Intellectual Property Considerations - From Bench to Market
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Intellectual Property Considerations - From Bench to Market
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This presentation provides an overview of intellectual property rights and a discussion of why you should protect, when you should protect, and how you should protect innovation from bench to market.
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Intellectual Property Considerations - From Bench to Market
- 1. Intellectual Property Considerations – From Bench to Market Kirby Drake ACS National Meeting Fall 2020
- 2. When Should You Protect? • Company formation • Hiring of first employee • Product development • Marketing
- 3. Why Should You Protect? May increase the company’s value May be able to exclude others from practicing the invention, giving you a monopoly Marketing benefits to having IP protection – as viewed by potential customers and competitors
- 4. How Can You Protect IP? • Patents • Trademarks • Trade Secrets • Copyrights
- 5. Trade Secrets • Information • Economic value • Not generally known • Not readily ascertainable • Reasonable efforts to keep secret
- 6. Copyrights Protect “original works of authorship fixed in a tangible medium of expression” Includes o Literary works o Musical works o Dramatic works o Pictorial, graphic and sculptural works o Motion pictures and audiovisual works o Architectural works
- 7. Patents – Constitutionally Provided For “… to promote the progress of science and useful arts.”
- 8. Patent Rights • Right to exclude others from making, using, offering for sale, or selling the invention • 20 Years from date of filing (except for older patents)
- 9. Types of Patent Applications Utility Design Plant
- 10. Utility Patent Applications Provisional Non-Provisional (a/k/a regular utility) Require Detailed Description of Invention Require at least one Claim
- 11. Patentability Must be new/novel Must be non-obvious Must have practical (real-world) utility
- 12. Patent Process Pointers 1. Filing of a Provisional Patent Application Does Not Mean You Have a Patent 2. Requirement to File Non-Provisional Application Within 1 Year to Retain Benefit of Provisional Application 3. Ensuring Sufficiency of Description 4. Importance of Patent Claims 5. Relevance/Emphasis of Prior Art 6. On-Sale Bar
- 13. What Is A Trademark? Symbol used in commerce to indicate source of good or service Takes form of word, phrase, design and/or image Can last forever if mark continues to be used
- 14. Why Are Trademarks So Valuable to Companies? Distinguishes your product from your competitors
- 15. What Makes a “Good” Trademark?
- 16. Why Register a Trademark? Nationwide Protection Constructive Notice of Right to Use Refusal of Later-Filed Applications That Are “Confusingly Similar” Ability to use ® symbol Can obtain registration in a foreign country Statutory damages and attorneys’ fees available in federal litigation relating to infringement
- 17. Trademark – Possible Pitfalls Failure to adequate select enforceable trademark Failure to meet USPTO requirements Failure to adhere to “less is more” principle Failure to maintain or even complete registration
- 18. Questions? Contact Kirby Drake at kirby.drake@klemchuk.com
Editor's Notes
- Various forms of intellectual property. Will briefly touch on trade secrets and copyrights but focus mostly on patents and trademarks here today.
- Trade secrets are generally considered to be information that companies develop and maintain to give them an advantage over their competitors. There is no formal registration requirement for maintaining information as a trade secret as there is for patents or trademarks. The information just must be used continuously in business. There is a 6-factor balancing test used to determine whether information should be afforded trade secret status. These factors include (1) the extent to which the information is known outside the business; (2) the extent to which it is known by employees and others involved in the business; (3) the extent of measures taken to guard the secrecy of the information; (4) the value of the information to the business and to competitors; (5) the amount of effort or money expended in developing the information; and (6) the ease or difficulty with which the information could be properly acquired or duplicated by others. The information need not satisfy all six factors to be afforded trade secret status however. The most important characteristic of a trade secret is found in its name – the information must be kept secret to be maintained as a trade secret. If the information is disclosed outside of limited circumstances such as pursuant to an NDA or within the company in the course of conducting daily business, that disclosure may destroy any trade secret protection. Slide 16: What subject matter/information do companies often keep as trade secrets? Some things include manufacturing processes, manufacturing drawings, software and even chemical processes. Some items such as software or chemical processes may alternatively be protected through patents so a company has to decide which IP route to take. But sometimes there are items that can be protected by trade secrets that cannot (or are very unlikely) to be afforded patent protection. Most companies have concrete items such as customer lists, pricing information, and marketing plans that are often of critical importance to the company. All of these items are things that companies do not want their competitors to know about and they generally take the steps to keep these items secret. The subject matter of patents and trade secrets often have significant overlap in terms of what can be protected. There are several things that may be taken into consideration in determining whether information should be maintained as a trade secret. Some of these factors include how easily a product made by a secret formula may be reverse engineered to determine the formula. If it is easy to reverse engineer but the formula is new and novel, then the formula may be a better candidate for patent protection than trade secret protection. Other considerations may include the type of subject matter/industry involved and perhaps most importantly, how easy is it going to be for the company to keep the trade secret subject matter a secret? For example, is a single recipe required to produce a food product or can the recipe divided into parts? Who within the company needs to know the trade secret to perform their job? Where is the trade secret kept – locked away or on the manufacturing floor? Another issue to consider in the context of trade secret protection is the fact that a trade secret provides only non-exclusive rights. If a competitor independently comes up with the subject matter of your trade secret, you cannot take any action against that competitor. There can be less upfront investment to maintain invention as trade secret; however, loss of trade secret may be financially devastating to company.
- Copyrights protect works of authorship, such as writings, music, and works of art that have been tangibly expressed. Include books, songs, software, architecture. Copyright in work inherently created from moment that work is created. Exclusive rights to reproduce, prepare derivative works, distribute copies, perform or display publicly Copyright lasts 95 years from first publication or 120 years from creation, whichever expires first Copyright protection available to both published and unpublished works Generally, person who creates work inherently owns copyright Authors of joint work are co-owners of copyright, unless they agree otherwise Copyrights in separate contributions to collective work owned by contributors while copyright in collective work belongs to overall creator/commissioner of collective work EXCEPTION: Work is considered “work for hire” Slide 25: Work prepared by employee within scope of his/her employment - belongs to employer Work specially ordered/commissioned for use - belongs to person who commissioned work Parties may expressly agree in contract that work was made for hire Slide 26: Infringement when created work is substantially similar to original work (i.e., average person viewing two works would recognize that artistic expression in one was copied from other (i.e., same “look and feel” as original)) 30% design change rule (the idea that you can avoid infringement if you change 30% of the design) is a MYTH that should be IGNORED Slide 27: Reproduction of particular work may be considered fair use and not infringing such as: criticism, comment, news reporting, teaching, research Fair use considerations: purpose and character of use (commercial or non-profit); nature of copyrighted work; amount and substantiality of portion used; effect of use on market or value of copyrighted work
- The U.S. Constitution gives the Congress the power to pass laws relating to patents. It allows Congress to promote the progress of science and useful arts, by securing for a limited times to authors and inventors, the exclusive right to their respective writings and discoveries.”
- A patent is an official grant by the U.S. government that gives its owner certain rights to an invention. Those include the right to keep others from making, using, offering for sale or selling the invention. A patent lasts for a specific period of time, usually 20 years from the date the application is filed by the inventor. But because it takes an average of three years for the U.S. Trademark and Patent office to act on the applicant, the effective life of a patent is closer to 17 years. A patent represents a bargain made between the government and the inventor. In return for the right to keep others from using the invention, the inventor must enhance the public knowledge of what we sometimes call the “state of the art” by adding something new or useful to it.
- There are 3 basic types of patent applications – utility, design, and plant. We will mostly focus on utility today touching a little bit on design. Plant patent applications do not come up very often so it is good to know about them but we are not going to specifically address them today.
- When it comes to utility patent applications, you can file a provisional application (sometimes known as a placeholder application as it gives you one year from the date of filing to then file a non-provisional application, sometimes referred to as a regular utility application, which will be examined, or your first application may be a non-provisional application. There are few formal requirements for a provisional application so we will spend most of the time looking at the non-provisional utility patent application requirements. The Detailed Description is as it sounds. It provides a more detailed description of the invention than a Summary or Abstract might. It should describe embodiment(s) of invention and method(s) of operation when applicable. It should be specific and describe the invention fully. If drawings are part of application, must include reference to drawing numerals when describing the drawings. It also can include examples (i.e., lab trial results). The claims are what identifies the boundaries of the invention. The claims are what give the public notice of the boundaries of the invention. This can be the hardest part of the application because the language must be precise, and it is usually helpful to have an attorney/agent assist to make examination go more smoothly. The claims must particularly point out and distinctly claim subject matter that applicant regards as invention. Terms and phrases used in claims must find clear support in written description so that meaning of the terms/phrases can be understood by examiner and public. Important to check that the support is present for your claims before filing.
- An invention is a new way of solving a problem, or a useful new machine, manufacturing, or composition of matters. Patentable inventions may span a wide spectrum of novel ideas including devices, chemical compounds, biological materials, research methods and tools, production processes, software or other new products. To qualify for a patent, the invention must be new and useful. Also it must not be obvious to one of ordinary skill in the field.
- Many people are led to believe that filing a provisional patent application equals having patent protection. For example, at one time, at least one of these online services promoted that an inventor could obtain a “Provisional Patent.” But there is no such thing as a “Provisional Patent,” only a provisional patent application. The applicant must file a non-provisional application within 1 year of the provisional application filing date or else the provisional application expires and no patent will issue. Unfortunately, unwary applicants may file a provisional patent application on their own or use one of these services to file a “Provisional Patent” and think they have a patent to enforce or that protects them merely by filing. But all they have is an application that has not been examined for patentability and that is only good for a limited time (up to 1 year). This leads to another pitfall – failure to appreciate the need to convert the provisional application to a non-provisional application within 1 year after filing. If the provisional application is not converted to a non-provisional application, the provisional application will expire. The invention will no longer have “patent pending” status, and the inventor has little recourse to be able to revive the application and attempt to gain protection. The Patent Office does not send any reminders to the patent applicant about this conversion deadline. And even if the applicant knows of the deadline, he/she may not appreciate what needs to be done in order to properly convert a provisional application. In contrast, if the inventor engages a patent attorney/agent to file the provisional application (or at least assist in the conversion process), the patent attorney/agent will docket the appropriate deadlines and generally provide reminders in advance of the deadline. The patent attorney/agent also will provide the inventor with advice as to what may be needed to be done to properly convert the provisional application, more specifically how to draft the claims, how to meet formal drawing requirements, and the effects of adding significant disclosure not previously contained in the provisional application. So the inventor will be aware of what needs to be done and the deadlines for doing so. If an attorney is approached by a person wishing to convert a do-it-yourself provisional patent application, it is critical to ask questions about when the application was filed and understand the level of detail (or lack thereof) contained in the application. This will help the attorney/agent to ensure that any non-provisional application is filed on time and hopefully benefit from the priority filing date associated with the provisional application. This ties in with another pitfall that can arise with respect to both provisional and non-provisional patent applications – the danger of having an improperly written patent application. Another pitfall of using these online services to file a patent application, or filing a patent application by yourself is that an improperly written patent application can be almost as bad as never having filed an application in the first place. While there are many factors that can contribute to a patent application being considered “improperly written,” failure to describe the invention in sufficient detail, failure to claim the invention properly, and over-describing prior art are just a few. If a provisional application does not describe the invention and how to make/use the invention in sufficient detail, and more details are then added to the non-provisional application that more fully describe the invention, it is possible that the non-provisional application may not get the benefit of the provisional application priority filing date. This can be a significant pitfall because the main benefit of filing a provisional application is getting a filing date for priority purposes. If the inventor loses the benefit of that early filing date, then the inventor might as well not have filed a provisional application at all. This can also be a problem with a do-it-yourself non-provisional patent application. If the invention is only described at a very high level in the patent application, the full scope of the invention may not be contained in the application. Accordingly, when the Patent Office examines the application, the details that might otherwise help to distinguish the invention from the prior art may not be contained in the application, and no new matter can be added without filing an entirely new application. So this lack of sufficient detail can doom success of the patent application. Even if not fatal, the applicant may have to file an additional application in order to include the details relevant to patentability, and may lose the benefit of the non-provisional application filing date and the priority filing date of any provisional application. Another area where pitfalls arise concerns the claims contained in a non-provisional application. Patent claims legally define what is, and is not, the invention (i.e., the metes and bounds of the invention, like the property lines). The Patent Office will examine the claims of the patent application to define the scope of protection for an invention. It can be unwise for an applicant to draft its own claims when not trained to do so, and they may not always draft claims that result in a valid patent and with a worthwhile scope of protection. That result may be worse than having no patent at all. Applicants should be encouraged to engage a patent attorney/agent if only just to prepare the claims associated with a non-provisional patent application and later negotiate the claim scope with the patent examiner. Patent attorneys/agents are trained to draft claims and they understand the practices and procedures of the Patent Office. Having a good set of claims in an issued patent is what can make the issued patent valuable, as there is only infringement when all limitations of the patent claims are met, not just based on what is described in the patent application. If the claims are too narrow, the claims may be easy for a potential infringer to design around. Conversely, if the claims that issue are too broad, it may be possible for an accused infringer to seek to invalidate the claims either through the courts or through procedures available in the Patent Office (i.e., reexamination, post-grant review (PGR) and inter partes review (IPR)). Regardless whether someone is filing a provisional or a non-provisional patent application, a common tendency for do-it-yourself patent applicants is to describe the prior art (references that describe what has been done in the past) in a lot of detail, particularly including positive descriptive comments about the prior art. These types of comments can often backfire when the Patent Office later examines the non-provisional application because the applicant’s own admissions about the prior art may provide the examiner with the support needed to reject the claims, even without the examiner performing a search. A better approach is to keep the prior art (or background) section of the patent application to a minimum, while disclosing any relevant references through an Information Disclosure Statement. A patent application should merely indicate what is lacking in the prior art and frame the discussion in the context of what the invention adds or improves upon when compared to the prior art. This may make it less likely that an examiner reject the claims using statements from an inventor’s own patent application. Finally, there is a risk of an on-sale bar that can arise in the United States if you do not file your original application within one year of publicly disclosing the invention, selling the invention, or offering the invention for sale. So, in conclusion, it can be risky to bet the future of what can be a business’ vital assets – its patents– by using doing it yourself in an attempt to save money in the short run. Accordingly, it is often best to consult a patent attorney or agent before putting these valuable assets at risk.
- A trademark is a symbol used in commerce to indicate the source of a good or service. Essentially a trademark is a source identifier for a business. Trademarks can include words, logos, shapes, colors, and combinations of the same. The critical part of a trademark is use. If a trademark continues to be used, it can last forever, and we will discuss a little later, it is necessary to file paperwork to show use periodically.
- All that your trademark represents allows you to add/justify a markup to your price A trademark serves three important purposes: identifies origin of a product/service and identifies the goods/ services of the Company; provides an assurance of quality; and creates and sustains consumer loyalty and brand awareness. Trademarks represent the goodwill & values of the Company and are oftentimes the most valuable asset to a Company.
- In terms of selecting a trademark, there is a sliding scale that indicates the strength of a trademark. As shown here on the slide, generic trademarks are the weakest form of trademarks. Generic trademarks are the common name for a good or service, and an example would be gasoline. Descriptive marks are next on the sliding scale from weakest to strongest. A descriptive trademark is one that describes a quality or characteristic of the good or services to be associated with the mark, and these are the marks that are usually the hardest ones to obtain and enforce, and an example would be TravelCenters of America to describe service stations generally visited across America. Someone who is unfamiliar with trademarks may believe that his/her selected trademark is good because it describes the goods and/or services to be associated with the mark. Similarly, they may believe that the trademark is good because a potential consumer would know what is being sold merely by being presented with the mark. When a descriptive trademark is selected to be protected, there is a risk that the Trademark Office may reject that mark for being too descriptive, leading to no registration at all. It will at least lead to a rejection, and there may be limited options to address the rejection, such as having the trademark placed on the Supplemental Register, but it can end up costing the person more time and money than not having pursued the descriptive trademark in the first place. Arbitrary marks are those marks not readily identified as being related to the good or service. Here, an example is 76 for gas stations. Another example would be Apple in connection with computers or phones. Finally, the strongest trademarks are fanciful trademarks, which are completely made-up words such as Exxon, Kodak, Pepsi, Clorox, and Xerox. To have the best chance of protection, an emerging company will want to try to select arbitrary or fanciful marks for the company name and/or product name.
