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presents:
Intellectual
Property 101
© 2015 Fredrikson & Byron, P.A.
What is Intellectual Property?
Tangible creations of the mind
which federal, state, and international
laws protect by gran...
Four Branches of Intellectual
Property Law
 Patent
 Trademark
 Trade Secret
 Copyright
© 2015 Fredrikson & Byron, P.A.
What does each area of IP protect?
 Patent: “inventions” – apparatus, process,
business method, new material composition
...
Patents
© 2015 Fredrikson & Byron, P.A.
How do you get a Patent?
Must have a patentable idea
– New
– Useful
– Nonobvious
Must “reduce invention to practice”
o e...
Types of Patents
• Utility: a new and useful process, machine,
article of manufacture, or composition of matter.
• Plant: ...
If you file for a patent . . .
• You are entering an agreement with
the United States Patent Office:
full disclosure
in ex...
What Rights does the limited
“monopoly” give you?
• The right to exclude others from
– making,
– using,
– offering for sal...
Hey, what about success??
• Not a GOLDEN TICKET
• A Patent gives you
–the legal grounds to
STOP someone else from
making y...
Success Comes through
Having a Good Business Plan
• The Patent can protect your core
technology
Manufacturing?
Licensing...
So how long does it take and
much does it cost?
 Utility and Plant Patents:
Prior Art Search: $2k-$5k (recommended)
US: 3...
Trade Secrets
© 2015 Fredrikson & Byron, P.A.
What is a Trade Secret?
 Confidential information
 Secret Processes
 Secret Recipes
 Secret Formulas
 Secret Methods ...
Famous Trade Secrets
© 2015 Fredrikson & Byron, P.A.
 How?
 Labeling documents
 Secure facilities
 Nondisclosure and
confidentiality contracts
 Confidentiality
procedures...
How much do Trade Secrets Cost
and how long do they last?
• Both are up to you:
 Cost is a business decision
 Duration i...
Copyrights
© 2015 Fredrikson & Byron, P.A.
What is Copyright?
Copyright is a property right in a
work of creative expression,
ranging from a brochure, to
music, to v...
The Purpose of Copyright law
Constitutional Origin – Article I, section 8:
Copyright is a Congressional Power
“To promote ...
Works of Creative Expression
that are Copyrightable
• Textual works
(fiction and non-fiction)
• Photographs
• Pictorial an...
Qualifying for Copyright
Protection?
To be copyrightable, a work –
 Must fall within a categorical type
recognized by Con...
If a work qualifies for copyright,
how long does the protection last?
Individual author:
until 70 years after death
 Cor...
What does it mean to own a
copyright?
It means you own five separate rights:
♦ Right to copy or reproduce
♦ Right to distr...
How do I become a copyright
owner?
Ownership rights are created when the
finished work is fixed in a tangible medium.
♦ Ow...
Copyright Registration Benefits
♦ If you want to sue someone for copyright
infringement, you need to register first.
So, b...
Copyright Registration Benefits
♦ If the infringement occurs after registration, the
copyright owner can request statutory...
Copyright Registration Benefits
♦ If the infringement occurs before registration,
the copyright owner only qualifies for -...
Copyright Registration Benefits
♦ Registration increases the value of the
registered work as an asset of your business.
– ...
So, Copyright Registration . . .
Is an inexpensive investment
which increases the value of the ASSET
and provides a
powerf...
Trademarks
© 2015 Fredrikson & Byron, P.A.
What is a Trademark?
 a word, phrase, or symbol (or
combinations)
 which serve to indicate the source of
goods or servic...
How can I become a
Trademark Owner?
The first person to use a mark in
commerce is considered to be the
owner of the mark....
!evitiutni-retnuoc s’tahT
What?!
You’re saying that I
don’t have to register a
trademark to own it?
But that’s counter-
in...
Some well known trademarks
© 2015 Fredrikson & Byron, P.A.
Common Law Trademarks
• Unregistered common law marks are enforceable
 under federal Lanham Trademark Act
 under state u...
® Benefits of Federal Registration ®
 “Prima facie” evidence of ownership of mark.
 Presumption of exclusive rights nati...
