Discovering and Protecting Your IP


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Amin Talati’s George Carrera defines and discusses intellectual property assets with a focus on patents, and trademarks, and touching on copyrights, trade secrets and more as it relates to cost effectiveness and generating value in inventions and brands. Mr. Carrera shares how a trademark search may be obtained, what is patentable, and the timelines and costs involved.

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Discovering and Protecting Your IP

  1. 1. Discovering &Discovering & Protecting Your IP :Protecting Your IP : Cost-Effective Ways to Identify and Develop Untapped Intellectual Property Assets in Your Company George M. Carrera, Jr., Registered Patent Agent (USPTO)
  2. 2. Intellectual PropertyIntellectual Property Patents Trademarks Copyrights Trade Secrets Licensing
  3. 3. What are Trademarks?What are Trademarks? • A Brand Name: Words, logos and symbols that signify the source of a product or service • Trademarks: goods • Trade Dress: distinctive packaging or product appearance (“the total image of a product” – size, shape, color, texture, graphics, etc.) • Service Marks: services • Trade name: company name
  4. 4. TM: Dual PurposeTM: Dual Purpose 1. Inform consumers as to the sources of the goods 2. Inform consumers as to the quality of the goods TRADEMARKS SERVE TO SYMBOLIZE THE TRADE REPUTATION AND THE GOOD WILL OF THE PROPRIETOR.
  5. 5. TM: Registration?TM: Registration? • Not required • You can establish rights in a mark based on first use • Advantages to Federal (US) registration: “Although federal registration of a mark is not mandatory, it has several advantages, including notice to the public of the registrant's claim of ownership of the mark, legal presumption of ownership nationwide, and exclusive right to use the mark on or in connection with the goods/services listed in the registration.” (emphasis added)
  6. 6. TM: Practical StepsTM: Practical Steps 1. Identify your Mark 2. Identify your Goods or Services 3. Search databases (; Internet; common law sources) a. Hire a professional b. Ask an attorney 4. File an application (you should use an attorney) a. Based on use in commerce b. Intent to use
  7. 7. TM: ExampleTM: Example 1. Identify your Mark: “JETTISON JUICE” 2. Identify your Goods or Services: sports drink 3. Search databases a. Identify product classes: 5 (dietary supplements, protein shakes, meal replacement shakes), 29 (meats, fruits, vegetables, milk and milk products, soy milk), 30 (coffee, tea, sugar, condiments, etc.), 32 (beers, water, juices, sodas, non-alcoholic beverages), 33 (alcoholic beverages)
  8. 8. TM: Example, cont’d.TM: Example, cont’d. b. Preliminary searches – screen for exact or literal matches in relevant classes 1. TESS (Trademark Electronic Search System) at –Basic, Structured, or Free form 2. Search engines (Google, Bing, etc.) for common law use b. If no exact or literal matches are noted consider having a comprehensive trademark search conducted c. Ask an attorney d. Hire a professional
  9. 9. TM: Example, cont’d.TM: Example, cont’d. 4. File an application* (you should use an attorney) a. Based on use in commerce (provide a specimen, and date of first use in commerce in the U.S.) b. Intent to use (must later provide a specimen) * Can file electronically through the TEAS system (preferred) or via regular U.S. mail
  10. 10. TM: Searching in ‘TESS’TM: Searching in ‘TESS’ • Structured search for JETTISON JUICE • Broad – live mark in any class Jettison[mn] and live[ld] Where [mn] = unpunctuated mark [ld] = mark status as live or dead • Narrow – live mark containing first term in class 32 Jettison[mn] and live[ld] and 032[ic] Where [ic] = international class (must be 3 digits) • Narrowest – live exact match in class 32 “jettison juice”[mn] and live[ld] and 032[ic]
  11. 11. TM: ResourcesTM: Resources • Overview of the trademark process • Search trademarks • Frequently asked questions
  12. 12. TM: Protecting Your RightsTM: Protecting Your Rights • You are responsible for enforcing your rights if you receive a registration, because the USPTO does not "police" the use of marks. • While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark. (source:
  13. 13. ““Top 10” Patent FAQsTop 10” Patent FAQs  Can I patent this formulation?  Do I have to perform a patent search?  How long does patent protection last?  What in the world is considered patentable?  How much does is cost?  How much is it worth?  Can I sell my product (i.e. practice my invention)?  Can I file a patent if I’ve been selling more than 1 year?  Can I file a patent if I’ve been selling for less than 1 year?  Which countries are available for patent protection?