- It is possible to have a trademark without registering it with the United States Patent and Trademark Office. This is known as a common law trademark, typically signified by a TM after the mark. However, there are advantages to registration. Nationwide Protection – if you can show that your mark has been used across state lines (i.e., in interstate commerce), then you can register and be able to enforce your mark in all states, regardless whether you have used the mark in all states. Constructive Notice of Right to Use – registration puts others on notice of a company’s rights to use the mark and stop others from using Refusal of Later-Filed Applications That Are “Confusingly Similar” – this relates to the constructive notice of right to use because later-filed applications that are similar and cover similar goods/services will not be allowed registration Ability to use ® symbol – this is another aspect of notice; using this symbol is only permitted when a mark has been registered Can obtain registration in a foreign country – you can use your US trademark as a priority document for later registrations in other countries Statutory damages and attorneys’ fees available in federal litigation relating to infringement
- Failure to adequate select enforceable trademark A trademark needs to be distinctive and distinguish the goods or services associated with the mark from those goods or services provided by others. The best way to identify such problems is to carry out a good search prior to filing. Doing this search can be a good financial investment, as it can potentially help to identify potential conflicting marks avoid major legal and other business costs down the road, particularly if it helps to avoid a rebranding campaign. Failure to Meet Trademark Office Requirements Some of the most common mistakes arise with respect to accurately describing the goods and services associated with the mark. This could include exaggeration of the goods and services allegedly associated with the trademark. The goods and services section of a trademark application should describe how the mark is or will be used in commerce. Applicants sometimes tend to list every potential product or service that they can think of being associated with the mark. If the mark is registered for goods and services that are not actually associated with the mark, the applicant may be viewed as having committed fraud on the Trademark Office and it could lead to nullification of the trademark registration in its entirety. On the other hand, applicants sometimes omit goods and services being used in commerce or those where there may be a legitimate intent-to-use. Applicants may not be aware that the description of goods and services in an application cannot be expanded beyond what was presented in the initial filing. While applicants may file additional applications to cover additional goods and services, careful consideration of the description of goods and services prior to the initial filing may save time and money. The bottom line is taking time to confirm the use or potential for use of each item identified in the description may ensure the survival of the trademark registration. Failure to Adhere to the “Less is More” Principle Many applicants make the mistake of filing for protection on the most detailed version of their trademark (i.e., full color logo with business name and slogan). It is possible that applicants do so believing that the detailed version is most likely to be approved for registration or it may be a cost issue (maximizing the filing fee). However, protecting the most detailed version of the trademark (without separately protecting other aspects, such as the logo or the slogan) may dramatically limit the breadth of the registration. This may then affect the applicant’s ability to enforce the trademark later. For example, to prove infringement, the client would have to show the competitor used a confusingly similar name and logo and slogan. While this may be possible to prove, it is less likely that a competitor would use all three components together. On the other hand, if the applicant protects the business name alone, with no particular claim to font or color, the applicant may be in a better position to show a competitor is using a confusingly similar name, even if the competitor uses a drastically different logo. Failure to Complete/Maintain Trademark Registration Many applicants are not aware of what is required to actually have the trademark application proceed to registration, and online services do not always provide the information sufficient for applicants to ensure compliance. Even once the trademark has been registered, some trademark owners may not appreciate the requirements that must be met to maintain a trademark registration. A trademark registration never expires until the owner fails to show continuous use in commerce or the owner fails to renew the trademark.
- Hope that this presentation gives you a flavor of some of the considerations related to different forms of intellectual property protection as you move from bench to market. If you do have questions or would like to discuss further, feel free to email me. Thanks!