Ok, how much does it cost
and how long does it take?
• Approx $900 - $2500 to obtain
Federal Registration in one class of
...
• Federal registration = 10 yrs
 Sixth Year Affidavit of
Continuing Use
 Can renew in 9th year for 10
more years
 Can b...
How long can trademarks last?
© 2015 Fredrikson & Byron, P.A.
Discussion
Scenarios
© 2015 Fredrikson & Byron, P.A.
Scenario #1
• My grandmother, an amazing self-taught pastry
chef, recently passed away.
• She bequeathed to me her pie cru...
Scenario #1 discussion
• Copyright protection not available
– The ingredient components of recipes are
functional and do n...
Scenario #1 discussion (cont.)
• Trademark issue: “descriptive mark”
– Probably will be refused by USPTO because it
descri...
Scenario #1 discussion (cont)
• May be registrable, but may have to amend
application to Supplemental Register
– Principal...
Scenario #2
I am a mystic, and I am partnering with a yoga
instructor and a psychologist to develop an
online corporate cu...
Scenario #2 discussion
• Patent protection for business method
or software process?
– Need to consult patent attorney for ...
Scenario #3
 My colleague, a perfume expert, and I have
spent 30 years working for Revlon and now
we want to use our expe...
Scenario #3 discussion
• Trade Secret Issues on Revlon Departure
– What does employment agreement say?
• Trade Secrets own...
Scenario #4
o With a handshake, I hired an artistic web
designer to build a site for my startup.
He created lots of unique...
Scenario #4 discussion
• Very common copyright problem
– Need written assignment agreement
– Specific copyright conveyance...
Scenario #5
• My husband and I are avid runners, and we have
developed a new athletic shoe sole that prevents knee
injurie...
Scenario #5 discussion
• Talk to patent atty to determine
options!
• Twelve month deadline for filing your
non-provisional...
And . . . feel free to
contact the SURGE group
with questions.
Steven E. Helland John C. Pickerill
shelland@fredlaw.com jp...
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SURGE: Intellectual Property 101 for Start Ups

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SURGE: Intellectual Property 101 for Start Ups

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SURGE: Intellectual Property 101 for Start Ups

  1. 1. presents:
  2. 2. Intellectual Property 101 © 2015 Fredrikson & Byron, P.A.
  3. 3. What is Intellectual Property? Tangible creations of the mind which federal, state, and international laws protect by granting the creator ownership rights in the created assets. © 2015 Fredrikson & Byron, P.A.
  4. 4. Four Branches of Intellectual Property Law  Patent  Trademark  Trade Secret  Copyright © 2015 Fredrikson & Byron, P.A.
  5. 5. What does each area of IP protect?  Patent: “inventions” – apparatus, process, business method, new material composition  Trademark: words and symbols used to identify the source of goods or services. Think “brand.”  Trade Secret: secret information that gives the owner a competitive edge.  Copyright: creative expressions ranging from text and video to music, paintings, and even software code. © 2015 Fredrikson & Byron, P.A.
  6. 6. Patents © 2015 Fredrikson & Byron, P.A.
  7. 7. How do you get a Patent? Must have a patentable idea – New – Useful – Nonobvious Must “reduce invention to practice” o either actual – by making prototype o or constructive – by filing a patent app that will allow someone skilled in the art to make your invention © 2015 Fredrikson & Byron, P.A.
  8. 8. Types of Patents • Utility: a new and useful process, machine, article of manufacture, or composition of matter. • Plant: invention and asexual reproduction of any distinct and new variety of plant. • Design: new, original, and ornamental design for article of manufacture. © 2015 Fredrikson & Byron, P.A.
  9. 9. If you file for a patent . . . • You are entering an agreement with the United States Patent Office: full disclosure in exchange for “monopoly” of rights  20 years for utility and plant patents  14 years for design patents © 2015 Fredrikson & Byron, P.A.
  10. 10. What Rights does the limited “monopoly” give you? • The right to exclude others from – making, – using, – offering for sale, or – selling the invention in the USA • The right to prevent others from importing the invention into the USA © 2015 Fredrikson & Byron, P.A.
