Slide show on Patent, Trademark, and Copyright protection

1. Patent, Trademark, Copyright
Protection
By
Brett Schenck
www.bschencklaw.com
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2. PATENT BASICS
 A patent grants the right to exclude others from
making, using, offering for sale, or selling the
invention for 20 years from its filing date
 Types of Patents
A. Utility patents - process, machine, article of
manufacture, or composition of matter
B. Design patents - ornamental design for an article of
manufacture (15 years from grant); and
C. Plant patents - asexually reproduction of any
distinct and new variety of plant.
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3. Patentable Subject Matter
 Novel
 Non obviousness (not just combination of elements
A+B=AB, but something new is created Red + Blue=Purple)
 Non obviousness evidence
• Commercial success
• Long felt need
• Failure of others
• Copying of invention
 Application filed before public disclosure
 No Abstract idea
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4. INVENTION DISCLOSURE
 Title, date, and purpose of invention
 Detailed description of the invention (drawings, formulas, flow charts)
 Advantages of the invention
 Possible alternative embodiment of invention
 Invention has been funded by an entity, other than inventor’s employer
 Date or future date of public disclosure of the invention
 Identify technology related to invention
 Potential licensees competitors who may be interest in invention
 Inventorship – must have contributed to at least one claim
 Signed and witnessed
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5. Patent Filing Requirements
 Review patent application including claims
 Make sure application is technically correct
 Make sure that you contribute to at least one claim
 Notify attorney if another inventor contributed to at least
one claim
 Review and sign declaration
 Review and sign assignment
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6. Patent Infringement
 Unauthorized making, using, offering for sale, or selling any patented invention
• Example - Patented artificial joint has titanium and titanium carbide combination in its ceramic.
• Supplier copies and makes and sells it to Hospital, who puts it into patient –all Infringers
 Remedies for Infringement
• Injunction to prevent the continuation of the infringement
• Lost profits that Patentee would have made but for the infringement
• Patentee must show demand for product along with manufacturing and marketing capability to meet demand
• Reasonable royalty rate – used when patent product is not made or sold (e.g. 25% of pretax profits)
• Damages can be awarded up to triple the amount for intentional infringement
• Attorney fees and other lawsuit costs – Average is $1.6 million through the end of discovery and $2.8
million through final disposition
 Apple v. Samsung – 1 billion damage award
 Damages begin when infringer receives actual notice (Patent marking on product,
infringement letter, or filing of infringement lawsuit)
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7. Avoiding Infringement
 Clear Product of Patents
 File patent to protect your invention
 Invalidate Patent (found similar earlier patent or
publication)
 Design around Patent (e.g. artificial joint patent claims
that ceramic material includes alumina. One design
around solution is to use silica in place of alumina)
 Buy patented product
 Submit Inequitable conduct to invalidate Patent– (wrong
inventorship, failed to disclose relevant prior patent or
publication)
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8. TRADEMARK BASICS
 A trademark is a word, slogan, symbol, design,
sound, touch, smell or combination of these
elements, which identifies and distinguishes the
goods or services of one party from others. Can
exclude others from using your trademark on similar
goods or services. Trademark examples:
A. Word mark: IBM
B. Slogan: Don’t Leave Home Without It
C. Design:
D. Shape (3D mark): Coke bottle
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9. TRADEMARK REGISTRATION BENEFITS
 Trademark rights are granted when you use mark.
Unlimited term if using mark. Federal registration
adds these benefits:
A. Nationwide use as of filing date
B. Incontestable after five years - no likelihood of
confusion or descriptiveness challenges
C. Proof that registrant is owner of mark
D. Constructive notice and right to sue in Fed. Court
E. Bar registration of another confusingly similar
mark
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10. TRADEMARK Filing Requirements
 Choose mark that is not generic, descriptive or similar
 Name and address of applicant
 Drawing of mark
 If already using mark –specimen of mark and dates of first
use anywhere and first use in commerce
 If not using mark – declaration that you intend to use
mark, and upon using mark, you must file statement of
use that includes specimen and dates of use
 Government filing fee
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11. COPYRIGHT BASICS
 Copyright protects “original works of authorship”
that are fixed in a tangible form of expression.
Copyrightable works include the following:
 1. literary works (computer programs)
 2. musical works, including any accompanying words
 3 dramatic works, including any music
 4. pantomimes and choreographic works
 5 pictorial, graphic, and sculptural works
 6 motion pictures and other audiovisual works
 7 sound recordings
 8 architectural works

12. COPYRIGHT REGISTRATION BENEFITS
 A copyright is granted when work is created.
Federal registration adds these benefits:
A. Notice to defeat innocent infringer
B. Statutory damages -if made within 3 months of
Pub or prior to start of infringement
C. Right to sue in Court
D. Proof that registrant is owner of copyright
E. Valid Copyright
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13. COPYRIGHT Filing Requirements
 Complete application form
 Deposit a copy of your work in Copyright Office
 Government filing fee
Copyright protection term is life of author plus 70 years
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14. COPYRIGHT NOTICE
 Use of Copyright notice:
 Informs Public that work is protected by copyright
 Identifies copyright owner, and shows the year of
first publication.
 Protects against innocent infringement defense
FORM OF NOTICE
A. The symbol © (the letter C in a circle), or the
word“Copyright” or “Copr.”
B. First Publication Year
C. Owner Name
D. Example: © 2017 Brett Schenck

15. IP Agreements and Miscellaneous
 Indemnification clauses
 Nondisclosure agreements
 Trade secrets
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