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USPTO - IP Strategy IS a Business Strategy


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On October 3, 2018, John Cabeca, West Coast Director of the Silicon Valley USPTO presented at CRASHSpace on Intellectual Property topics in relation to business strategy.

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USPTO - IP Strategy IS a Business Strategy

  1. 1. IP Strategy IS a Business Strategy John Cabeca Director, West Coast Region United States Patent and Trademark Office CrashSpace October 3, 2018
  2. 2. What is the USPTO? The USPTO is the Federal agency that grants U.S. patents and registers trademarks. The Agency also advises the President and Federal agencies on intellectual property (IP) policy, protection, and enforcement, and promotes stronger and more effective IP protection around the world. Mission: Fostering innovation, competitiveness and economic growth, domestically and abroad to deliver high quality and timely examination of patent and trademark applications, guiding domestic and international intellectual property policy, and delivering intellectual property information and education worldwide, with a highly skilled, diverse workforce. IP and the Economy 27.9M IP Intensive Jobs (2014) 38.2% IP Intensive Industries share of Total US GDP (2014) $6.6 trillion Value Add of IP-intensive Industries (2014) $1,312/week (46% higher) Avg. weekly wages for workers in IP-intensive industries $115.2 billion Revenue specific to the licensing of IP rights totaled (2012) 28 Industries Deriving revenues from licensing
  3. 3. 0 2000000 4000000 6000000 8000000 10000000 12000000 1800 1850 1900 1950 2000 2050 GrantedPatents Years Patent Growth Over Time
  4. 4. The Role of the Patent System Encourage Inventions Protect Inventions Promote commercialization and application of invention Accelerate the commercialization of invention to the whole society IP Strategy IS a Business Strategy IP: • Is attractive to investors and buyers • Deters infringement lawsuits • Can increase leveraging power – Mergers and acquisitions • Is a property right than can add value to a company’s assets • Is Global
  5. 5. Anecdotes for Developing an IP Strategy • Assess your company’s IP assets and prioritize • Know your competition • What’s the pace of innovation and opportunities for growth? • Determine the best way to protect your IP • Develop a plan, set goals and implement • Get help! What type of IP protection do you need? • Patents • Trademarks and servicemarks • Copyrights • Trade secrets
  6. 6. Types of Intellectual Property Overview of Intellectual Property What’s Protected? Examples Protection Lasts for: Utility Patent Inventions iPod, chemical fertilizer, process of manipulating genetic traits in mice 20 years from the date of filing regular patent application Design Patent Ornamental (non functional) designs Unique shape of electric guitar, design for a lamp 15 years Copyright Books, photos, music, fine art, graphic images, videos, films, architecture, computer programs Michael Jackson’s Thriller (music, artwork and video), Windows operating system The life of the author plus 70 years (or some works, 95 years from pub., and others 120 years from creation) Trade Secret Formulas, methods, devices or compilations of information which is confidential and gives a business an advantage Coca-Cola formula, survey methods used by a pollster, new invention for which patent application has not been filed As long as information remains confidential and functions as a trade secret Trademark Words, symbols, logos, designs, or slogans that identify and distinguish products or services Coca-Cola name and distinctive logo, Pillsbury doughboy character As long as mark is in continuous use in connection with goods or services – renew by year 6, then at year 10, then every 10 years
  7. 7. Can you find the IP in a mobile phone? Trademarks: • Made by "Nokia" • Product "N8" • Software by Microsoft “Windows“ Patents: • Data-processing methods • Semiconductor circuits • Chemical compounds • Battery/Power Control • Antenna • Optics Copyrights: • Software code • Instruction manual • Ringtone • … Trade secrets: • ??? Designs (some of them registered): • Form of overall phone • Arrangement of buttons in oval shape • Three-dimensional wave form of buttons • Sliding screen © Nokia Trademark Definition Any word, slogan, symbol, design, or combination of these that: 1. Identifies the source of your goods and services and 2. Distinguishes them from the goods and services of another party
  8. 8. Trademark Definition Any word, slogan, symbol, design, or combination of these Can also be a sound, color, or smell Types of Trademarks Word Mark COCA-COLA Special Form Mark Composite Mark Design Mark
  9. 9. What do Trademarks offer? • Brand recognition – distinguishing goods or services from competitors in the marketplace • Public notice of ownership - exclusive right to use • Right to enforce nationally and bring legal action in federal courts • Use of federal Trademark registration symbol ® • Right to record mark with Customs • Serve as basis for foreign filing • Publication in U.S. Trademark database 18 Strength of Mark - Determining Registrability and Protectability
  10. 10. What is a Patent? • A Property Right – Right to exclude others from making, using, selling, offering for sale or importing the claimed invention – Limited term – Territorial: protection only in territory that granted patent; NO world-wide patent
  11. 11. The Peoples’ Benefit To ensure that investment of time and money is rewarded to continue future inventive stimulation – Patent gives inventor limited rights – 20 Year Term Public is provided disclosure of how to use and make invention – Patenting requires publication – Accelerates development – Strengthens national economy United States is a First Inventor to File System! • Looking for international protection? – You’ll want to file before public disclosure • Only want US protection? – You can file within one year after public disclosure When should you file a patent application?