  11. 11. Hey, what about success?? • Not a GOLDEN TICKET • A Patent gives you –the legal grounds to STOP someone else from making your invention, –Not a period in which you are guaranteed to make money! © 2015 Fredrikson & Byron, P.A.
  12. 12. Success Comes through Having a Good Business Plan • The Patent can protect your core technology Manufacturing? Licensing? • Know your market! Sail Reefing Machine © 2015 Fredrikson & Byron, P.A.
  13. 13. So how long does it take and much does it cost?  Utility and Plant Patents: Prior Art Search: $2k-$5k (recommended) US: 3-4 years, $8k - $30k Global: 3-7 years, up to $100k  Design Patents: 1-2 years, $1k-$2k © 2015 Fredrikson & Byron, P.A.
  14. 14. Trade Secrets © 2015 Fredrikson & Byron, P.A.
  15. 15. What is a Trade Secret?  Confidential information  Secret Processes  Secret Recipes  Secret Formulas  Secret Methods of operation  Secret Systems of operation which you protect and regard as proprietary and which give you a competitive advantage. © 2015 Fredrikson & Byron, P.A.
  16. 16. Famous Trade Secrets © 2015 Fredrikson & Byron, P.A.
  17. 17.  How?  Labeling documents  Secure facilities  Nondisclosure and confidentiality contracts  Confidentiality procedures  Employee training No federal registration process for trade secrets! You need to keep it secret ! How can I protect a Trade Secret? © 2015 Fredrikson & Byron, P.A.
  18. 18. How much do Trade Secrets Cost and how long do they last? • Both are up to you:  Cost is a business decision  Duration is a business decision  Trade Secrets last as long as they are kept secret The cost of protecting a trade secret and the duration of a trade secret are determinations made by the owner. © 2015 Fredrikson & Byron, P.A.
  19. 19. Copyrights © 2015 Fredrikson & Byron, P.A.
  20. 20. What is Copyright? Copyright is a property right in a work of creative expression, ranging from a brochure, to music, to video, to software. Copyright law protects the integrity of a work and provides grounds for enforcing ownership rights against unauthorized uses or sale of the work. © 2015 Fredrikson & Byron, P.A.
  21. 21. The Purpose of Copyright law Constitutional Origin – Article I, section 8: Copyright is a Congressional Power “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries” Balancing Policy: Individual rights and the Public Domain – The needs of the many and the needs of the few, or the one © 2015 Fredrikson & Byron, P.A.
  22. 22. Works of Creative Expression that are Copyrightable • Textual works (fiction and non-fiction) • Photographs • Pictorial and Graphic artworks • Choreography • Software code (source and object code) • Sculptural works • Film and video • Sound recordings • Multimedia • Websites • Architecture • Architectural Plans © 2015 Fredrikson & Byron, P.A.
  23. 23. Qualifying for Copyright Protection? To be copyrightable, a work –  Must fall within a categorical type recognized by Congress as copyrightable.  Must be “fixed in tangible medium.”  Must have at least a minimum amount of creativity – the threshold is low. It does not need to be “good.” © 2015 Fredrikson & Byron, P.A.
  24. 24. If a work qualifies for copyright, how long does the protection last? Individual author: until 70 years after death  Corporate author: for 95 years after publication, or for 120 years after creation, whichever expires first. © 2015 Fredrikson & Byron, P.A.
  25. 25. What does it mean to own a copyright? It means you own five separate rights: ♦ Right to copy or reproduce ♦ Right to distribute or publish ♦ Right to display ♦ Right to perform (if applicable) ♦ Right to make derivative works © 2015 Fredrikson & Byron, P.A.
  26. 26. How do I become a copyright owner? Ownership rights are created when the finished work is fixed in a tangible medium. ♦ Ownership rights arise in the individual author / creator, unless – • An agreement transfers ownership upon creation; or • Work is corporate asset created by an employee. ♦ Registration is not required for ownership. But registration gives you additional rights and powers. © 2015 Fredrikson & Byron, P.A.
  27. 27. Copyright Registration Benefits ♦ If you want to sue someone for copyright infringement, you need to register first. So, better sooner than later: • Normal online filing fees at USCO: $35 for work by an individual $55 for work by corporate entity. © 2015 Fredrikson & Byron, P.A.
  28. 28. Copyright Registration Benefits ♦ If the infringement occurs after registration, the copyright owner can request statutory damages. • $750 to $30,000 per act • Can be increased to $150,000 per act if court finds infringement was “willful” © 2015 Fredrikson & Byron, P.A.
  29. 29. Copyright Registration Benefits ♦ If the infringement occurs before registration, the copyright owner only qualifies for -- • actual damages suffered, and • infringer’s profits →Difficult and costly to prove! → Plus, you still have to register before you can file suit to enforce your copyright! © 2015 Fredrikson & Byron, P.A.
  30. 30. Copyright Registration Benefits ♦ Registration increases the value of the registered work as an asset of your business. – Joins your line item intangible assets – More easily appraisable – Looks better to banks when you seek loans – Increases overall value of business in sale or merger circumstances © 2015 Fredrikson & Byron, P.A.
  31. 31. So, Copyright Registration . . . Is an inexpensive investment which increases the value of the ASSET and provides a powerful ENFORCEMENT Tool © 2015 Fredrikson & Byron, P.A.
  32. 32. Trademarks © 2015 Fredrikson & Byron, P.A.
  33. 33. What is a Trademark?  a word, phrase, or symbol (or combinations)  which serve to indicate the source of goods or services, and  distinguish those goods or services from others in the marketplace. © 2015 Fredrikson & Byron, P.A.
  34. 34. How can I become a Trademark Owner? The first person to use a mark in commerce is considered to be the owner of the mark. Registration is not a requirement for trademark ownership.  Registration enhances ownership rights but does not create them. © 2015 Fredrikson & Byron, P.A.
  35. 35. !evitiutni-retnuoc s’tahT What?! You’re saying that I don’t have to register a trademark to own it? But that’s counter- intuitive! Ok, so why bother? That’s right. Yes, but good policy. © 2015 Fredrikson & Byron, P.A.
  36. 36. Some well known trademarks © 2015 Fredrikson & Byron, P.A.
  37. 37. Common Law Trademarks • Unregistered common law marks are enforceable  under federal Lanham Trademark Act  under state unfair competition laws. • Use “TM” with common law marks to indicate  That word, phrase or symbol is in fact a trademark, and  That you exert proprietary ownership of mark  To create consumer awareness of the mark © 2015 Fredrikson & Byron, P.A.
  38. 38. ® Benefits of Federal Registration ®  “Prima facie” evidence of ownership of mark.  Presumption of exclusive rights nationwide.  Can prevent federal registration of similar marks.  Federal Court Jurisdiction for disputes  Increase the value of the trademark asset  Easier to attack cybersquatters  Easier to license (for merchandising, etc.)  Can use the ® symbol with mark! © 2015 Fredrikson & Byron, P.A.
  39. 39. Ok, how much does it cost and how long does it take? • Approx $900 - $2500 to obtain Federal Registration in one class of goods or services o Includes Searching and filing app o Official filing fee $225-$325 • 12 – 15 months from filing to registration © 2015 Fredrikson & Byron, P.A.
  40. 40. • Federal registration = 10 yrs  Sixth Year Affidavit of Continuing Use  Can renew in 9th year for 10 more years  Can be renewed every ten years (“forever”) as long as mark is in use in commerce How long does a Federal Registration last? © 2015 Fredrikson & Byron, P.A.
  41. 41. How long can trademarks last? © 2015 Fredrikson & Byron, P.A.
  42. 42. Discussion Scenarios © 2015 Fredrikson & Byron, P.A.
  43. 43. Scenario #1 • My grandmother, an amazing self-taught pastry chef, recently passed away. • She bequeathed to me her pie crust recipes, which she wrote down but never showed to anyone else. • I want to start a bakery business in honor of her and inspired by her.  Should I copyright the recipes? Can I brand it “Grammie Helgison’s Awesomely Delicious Pies”? © 2015 Fredrikson & Byron, P.A.
