Law: Bill Loginov

Introduction to Intellectual Property Law and Protection Presented by: William A. Loginov Principal Attorney Loginov & Associates, PLLC 10 Water Street Concord, NH 03301 [email_address]

Intellectual property
Ideas and their expression can be valuable assets!
But only if you protect your ownership of them!

Intellectual Property
4 kinds of legally protectable assets:
patent
trademark
copyright
trade secret

Patents
an “exclusive right” granted by the federal government entitling the owner to prevent another from making, using, selling (or offering to sell) the patented product or process
issued by the US Patent and Trademark Office
term of 20 years from “utility” patent application filing (14 years from issuance for design filings)

Patents
limited to country issuing the right
must be:
useful
new
non-obvious
“ enabling” to those of ordinary skill
Remember: It’s a “right to exclude ,” not an affirmative right to practice the invention
No patents on “illegal/immoral” subject matter; and

No nukes!

Utility patents can be:
a machine or device
an article of manufacture
a process or method for producing a useful, concrete and tangible result
a composition of matter

Utility Patents on Software
Software is generally patentable
examples:
application programs – process or machine controls
microcode in a ROM that embodies the entire innovative notion of a new tachometer
internal or operations programs that direct the handling of date in the computer’s own operations
Amazon’s “One-Click” patent (successfully litigated against Barnes & Noble in 1999)—After BILSKI???
what’s needed – a process depiction (e.g. flow chart) and a written description

Not Patentable:
“ raw” software code (but it’s copyrightable)
natural phenomena (e.g. photosynthesis); However gene sequences are usually patentable (require “human ingenuity” to isolate)
abstract ideas (e.g. mathematical algorithms) not applied to any useful purpose (a 2 + b 2 = c 2 )
laws of nature (e.g. E=mc 2 )
“ raw” business methods and processes not “tied to a device” BILSKI!!!!

Other Types of Patents
design patents – cover the industrial design of an object: its ornamental appearance-not its function-invention is claimed by its drawings (less detail the better)
plant patents – inventions or discoveries involving asexual reproduction of distinct and new varieties of plants

A Design Patent

Prior Art Limits Patents
absence of novelty or non-obviousness in light of “prior art” is grounds for denial of an application
prior art = any disclosure of information regarding – or use of the contents of a claim – prior to the filing of patent application (and date of invention)
any information in the entire body of human knowledge can be prior art:
publications by others
a prior, issued patent
prior public use of the invention by others
prior public disclosure or use by the inventor(s)

Statutory Bars to Patenting
Cannot file more than one year after “public disclosure” or other barring events, including :
publication anywhere or public presentation in the US– written or oral
sale, or “offer for sale” (“containing the invention”), including products of the invention in the US
exhibitions
use by the owner, in some cases (example, a product sold using a secret machine prevents patenting machine later)
limited exception for public use for experimental purposes
beta testing by a potential customer–circumstances determine. Must have no payments/profit!
no grace period in most other countries with significant markets ―must file somewhere before a public “divulgation”

Parts of a Patent
Three basic parts:
drawings showing an embodiment
written description
claims
Contents:
Title
Cross Reference to Related Applications
Field of the Invention
Background
Summary of the Invention
Brief Description of the Drawings
Detailed Description
Claims
Abstract
Drawings
At least one named inventor needed

A Typical Issued Utility Patent

Deferral Strategy - Provisional Patents
A US application for a patent without formal claims, oaths/declarations, or information disclosure (prior art) statement
Allows use of the term “patent pending”
Is not examined
Must file a non-provisional (“full”) application referencing the provisional within 12 months – no extensions !
No amendments allowed, but further provisionals can be filed within initial 12-month period
Used to claim priority of the filing date in the utility patent application
Must be “enabling” of the inventive concept

Deferral Strategy - Provisional Patents
Must contain:
Complying (enabling) written description
complying drawings, if necessary
Filing fee - $110 for small entities
Cover sheet identifying:
application is a provisional application
names of all inventors
inventors’ residences
title of invention
name and registration of attorney or agent and docket number
correspondence addresses
any US Government agency that has a property interest
Cover sheet available online at www.uspto.gov/web/forms/sb0016.pdf
See www.uspto.gov/web/offices/pac/provapp.htm
Fees – see http://www.uspto.gov/web/offices/ac/qs/ope/fee2004dec08.htm#patapp

What about foreign patents?
Under treaties, you have a one year grace period to file foreign patents based on your U.S. patent
PCT application is good option to keep cost reasonable
Eventual Cost:
HOW MUCH DO YOU HAVE?

