents  • Must be invented and discovered  • Must be asexually reproduced (graft...
Due Diligence – Patent Searching  • Informal Search     • www.uspto.gov     • Google® Patents  • Professional Search    • ...
File Patent Applications  • Prepare, file patent application, and prosecute  • Caution:   • U.S. - file within one year of...
©2012 Barlow, Josephs & Holmes Ltd.RI State Trademark• Contents – similar to Federal Registration except no intent-to-use ...
©2012 Barlow, Josephs & Holmes Ltd.Federal Trademark Law• Trademarks are indicia affixed to goods or used in  connection w...
Trademark Rights• Common Law Trademark Rights                         TM  • Trademark Rights arise out of usage  • Rights ...
Benefits of Trademarks for SmallBusiness • 1. maximize product differentiation, advertising and marketing, thus     enhanc...
Types of Trademarks  Arbitrary or Fanciful  Suggestive  Descriptive  Generic
Arbitrary, Fanciful Marks  • Unrelated to the goods or services  • Preferred    • easiest to register    • strong when con...
Suggestive Marks• Implies a characteristic of the product• Requires some imagination to connect mark with the  goods, usua...
Descriptive Marks• Product or its function is set forth in the mark• Not inherently capable of identifying the source of t...
Generic Marks/Names  • Defines a class of goods  • Needed by competitors to adequately identify the    goods  • Not regist...
Domain Names and Trademarks  • Picking a Domain name  • 1. Pick a domain name that is not the subject of a third    party’...
Due Diligence -TrademarkSearch  Informal Search: www.uspto.gov; Google  Professional Search:  -Federal trademark registrat...
File Registration Application• File trademark application• Types • Use (mark already in use in interstate    commerce)  • ...
Trademark RegistrationMaintenance• Declaration of Continuous Use/Incontestability  (between 5 and 6 years from Federal Reg...
©2011 Barlow, Josephs & Holmes Ltd.Copyright Law  • What is copyrightable?    • Original Works of authorship fixed in a ta...
Copyrights – Protection for SmallBusiness   • Is the work protectible?      • Original?    • Expression of ideas, not the ...
©2011 Barlow, Josephs & Holmes Ltd.Copyright - Limitations  • First Sale Doctrine – allows purchaser to transfer    (sell,...
©2012 Barlow, Josephs & Holmes Ltd.Copyright – Exclusive Rights  • Copyright is a bundle of exclusive rights:  • 1. reprod...
©2011 Barlow, Josephs & Holmes Ltd.Copyright Law – Registration Process  • I. Submit Application, Deposit, and fee to US  ...
©2011 Barlow, Josephs & Holmes Ltd.Copyright – Benefits of Registration• Under current law, no registration is needed to p...
©2011 Barlow, Josephs & Holmes Ltd.Copyright – Application Contents  • 1. name/address of copyright claimant  • 2. authors...
©2011 Barlow, Josephs & Holmes Ltd.Copyright – Application Forms  • Registration with Paper Forms    • Form CO (pdf) – fil...
©2011 Barlow, Josephs & Holmes Ltd.Copyright – Deposit  • Unpublished work – one complete copy  • Published work – two com...
Copyright Marking Issues• Copyright Notice Marking Preferred  • Use “©“, Year of first publication, then company/person cl...
Conclusion  • Identify    • Identify property and determine whether it is important to     you and your company  • Researc...
Upcoming SlideShare
Loading in …5
×

Protecting Your Business With Patents, Trademarks, and Copyrights

308 views
232 views

Published on

0 Comments
0 Likes
Statistics
Notes
  • Be the first to comment

  • Be the first to like this

No Downloads
Views
Total views
308
On SlideShare
0
From Embeds
0
Number of Embeds
0
Actions
Shares
0
Downloads
5
Comments
0
Likes
0
Embeds 0
No embeds

No notes for slide

Protecting Your Business With Patents, Trademarks, and Copyrights

  1. 1. PROTECTING YOUR BUSINESS WITHPATENTS, TRADEMARKS, ANDCOPYRIGHTS Daniel Jon Holmander, Esq. Barlow, Josephs & Holmes, Ltd. 401-273-4446 djh@barjos.com www.barjos.com©2012 Barlow, Josephs & Holmes, Ltd.
  2. 2. ©2012 Barlow, Josephs & Holmes Ltd.Introduction to Intellectual Protectionfor Small Business• IP Law is important because it has been estimated that 45-80% of a company’s value lies in its intangible assets, namely intellectual property rights• The purpose of this course is discuss the following:• 1. patent law for small business• 2. trademark law for small business• 3. copyright law for small business
  3. 3. What are Some Types ofIntellectual Property Rights?1. Patents2. Trademarks3. Copyrights
  4. 4. ©2011 Barlow, Josephs & Holmes Ltd.Types of Intellectual PropertyRights1. Copyrights – protects original works of authorshipfixed in a tangible medium of expression. -Literary works, musical works, dramatic works, motion pictures, sound recordings, etc.2. Trademarks - indicia affixed to goods or used inconnection with the sale or advertising of services toidentify the source of the goods or services -protects name and/or logo for goods or services3. Patents- government grant of the right to exclude others from making, using, selling or importing thepatented invention. (note, not right to use theinvention)
  5. 5. Patents - Overview• What is capable of being patented? • Any novel and non-obvious invention • In the US this includes business methods• Rights Awarded • Government grant of the right to exclude others from making, using, selling or importing the patented invention.
  6. 6. ©2011 Barlow, Josephs & Holmes Ltd.Types of Patents in the U.S. • Utility Patents • Provisional Applications • Non-Provisional Applications • Design Patents • Plant Patents
  7. 7. ©2011 Barlow, Josephs & Holmes Ltd.Patentable Subject Matter • A. Apparatus/Device or Article of Manufacture • B. Composition of Matter • C. Method of Manufacture • D. Method or Process for Using Apparatus/Device/Article • E. Business Method Patents • F. Software – must be tied to a physical structure
  8. 8. ©2011 Barlow, Josephs & Holmes Ltd.Not Patentable Subject Matter • A. mathematical formulae • B. algorithms • C. mental processes • D. music • E. basic mathematical and physical relationships • F. phenomena of nature • G. abstract intellectual concepts
  9. 9. Types of Utility Patents in the U.S. • A. Apparatus/Device or Article of Manufacture • B. Method of Manufacture • C. Method or Process for Using Apparatus/Device/Article • D. Business Method Patents • E. Software
  10. 10. Benefits of Patents for Small Business • 1. increase valuation of company • 2. support higher profit margins by offering exclusive features • 3. source of income through a licensing program • 4. defensive measure if accused of violating a patent of competitor
  11. 11. ©2011 Barlow, Josephs & Holmes Ltd.Provisional Patent Application • Inexpensive filing • Get filing date, Serial No., “patent pending” • Good for One Year • Must file non-provisional (full) patent application within one year of filing of provisional application. • Non-provisional gets filing date of provisional application • Allows time to explore feasibility/marketability of invention over the year
  12. 12. ©2011 Barlow, Josephs & Holmes Ltd.Non-Provisional PatentApplications • Covers functional/utilitarian aspects of an invention • Claims define the scope of protection Patentability Requirements: • Novel • Non-obvious Term: 20 years (from filing date of application)
  13. 13. Business Method Patents • Covers new methods of doing business • Claims define the scope of protection Patentability Requirements: • Novel • Non-obvious Term: 20 years (from filing date of application)
  14. 14. Amazon 1-Click Patent ClaimU.S. Pat. No. 5,96,411 • 1. A method of placing an order for an item comprising: under control of a client system, displaying information identifying the item; and in response to only a single action being performed, sending a request to order the item along with an identifier of a purchaser of the item to a server system; under control of a single-action ordering component of the server system, receiving the request; retrieving additional information previously stored for the purchaser identified by the identifier in the received request; and generating an order to purchase the requested item for the purchaser identified by the identifier in the received request using the retrieved additional information; and fulfilling the generated order to complete purchase of the Item whereby the item is ordered.
  15. 15. Software Patents • patent on any performance of a computer realized by means of a computer program • Claims define the scope of protection Patentability Requirements: • Novel • Non-obvious Term: 20 years (from filing date of application)
  16. 16. Ebay Software Patent ClaimUS Pat. No. 7,702,540 • 1.A computer-implemented method for conducting auctions on the Internet, the method comprising: receiving over a communication network, by a communication handler program executing on a networked market maker computer, information from a remote computer of a first entity corresponding to an item for auction, the information received via the communication network from the remote computer of the first entity including (i) a designation of an item category, selected from a list of item categories presented at the remote computer of the first entity, under which the item for auction is to be listed, and (ii) input relating to scheduling an auction for the item; processing, by a mapping module at the networked market maker computer, at least a portion of the received information from a database format into a world wide web presentation format, the presentation format including an indication of the selected designation of the category of the item for auction; based at least in part on the selected category designation and the auction scheduling information previously received from the remote computer of the first entity, automatically initiating an instance of an ascending-bid auction process to conduct an ascending-bid auction for the item over the Internet from the networked market maker computer; wherein the automatically initiated auction process conducts the auction to completion by performing operations including: presenting a depiction of the item in the presentation format to a plurality of potential buyers; receiving at the networked market maker computer one or more bids on the auctioned item from one or more bidders; and terminating the auction after a predetermined time.
  17. 17. Design Patents • Ornamental design on a functional product (Coke bottle) • Claims define the scope of protection Patentability Requirements: • Novel • Non-obvious Term: 14 years (from date of grant)
  18. 18. Google HomepageUS Pat. No. D599,372
  19. 19. ©2011 Barlow, Josephs & Holmes Ltd.Plant Patents • Must be invented and discovered • Must be asexually reproduced (grafting) • Must be distinct and new variety of plant • Does not include tuber propogated plant or a plant found in an uncultivated state Term: 20 years (from date of filing)
  20. 20. Due Diligence – Patent Searching • Informal Search • www.uspto.gov • Google® Patents • Professional Search • Guidance from an Examiner at USPTO • Analysis and patentability opinion
  21. 21. File Patent Applications • Prepare, file patent application, and prosecute • Caution: • U.S. - file within one year of first offer for sale, public disclosure to ensure valid patent • Foreign countries – no grace period
  22. 22. ©2012 Barlow, Josephs & Holmes Ltd.RI State Trademark• Contents – similar to Federal Registration except no intent-to-use application; must have use • See http://sos.ri.gov/business/trademark/forms/• Limited Prosecution Phase – granted or refund• Less Expensive Filing - $50• Protection – extends to the boundaries of the state of Rhode Island only(also available in MA, CT, etc.)• No connection between Secretary of State incorporation and RI State Trademark
  23. 23. ©2012 Barlow, Josephs & Holmes Ltd.Federal Trademark Law• Trademarks are indicia affixed to goods or used in connection with the sale or advertising of services to identify the source of the goods or services• Many forms • word mark • slogan • logo • musical notes • trade dress • scents
  24. 24. Trademark Rights• Common Law Trademark Rights TM • Trademark Rights arise out of usage • Rights accrue in geographic territory• Federal Registration ® • Nationwide protection • Significant advantages • Presumption of validity at trial • Incontestability 5-6 years after registration • Sample Federal Registration
  25. 25. Benefits of Trademarks for SmallBusiness • 1. maximize product differentiation, advertising and marketing, thus enhancing recognition of your product or service • 2. increase revenues as consumers pay higher prices for branded goods • 3. derive loyalty largely due to consumer’s ability to recognize the product and distinguish it from the products of competitors
  26. 26. Types of Trademarks Arbitrary or Fanciful Suggestive Descriptive Generic
  27. 27. Arbitrary, Fanciful Marks • Unrelated to the goods or services • Preferred • easiest to register • strong when connection is made with consumers • Examples • Nike Swoosh (shoes) • YAHOO! (internet portal)
  28. 28. Suggestive Marks• Implies a characteristic of the product• Requires some imagination to connect mark with the goods, usually registrable• Examples • SPARKLE (window cleaner) • PENGUIN (food freezers) • GOBBLE GOBBLE (turkey meat)
  29. 29. Descriptive Marks• Product or its function is set forth in the mark• Not inherently capable of identifying the source of the goods or services • Registrable if secondary meaning is shown• Examples • PRE-INKED (stamp pads) • 5 MINUTE (five minute glue)
  30. 30. Generic Marks/Names • Defines a class of goods • Needed by competitors to adequately identify the goods • Not registrable • Examples • PHOTOCOPY MACHINE (copy machines) • COMPUTER (computers) • ASPIRIN (aspirin) - became generic over time
  31. 31. Domain Names and Trademarks • Picking a Domain name • 1. Pick a domain name that is not the subject of a third party’s trademark registration or common law right • 2. Pick a domain name that resonates with customers and is capable of building good will (i.e. not generic or merely descriptive) • Enforcing a Trademark Against Domain Name Holder • 1. Uniform Administrative Dispute Resolution Policy
  32. 32. Due Diligence -TrademarkSearch Informal Search: www.uspto.gov; Google Professional Search: -Federal trademark registrations -Common Law trademarks -Brand names -Company names -Domain names -State Trademarks -Internet usageNote: Just because the Secretary of State’s Office says that a name is available for incorporation, doesn’t mean it can used as a trademark
  33. 33. File Registration Application• File trademark application• Types • Use (mark already in use in interstate commerce) • ITU (bona fide intent-to-use)• Office Actions• Responses, Amendments• Publication for Opposition in Official Gazette• Registration Certificate
  34. 34. Trademark RegistrationMaintenance• Declaration of Continuous Use/Incontestability (between 5 and 6 years from Federal Registration)• Renewals every 10 years if mark is still in use • 10 year term of registration
  35. 35. ©2011 Barlow, Josephs & Holmes Ltd.Copyright Law • What is copyrightable? • Original Works of authorship fixed in a tangible medium of expression – 17 U.S.C.102(a) • What is NOT copyrightable? • Ideas, facts (unless arranged in unique way), procedure, process, system, method, concept, principle, discovery • Examples of copyrightable Works • books • jewelry and sculptures • photos • performance art • website • software
  36. 36. Copyrights – Protection for SmallBusiness • Is the work protectible? • Original? • Expression of ideas, not the ideas themselves • non-functional • Types • Textbooks, magazines, newspapers • Sculptures, jewelry designs • Photographs • Music, lyrics • Content on the Internet
  37. 37. ©2011 Barlow, Josephs & Holmes Ltd.Copyright - Limitations • First Sale Doctrine – allows purchaser to transfer (sell, lend, or give away) a particular lawfully made copy of the copyrighted work without permission once it has been obtained (CD, book, etc). • Fair Use Doctrine – allows for copying for purposes of criticism, comment, news, reporting, teaching, scholarship, or research. • Purpose and character of the use • Nature of the work • Amount of the work used in relation to the whole • Effect of the use on the value of the work
  38. 38. ©2012 Barlow, Josephs & Holmes Ltd.Copyright – Exclusive Rights • Copyright is a bundle of exclusive rights: • 1. reproduce the subject work • 2. prepare derivative subject works • 3. distribute copies of the subject work • 4. perform the subject work publicly • 5. display the subject work publicly
  39. 39. ©2011 Barlow, Josephs & Holmes Ltd.Copyright Law – Registration Process • I. Submit Application, Deposit, and fee to US Copyright Office • II. Refusal – If the deposit is not acceptable or not copyrightable subject matter, the Copyright Office may refuse registration and provide opportunity to rebut • III. Issuance – Certificate of Registration if there is no Refusal • IV. Duration – work created after January 1, 1978- term is from the moment of creation to 70 years after the author’s death – renewal not required (post 1978)
  40. 40. ©2011 Barlow, Josephs & Holmes Ltd.Copyright – Benefits of Registration• Under current law, no registration is needed to preserve copyright to an original work. Presumption of validity if registered within 5 years of first publication.• Copyright Registration is prerequisite to filing suit in Federal Court, key to courthouse• Timing of Copyright Registration • Pre-infringement (or within 3 months of publication) all remedies available - statutory damages (up to 30k per infringement), attorneys fees • Post-infringement: Not preferred, remedies such as actual damages of copyright owner and profits -hard to prove and likely less than statutory damages
  41. 41. ©2011 Barlow, Josephs & Holmes Ltd.Copyright – Application Contents • 1. name/address of copyright claimant • 2. authors and nationality • 3. work for hire statement • 4. If claimant is not author, brief statement of how claimant obtained ownership of the copyright • 5. year of creation of work • 6. date and nation of first publication • 7. identification of any pre-existing works
  42. 42. ©2011 Barlow, Josephs & Holmes Ltd.Copyright – Application Forms • Registration with Paper Forms • Form CO (pdf) – fill out online and mail along with $50 and deposit • Other Forms - $65 fee, deposit, and much slower processing time TX – literary works – books, catalogs, software VA – visual arts – art, photographs, prints, drawings PA – performing arts – music, motion pictures See copyright.gov for forms/circulars/brochures • Online Registration – eCO online system • - lower filing fee - $35; faster time; online tracking; upload deposits directly
  43. 43. ©2011 Barlow, Josephs & Holmes Ltd.Copyright – Deposit • Unpublished work – one complete copy • Published work – two complete copies (unless uploaded electronically) • Special requirements • Computer Programs – printout of the first 25 and last 25 pages of the source code, or entire program if less than 50 pages • Databases – first 25, last 25 pages(single file) or 50 data records (for multiple files) • If trade secrets, then some portions may be blocked out less than 25 first, 25 last
  44. 44. Copyright Marking Issues• Copyright Notice Marking Preferred • Use “©“, Year of first publication, then company/person claiming ownership • ©2000 Smith & Co. • Notice not need to preserve copyrights • Notice Used: Easier to prove willful infringement • No Notice: Innocent infringement
  45. 45. Conclusion • Identify • Identify property and determine whether it is important to you and your company • Research • Take early action to search inventions, clear trademarks to avoid problems • Protect • File for appropriate patents, registrations • Enforce • Police property, pursue infringers

×