  44. 44. Scenario #1 discussion • Copyright protection not available – The ingredient components of recipes are functional and do not qualify – Descriptive portions may be copyrightable • Classic trade secret scenario – Make recipes the core business assets – Put procedures in place to preserve secrets: employee training, etc. © 2015 Fredrikson & Byron, P.A.
  45. 45. Scenario #1 discussion (cont.) • Trademark issue: “descriptive mark” – Probably will be refused by USPTO because it describes the goods and is “laudatory” • Spectrum of distinctiveness: – Fanciful: Kodak, Häagen-Dazs – Arbitrary: Nike, Apple – Suggestive: Google, ArmorAll, Kleenex – Descriptive: Holiday Inn, Windows – Generic: Chair for furniture, Apple for apples • Generic terms cannot function as marks © 2015 Fredrikson & Byron, P.A.
  46. 46. Scenario #1 discussion (cont) • May be registrable, but may have to amend application to Supplemental Register – Principal Register: inherently distinctive marks – Supplemental Register: descriptive marks capable of acquiring distinctiveness • After five years of continuous use, can take advantage of statutory presumption of acquired distinctiveness and refile for registration on Principal Register © 2015 Fredrikson & Byron, P.A.
  47. 47. Scenario #2 I am a mystic, and I am partnering with a yoga instructor and a psychologist to develop an online corporate culture training curriculum focused on spiritual wellness, physical fitness, and compassion awareness in the workplace, all with the goal of increasing productivity.  Can we patent our idea? © 2015 Fredrikson & Byron, P.A.
  48. 48. Scenario #2 discussion • Patent protection for business method or software process? – Need to consult patent attorney for state of eligibility after recent Sup.Ct. decisions – Lack of clarity in the field creates risk. – Focus resources on building business instead of on defending against infringers • Is copyright protection a possibility? – Yes, but a joint ownership agreement will probably be needed. © 2015 Fredrikson & Byron, P.A.
  49. 49. Scenario #3  My colleague, a perfume expert, and I have spent 30 years working for Revlon and now we want to use our expertise to start our own B2B cosmetics consulting firm.  We want to hire college grads with energy but not experience to do the legwork. What should we do to protect ourselves? Can we name the company and the services “ExRevloners Consulting”? © 2015 Fredrikson & Byron, P.A.
  50. 50. Scenario #3 discussion • Trade Secret Issues on Revlon Departure – What does employment agreement say? • Trade Secrets owned by Revlon? • Non-compete provision? B2B okay? • Customer lists and contacts? • Trade Secret Issues for new employees – Procedures, security, employee training • Trademark issue – Trading off of Revlon’s goodwill – Infringement concern © 2015 Fredrikson & Byron, P.A.
  51. 51. Scenario #4 o With a handshake, I hired an artistic web designer to build a site for my startup. He created lots of unique graphics to give my website a unique look and feel. o I paid him for his work. o Six months later, I saw the same unique graphics on another website! o Can I sue him and get my money back? © 2015 Fredrikson & Byron, P.A.
  52. 52. Scenario #4 discussion • Very common copyright problem – Need written assignment agreement – Specific copyright conveyance language must be included or copyright remains with the creator • Avoid “work made for hire” language – Unless applicable – very specific! ask atty! – Must (1) be in writing, (2) say “work made for hire”, (3) be signed by both parties, (3) before work is done. © 2015 Fredrikson & Byron, P.A.
  53. 53. Scenario #5 • My husband and I are avid runners, and we have developed a new athletic shoe sole that prevents knee injuries. • Six months ago, we prepared and filed a provisional patent application for our invention. • I just happened to see that Google has a patent search tool, and when I searched for “shoe sole patents”, I got over 2 million hits.  Does this mean our patent application will be rejected?  What should we do now? © 2015 Fredrikson & Byron, P.A.
  54. 54. Scenario #5 discussion • Talk to patent atty to determine options! • Twelve month deadline for filing your non-provisional application cannot be extended! © 2015 Fredrikson & Byron, P.A.
  55. 55. And . . . feel free to contact the SURGE group with questions. Steven E. Helland John C. Pickerill shelland@fredlaw.com jpickerill@fredlaw.com 612.492.7113 612.492.7306 www.fredlaw.com

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