Importance of Patents
Offensive
Deter Competitors
Marking/marketing
Threat of Litigation
Defensive
Own different technologies
Capital Asset
Licensing/Cross-licensing
A bargaining chip

Trademarks & Servicemarks
trademark - used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others
servicemark - identifies and distinguishes the source of a service rather than a product.
used to prevent others from using a confusingly similar mark
may be registered with the USPTO but also exist under “common law” based upon use and distinctiveness

Any identification used to distinguish goods or services
Word, phrase or name
Slogan
Design or symbol
Picture
Device (Pep Boys Heads, Bob’s Big Boy)
Product/Packaging Shape (aka “trade dress”)
Sound, musical phrase
Color (if highly distinctive: “pink” for insulation)
Smell (very rare)

A Federally Registered “Word” Trademark

™ vs. ®
Common law :
™ is used in the US to give notice of alleged common law rights (Lanham Act Section 43(a) protects common law marks)
First to adopt gets right
Limited to the geographical location of the use in commerce
Federal Protection :
® is used in the US once a trademark has been federally registered (USPTO)
First to file – actual use, or intent to use
Can stop anyone in the US from future use of the mark for the goods and services in the manner protected by the Federal Registration
For use prior to filing the federal application, can limit future use to the places that someone used the mark in commerce prior to the filing date

Copyrights
federal statutory protection
provided to authors of “original works of authorship” including:
literary and certain other intellectual works, both published and unpublished
dramatic and musical works, including pantomimes and choreographic works musical
artistic
software code
pictorial, graphic, and sculptural works
motion pictures and other audiovisual works
sound recordings
architectural works
an exclusive right to:
reproduce the work
prepare derivative works
distribute copies or phonorecords of the copyrighted work
perform or display the copyrighted work publicly

Copyrights
as to the work or derivative works, can be used to prevent others from:
Using (don’t play it!)
Copying (don’t duplicate or download it!)
Distributing (don’t give it to your friends!)
Performing (don’t play it at parties!)
Displaying (don’t put it on a site or poster!)
protects form of expression rather than subject matter of the writing (software code not the idea of the program)
registered with Library of Congress’ Copyright Office but exists w/o registering

Requirements
Originality Requirement
Not just copied
Must contain a minimal amount of creativity
Excluded: words, short phrases, slogans
Fixation Requirement
Must be fixed in tangible form prior to qualifying for copyright protection (fixed embodiment)
Not granted to ideas, procedures, processes, systems, methods of operation, concepts, principles, or discoveries
Term-Life of the Author + 70 years or at least 95 years for corporate works (Mickey Mouse!)

Trade Secrets
confidential information – knowledge, inventions, strategies and processes – held secret and protected
if improperly disclosed or illegally acquired by a competitor, the owner has resort to trade secret law
eternal – may have no limit on term unless otherwise stated
certain protection procedures are required – no protection against discovery by fair means (including independent invention and reverse engineering)
use non-disclosure and non-compete agreements to perfect any trade secret rights

Confidentiality Agreements
binding legal agreement – must have statutory elements
contains a promise by the receiver of information to:
prevent unauthorized use or disclosure – use only as intended
limit use and disclosure to parties identified in the agreement, or obtain written permission to disclose (need-to-know basis)
Describe/list the information being protected.
mark all items disclosed as “confidential.” Number them.
should include preservation of intellectual property rights, current and future
include a reasonable term and expiration. Avoid ambiguity (e.g. verbal representations).

Tips for smooth dealings with your patent attorney and a “clean” patent filing

Maintain inventor’s notebook with dates and witness signatures
Provide the attorney with a standard invention disclosure form with all important data

Ask for quotes before authorizing work
Maintain Communications

CONCLUSION AND YOUR QUESTIONS

Contact Information William A. Loginov Principal Attorney Loginov & Associates, PLLC 10 Water Street Concord, NH 03301 (603) 369-4146 (direct) (603) 591-6325 (mobile) [email_address] www.loginovlaw.com

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