  14. 14. A little about Patents…A little about Patents… • Form of exclusivity • Patent confers a right to exclude • Only Govt-approved monopoly • Worth the investment?
  15. 15. THE BASICSTHE BASICS Patent RequirementsPatent Requirements • New • Useful • Non-Obvious (not done w/ hindsight)
  16. 16. SUBJECT MATTERSUBJECT MATTER What can be Patented?What can be Patented? • Plant, never-before extracted/ extracted components • Purified or enriched extracts • Seeds, GMO’s • New combinations of ingredients • Therapeutic treatments • Therapeutic method of using an old compound • Indirect effect – synergy, potentiation • Manufacturing method • Improvement of existing product, apparatus, or method • Business methods (New standard per S.C. decision In re Bilski – not merely Machine or Transformation test)
  17. 17. For ExampleFor Example  Many historical patents directed to novel hard candy shell (both product and process)  Patent protection dates back to 1940  Developed new product categories  No “candy shell” Mars “vs.” Hershey’s
  18. 18. viavia (5/27/2010) (5/27/2010): Some may wonder if the light coating is like that on M&Ms Premiums. There is a light waxy coating on there, but it’s thinner than the latexy and colorful stuff on the M&Ms Premiums. It’s more like what you’d find on Junior Mints or Whoppers. Just a simple glaze that melts away quickly.
  19. 19. Visual comparison:Visual comparison:
  20. 20. Hershey develops pill-like filmHershey develops pill-like film coating for confectionerycoating for confectionery WO2012/146921WO2012/146921
  21. 21. BeveragesBeverages CategoryCategory Now in marketNow in market Sports & Energy Drinks Liquid Water Enhancers (functional, “fun” flavors) Teas of all types Coffees Fruit/Vegetable blends
  22. 22. BeveragesBeverages CategoryCategory Hybridization
  23. 23. SweetenersSweeteners CategoryCategory Established ProductsEstablished Products Saccharin Sucralose Ace K (Acesulfame) Aspartame
  24. 24. SweetenersSweeteners CategoryCategory Up & ComersUp & Comers Xylitol Maltitol Stevia Rebaudioside Luo Han fruit (case study) Mogroside V
  25. 25. SupplementsSupplements CategoryCategory Sample patentSample patent
  26. 26. Case Study: Luo HanCase Study: Luo Han IP rights in development – patenting activity Mogroside V, luo han fruit component, has been granted GRAS (Generally Regarded as Safe) notification status from the FDA
  27. 27. What is Luo Han?What is Luo Han? monk fruit produced by a plant (Siraitia grosvenorii), which only grows in the northern parts of Guangxi province, in southern China Chemically: contains Mogrosides II-VI (0.5-1% wt. in dried fruit)
  28. 28. What is Luo Han?What is Luo Han? Mogroside V: 300X sucrose
  29. 29. Record of InventionRecord of Invention • Details and describes your idea • E-mail us at • We’ll send you one
  30. 30. Record of InventionRecord of Invention • Inventors need to keep good records and memorialize technical content • May be witnessed and/or notarized
  31. 31. Patent StrategyPatent Strategy What Issue Are You Addressing?What Issue Are You Addressing? What Problem Are You Solving?What Problem Are You Solving? Are You Doing it Better?Are You Doing it Better? • Yes? Then explore your IP options • Efficiency, Economy • You can license technology • Defensive strategy • Blocking strategy
  32. 32. New LawNew Law America Invents Act of 2011 (AIA)America Invents Act of 2011 (AIA) • Signed into law by Pres. Obama on Sept. 16, 2011 (new provisions 9-16-12) • 1st Inventor to file (in effect 3-16-2013) • Inventors no longer can antedate (“swear behind”) a disclosure by another • Blocking purpose: may want to prevent someone else (publishing websites, ROI form) • Prior trade secret users endangered, but retain limited prior user/first user rights
