Intellectual property law for non ip attorneys

1. INTELLECTUAL
PROPERTY LAW FOR
NON-IP ATTORNEYS
Grant Clayton- Clayton, Howarth &
Cannon
Dave Johnson, Tim Nichols- Workman
Nydegger

2. TRADEMARKS

3. • A trademark or service mark is any word, name,
symbol, phrase, device or combination that is
used or intended to be used to indicate the
source of a seller’s goods and/or services, and
to identify and distinguish the seller’s goods
and/or services from another’s.
What is a trademark?

4. What is a trademark?

5. • FANCIFUL
– ex. GOOGLE or VERIZON
• ARBITRARY
– APPLE (computers) or KAYAK (website)
• SUGGESTIVE
– TRAVELOCITY (travel services)
• DESCRIPTIVE
– PRETZEL THINS (pretzels)
• GENERIC
– TRAMPOLINE (originally a trademark of the Griswold-
Nissen Trampoline & Tumbling Company)
Strong
Weak
Picking a Mark

6. • Use Based Application
– Description of goods and
services
– Pick your class(es)
• $325 per class
– Date(s) of first use
– Specimen
– Declaration
• Using the mark
• Not aware of others
– Same mark, same goods or
services
– Opposition period
• Intent to Use Application
– Description of goods and
services
– Pick your class(es)
• $325 per class
– Declaration
• Bona fide intention to use
• Not aware of others
– Within 6 months
• Statement of Use
– Opposition period
Application Process

7. Design
(color)
Design
(black and
white)
Word
VERIDICUS HEALTH
Priorities

8. “My mark should describe my business”
Misconception #1: Descriptive is good

9. Misconception #1: Descriptive is good

10. “I have a trademark registration, I own the mark”
Misconception #2: Registration=exclusive ownership

11. Feeb
Shoes
Coats
Online retail
store
services
Pants
Backpacks
Misconception #2: Registration=exclusive ownership

12. “I have a trademark registration, I can use the
mark”
Misconception #3: Registration=exclusive right to use

13. Third party
begins use
Date of
first use
File
trademark
application
Registration
approved
PRIORITY IS KEY!
Misconception #3: Registration=exclusive right to use

14. PATENTS

15. • A patent is a property right, granted by the
government, which allows the owner of the patent
to prevent others from making, using, selling, or
importing the invention for a limited period of time.
What is a patent?

16. Claimed Invention

17. • Utility Patent
• Design Patent
• Plant Patent
Three types of patents
What can be patented?

18. • Utility Patent
– 20-year term (from filing)
U.S. Patent 5,996,127
What can be patented?

19. • The claimed invention must be directed to one of
four patent-eligible subject matter categories
– Process: an act, or a series of acts or steps
– Machine: a concrete thing, consisting of parts
– Manufacture: an article produced from raw or
prepared materials and giving to such
materials new qualities, properties, forms, etc.
– Composition of matter: any compositions of
two or more substances and any composite
articles
What can be patented?

20. • The claimed invention cannot wholly embrace a
judicially recognized exception
– Laws of nature
– Physical phenomena
– Abstract ideas
What can be patented?

21. • Design Patent
– 15-year term (from issue)
– Ornamental designs for articles
of manufacture
• Shape/configuration; and/or
• Surface ornamentation
What can be patented?

22. • Plant Patent
– 20-year term (from filing)
– Asexually reproduced
plants
What can be patented?

23. • Patentability- the ability of an invention to satisfy
the legal requirements for obtaining a patent.
• Infringement- the unauthorized making, using,
selling, or offering for sale of a patented invention
within the United States, or importing into the
United States a patented invention during the term
of the patent.
Patentability vs. Infringement

24. Jason Pam
Example-
Patentability vs. Infringement

25. HOW CAN YOU HELP PROTECT YOUR CLIENT’S
RIGHTS?

26. The United States is now a first-to-file system
Protecting your client’s patent rights

27. There are time limits for filing a patent
• Strict and unforgiving time deadlines apply to
establishing your client’s patent rights
Protecting your client’s patent rights

28. Foreign patents must be pursued at roughly the
same time as a U.S. patent
• If you wait until you get your U.S. patent, it will be
too late to apply in other countries
Protecting your client’s patent rights

29. What you file is as important as when you file
• A patent application is a complex document that
describes an invention in legal and technical terms
Protecting your client’s patent rights

30. Not all patents are created equal
• It is important to do some due diligence to find out
what a patent really stands for
Protecting your client’s patent rights

31. If your client buys a patent, record the assignment
document in the USPTO
• If an assignment is not recorded within 3 months
after signing, the assignee stands at risk of having
its rights subordinated to a subsequent bona fide
purchaser or lender acting without notice of the
assignment. See 35 USC 261, Para. 4
Protecting your client’s patent rights

32. What can be recorded in the USPTO?
• Just about anything
– Assignments
– Notes and other security interests
– Wills
– Letters disputing ownership
Protecting your client’s patent rights