  12. 12. What are the risks of disclosure? • What can I say before filing? • When do I know I’ve said too much? • Disclosure vs. Sale – Crowdfunding Campaigns • Can’t I just keep it secret? Examples of Public Disclosure: • displaying your invention at a trade show, • posting your invention on the Internet • offering to sell your invention • a description of your invention in a newspaper or journal article, or • publicly demonstrating your invention. The Path to a Patent NEW IDEA? PROVISIONAL APPLICATION (OPTIONAL) NON- PROVISIONAL APPLICATION (UTILITY) PATENT! ONE YEAR! TWENTY YEARS
  13. 13. Provisional Utility Applications • Simplified filing requirements • Items required: 1. Specification - CLEARLY DESCRIBED - in compliance with 35 USC 112, Paragraph (a) • Same disclosure requirement as non-provisional • Enabled, Written Description 2. Drawings (needed in almost all cases) 3. Filing fee 4. Cover Sheet identifying Provisional Application 26 What is Patentable? NEW, NONOBVIOUS, USEFUL, & CLEARLY DESCRIBED Method of using Chemical Compos- ition Method of making Product Improve- ments thereof
  14. 14. Patent “Claims” The “heart” of the patent grant Specific definition of the invention Metes and bounds of the patent coverage Patent Claim Scope Invention Too Broad/General Not valuable Not patentable Too Specific
  15. 15. Patent Claim Example Phone Laptop Battery Suitcase Phone Laptop Suitcase Phone Laptop Suitcase Laptop Suitcase? Guide to Resources Helping Applicants
  16. 16. USPTO Offices Midwest – Detroit, MI – Elijah J. McCoy – Opened July 2012 Rocky Mountain – Denver, CO – Byron G. Rogers Federal Building – Opened July 2014 West Coast – Silicon Valley – San Jose City Hall – Opened October 2015 Texas – Dallas, TX – Terminal Annex Federal Building – Opened Nov. 2015
  17. 17. Silicon Valley has long acted as the world’s innovation incubator, with 1 in 8 patents issued to U.S. applicants from the region. Fueling dreams, California also leads the country as the state with the most issued patents in the high tech and biotechnology industries. Outreach Services: • Walk-in services to obtain information and assistance on IP • Workstations for searching patents and trademarks • Interview rooms to connect applicants to examiners working in the region, at HQ or across the country • Office hours with USPTO experts and strategic partners like Small Business Administration and the Export Assistance Center • Educational Programs for the innovation ecosystem
  18. 18. Patent Specialist 1-on-1 Meetings Reserve a meeting with a patent specialist! • In-person assistance intended for pro se applicants • Discuss different forms of IP, patent application process, prior art searches, and available resources • No legal or business advice can be provided Public Interview Rooms Connect and collaborate with patent examiners. • Rooms are equipped with multiple videoconferencing systems and HD document camera • Replicates in-person experience between applicant and patent examiner • On-site Interview Specialists available to assist with IT equipment and to help ensure interview goes smoothly
  19. 19. Universal Public Work Stations (UPWS) Public access to patent and trademark databases, including search tools only available at USPTO headquarters, regional offices, and Patent and Trademark Resource Centers (PTRCs). PubWEST & PubEAST: • Public versions of the Web-based Examiner Search Tool and Examiner Assisted Search Tool • Developed for USPTO patent examiners • Public access to many search features patent examiners use Patent Pro Bono Program In California: California Lawyers for the Arts www.calawyersforthearts .org/CIAP File and Prosecute Patent Applications: The Program matches financially under- resourced inventors and small businesses with registered patent attorneys. - 22 regional programs across the country provide matching services.
  20. 20. Allows students in a participating law school’s clinic program to practice before the USPTO under the strict guidance of a Law School Faculty Clinic Supervisor. Law School Clinic Certification Program In California • University of San Francisco School of Law • Lincoln Law School of San Jose • University of California, Los Angeles School of Law • Thomas Jefferson School of Law • California Western School of Law 18 7 16 49 32 Nationwide network of public, state and academic libraries designated by the USPTO to support intellectual property needs of the public. Patent and Trademark Resource Centers (PTRC)
  21. 21. Micro Entity Status • 75% off most patent fees • Low cost submission to establish filing date – Provisional Application Filing Fees • $140 small entity • $70 micro entity • Micro entity certifies that he/she: – Qualifies as a small entity (less than 500 employees); – Has not been named as an inventor on more than 4 previously filed patent applications; – Did not, in calendar year preceding the calendar year in which the applicable fee is paid, have a gross income exceeding 3 times median household income; and – Has not assigned, granted, or conveyed (and is not under obligation to do so) a license or other ownership interest in the application concerned to an entity that, in calendar year preceding the calendar year in which applicable fee is paid, had a gross income exceeding 3 times the median household income. Need Patent Protection Fast? Need to FAST track your patent? Use Track One! Move your ideas quickly with USPTO's Track One
  22. 22. Resources Helpline: 1-800-PTO-9199 - Utility Patent Application Guide: - Patent Process: - Patent Search Guide: - Trademark Assistance Center & Help Videos: - IP Awareness Assessment Tool: - Inventor and Entrepreneur Resources: - Pro Se Assistance: - Micro Entity Limit: - Patent Pro Bono help and video: - First Inventor to File: - Law School Clinic Program: Thank You