  33. 33. New LawNew Law America Invents Act of 2011 (AIA)America Invents Act of 2011 (AIA) TIMELINESTIMELINES • 1-Year Grace Period exists in U.S. (for publication, sales, or other disclosures) • “Absolute Novelty” applies in many countries (so file first) • 1st Inventor-to-File Regime dawning in U.S. for the first time (March 16, 2013) • Can file a full application within 1 year of “domestic” priority (U.S. Provisional) or foreign priority filing •‘Accelerated’ options carry over (guaranteed 1 year to “final disposition”
  34. 34. TT II MM EE LL II NN EE SS
  35. 35. Other Patent TypesOther Patent Types Design PatentsDesign Patents • Ornamental aspects only • Can be valuable if not a driver of function • Overlooked often, since not given much scope • Damages can be forceful: go straight to profits (contrast util.: reasonable royalty) • Examples: packages/containers; shapes of food • Shining example is iPhone: Apple v. Samsung, (N.D.Cal 2012)
  36. 36. Other Patent TypesOther Patent Types Plant PatentsPlant Patents • Varietals • Hybrids • Asexually reproduced
  37. 37. Timing Considerations &Timing Considerations & Patent Filing StrategiesPatent Filing Strategies • Can prepare botanical extracts or isolate bioactives • Clinical trial (not necessary at outset) • Correlation: in vitro to in vivo (animal or human) • Have window of time before publication
  38. 38. CostsCosts • If have a great product or idea – can go all out with patent investment - Int’l filings (PCT up to 146 countries) • If on a budget – buy time: • don’t need a prior art search (no obligation) • file a quick Provisional application (fees lowered) • don’t need clinical data right away (but put in as much as possible) • If don’t want patent investment – keep as a trade secret (talk w/ an attorney) • Need good employee agreements/ confidentiality or NDAs • Marking issues
  39. 39. You’ve Scoured Your Potential IPYou’ve Scoured Your Potential IP Ideas, But You Don’t Have Anything?Ideas, But You Don’t Have Anything? • License patents and published/pending apps • Partner/JV with industry start-ups • Patent auction sites • Bankruptcy sales • Solve a problem: • Adverse effect resolution • Bad taste/ Taste-masking • Organoleptic properties • Improved flavoring & sweetening • Soluble protein • Soluble fiber
  40. 40. Other Ways to Protect YourOther Ways to Protect Your Product or BrandProduct or Brand • Trademark/ Trade Dress • ITC/ Customs enforcement • Regulatory approvals/notifications - GRAS notifications, New Dietary Ingredient (NDI) notifications, New Drug Applications (NDA) etc. • Clinical Studies • Establish a strong and distinguishable branding presence (i.e. – product/ingredient branding)
  41. 41. A Surprising DevelopmentA Surprising Development • The USPTO’s backlog of unexamined applications dropped by over 100,000 cases in the past year from a starting point of over 700,000 unexamined cases • (Dennis Crouch, 9/5/12) • 2012 grants: 253,000 (a record) • 2013 forecast: >290K
  42. 42. RECAPRECAP • Patent confers a right to exclude (may license some rights back to yourself) • Patent is an asset on your balance sheet • Real assets may be monetized • Freedom-to-Operate/ Clearance ($10K-90K) • Patent infringement litigation is very expensive ($1 MM for a small case, and up) • Enforcement • You don’t have to enforce (foreign jurisdiction questions) • Can obligate another party to enforce (if you license)
  43. 43. Questions?Questions? Feel Free to Contact Us: