Invention 2 Venture: Chris Rothe


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Mr. Rothe is an attorney with RatnerPrestia, PC, a law firm located in Valley Forge, PA. Christopher counsels clients in all areas of intellectual property law, including patents, IP risk management, and IP transactions. Mr. Rothe has expertise in prosecuting domestic and international patent applications. He is currently responsible for managing patent portfolios for a major U.S. manufacturer of surgical implants, and one of the nation's top children's hospitals.

Mr. Rothe is accustomed to explaining complex IP issues to individuals with various backgrounds, including general counsels, company presidents, CEOs, technology transfer specialists, marketing directors, engineers, scientists, and beginning entrepreneurs.

Mr. Rothe received a law degree from Villanova University School of Law. Before attending law school, Mr. Rothe spent four years working as an engineer in private practice. He received a B.S. in civil engineering from the Pennsylvania State University in 1992.

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Invention 2 Venture: Chris Rothe

  1. 1. INTELLECTUAL PROPERTY October 24, 2009 Christopher A. Rothe RatnerPrestia, PC Information contained in this slide show, and any statements made by the presenter during presentation of this slide show, are provided solely for educational purposes for the NCIIA Invention to Venture Workshop, and do not constitute legal advice. Individuals seeking legal advice about intellectual property should consult with competent legal counsel and explain their specific circumstances. Laws are subject to change. © 2009 RatnerPrestia 1
  2. 2. What is Intellectual Property? Intellectual Property = “creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce.” - WIPO •  But what makes it property? 2
  3. 3. Legal Categories of IP in US:   Copyrights   Trademarks   Trade Secrets   Patents 3
  4. 4. Copyrights   Protect works that are: Original; Creative; and Fixed in a tangible medium of expression   Purpose: protects the expression of an idea, not the idea itself Examples: Paintings, photographs, sound recordings, source code 4
  5. 5. Copyrights   What you get: Exclusive rights to (and authorize others to) –  Reproduce the work –  Prepare a derivative work –  Distribute copies –  Publicly perform or display the work   Fair use exception 5
  6. 6. Copyrights Copyright term (first published in US): 70 years after the death of author. 6
  7. 7. Trademarks   A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. Examples: 7
  8. 8. Trademarks   A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Examples: 8
  9. 9. Trademarks   Trade dress is any other feature seen in the presentation of a product or service – Product configuration – Product packaging 9
  10. 10. Trademarks   What you get: a right to exclude others from using a mark in a manner that creates a likelihood of confusion as to source   Purpose: to protect consumers from confusion or deception when purchasing   Term: Indefinite but must renew every 10 years   Use it or lose it 10
  11. 11. Patents   A “deal” with the government: –  A patent grants an inventor the right to exclude others from making, using, offering for sale, or selling the invention in the U.S. or importing the invention into the U.S. - for a limited patent term –  In exchange, the government publishes your invention & public gets to see it 11
  12. 12. Types of U.S. Patents Utility patents   Protect processes, machines, articles of manufacture, compositions of matter, etc.   Term: 20 years from date of filing Design patents   Protect new, original, and ornamental designs for articles of manufacture   Term:14 years from date of filing Plant patents   Protect distinct and new varieties of asexually- reproduced plants   Term: 20 years from date of filing 12
  13. 13. Requirements for Utility Patent Must be:   Novel over prior art   “Non-obvious” over prior art   Useful 13
  14. 14. Hypothetical   US Patent issued to Smith   Title: A Seating Apparatus Claim: A seating apparatus comprising four legs and a seat. Smith 14
  15. 15. Hypothetical   US Patent Appln. filed by Jones   Title: Improved Seating Apparatus Claim: A seating apparatus comprising four legs, a seat and a back rest. Jones 15
  16. 16. Hypothetical Assume:   Only prior art to Jones: Smith patent This boulder 16
  17. 17. Hypothetical 1) Is the Jones chair patentable? Useful? Novel? Non-obvious? 17
  18. 18. Hypothetical 2) If Jones gets a US patent, is he free to make, use and sell his chair? 18
  19. 19. Hypothetical 2) If Jones gets a US patent, is he free to make, use and sell his chair? NO ! Patent provides right to exclude, not to practice The Jones chair would infringe the claim in Smith’s patent Smith = dominant patent 19
  20. 20. Hypothetical 3) Can Smith make and sell the Jones chair in view of Smith’s dominant patent? 20
  21. 21. Hypothetical 3) Can Smith make and sell the Jones chair in view of Smith’s dominant patent? NO ! Smith would be infringing the Jones patent. 21
  22. 22. Patent Novelty & Time Bars   One year grace period in U.S. to file patent application after commercial disclosure: •  Sale or Offer for sale •  Public use (“experimental use” exception)   After that, you are barred from obtaining a patent in the U.S.   Most other countries: no grace period 22
  23. 23. Territorial Protection   U.S. patents - enforceable only in U.S.   Filing options outside U.S.: –  File in individuals countries; OR –  Patent Cooperation Treaty (PCT) •  one procedure allowing party to apply for patents in multiple countries that are members of the PCT 23
  24. 24. Trade Secrets   Trade Secret - information, including a formula, pattern, compilation, program, device, method, technique, or process that: –  provides value because it is not known to others who could benefit from it; AND –  safeguarded by the owner in a way that can reasonably be expected to prevent others from learning about it   No term limit, so long as the info remains “secret” 24
  25. 25. Patents vs. Trade Secrets   Conditions favoring patents: –  the technology is easily discoverable or reverse engineered –  licensing revenues   Conditions favoring trade secrets: –  Life cycle is short (e.g. technology is obsolete in <3 years) –  Proving infringement would be difficult –  Technology can be easily “designed around” once it is known 25
  26. 26. What to Do If You Have “Something” 1. Articulate your invention –  New Apparatus / System? –  New Process / Method? –  All of the above? –  What exactly is novel? –  Explain the invention in one sentence. 26
  27. 27. What to Do If You Have “Something” 2. Is a patent a good idea? –  Would a trade secret be better? –  Who would infringe the patent? –  How would you know about infringement? –  Is the prior art “crowded”? •  USPTO search 27
  28. 28. What to Do If You Have “Something” 3. Get the record straight –  Keep dated information, preferably in a permanently bound notebook –  Document all contributors, and what they contributed –  If you disclosed it, record disclosure date –  Complete an “invention disclosure form” 28
  29. 29. What to Do If You Have “Something” 4. Control your Disclosure –  Try to get an NDA –  Limit disclosure to general summaries 29
  30. 30. What to Do If You Have “Something” 5. File a patent application before you disclose the invention Option: “provisional application” 30
  31. 31. Provisional Applications   Purpose: Gets you a U.S. filing date (f/d)   Does not get you a patent   Must file a “full-blown” patent application to obtain a patent   Full blown application can claim the provisional’s f/d if it is filed within 1 year of the provisional “full-blown” = U.S. non-provisional or PCT 31
  32. 32. Provisional Applications Benefits:   inexpensive   buys 1 year of time after f/d to determine commercial interest & refine invention   “patent pending” status But note:   Must be detailed and descriptive 32
  33. 33. For More Information…   For general IP questions: 33
  34. 34. QUESTIONS ? 34