Patents - Overview• What is capable of being patented? • Any novel and non-obvious invention • In the US this includes business methods• Rights Awarded • Government grant of the right to exclude others from making, using, selling or importing the patented invention.
Types of Utility Patents in the U.S. • A. Apparatus/Device or Article of Manufacture • B. Method of Manufacture • C. Method or Process for Using Apparatus/Device/Article • D. Business Method Patents • E. Software
Benefits of Patents for Small Business • 1. increase valuation of company • 2. support higher profit margins by offering exclusive features • 3. source of income through a licensing program • 4. defensive measure if accused of violating a patent of competitor
Business Method Patents • Covers new methods of doing business • Claims define the scope of protection Patentability Requirements: • Novel • Non-obvious Term: 20 years (from filing date of application)
Amazon 1-Click Patent ClaimU.S. Pat. No. 5,96,411 • 1. A method of placing an order for an item comprising: under control of a client system, displaying information identifying the item; and in response to only a single action being performed, sending a request to order the item along with an identifier of a purchaser of the item to a server system; under control of a single-action ordering component of the server system, receiving the request; retrieving additional information previously stored for the purchaser identified by the identifier in the received request; and generating an order to purchase the requested item for the purchaser identified by the identifier in the received request using the retrieved additional information; and fulfilling the generated order to complete purchase of the Item whereby the item is ordered.
Software Patents • patent on any performance of a computer realized by means of a computer program • Claims define the scope of protection Patentability Requirements: • Novel • Non-obvious Term: 20 years (from filing date of application)
Ebay Software Patent ClaimUS Pat. No. 7,702,540 • 1.A computer-implemented method for conducting auctions on the Internet, the method comprising: receiving over a communication network, by a communication handler program executing on a networked market maker computer, information from a remote computer of a first entity corresponding to an item for auction, the information received via the communication network from the remote computer of the first entity including (i) a designation of an item category, selected from a list of item categories presented at the remote computer of the first entity, under which the item for auction is to be listed, and (ii) input relating to scheduling an auction for the item; processing, by a mapping module at the networked market maker computer, at least a portion of the received information from a database format into a world wide web presentation format, the presentation format including an indication of the selected designation of the category of the item for auction; based at least in part on the selected category designation and the auction scheduling information previously received from the remote computer of the first entity, automatically initiating an instance of an ascending-bid auction process to conduct an ascending-bid auction for the item over the Internet from the networked market maker computer; wherein the automatically initiated auction process conducts the auction to completion by performing operations including: presenting a depiction of the item in the presentation format to a plurality of potential buyers; receiving at the networked market maker computer one or more bids on the auctioned item from one or more bidders; and terminating the auction after a predetermined time.
Design Patents • Ornamental design on a functional product (Coke bottle) • Claims define the scope of protection Patentability Requirements: • Novel • Non-obvious Term: 14 years (from date of grant)
Due Diligence – Patent Searching • Informal Search • www.uspto.gov • Google® Patents • Professional Search • Guidance from an Examiner at USPTO • Analysis and patentability opinion
File Patent Applications • Prepare, file patent application, and prosecute • Caution: • U.S. - file within one year of first offer for sale, public disclosure to ensure valid patent • Foreign countries – no grace period
Trademark Rights• Common Law Trademark Rights TM • Trademark Rights arise out of usage • Rights accrue in geographic territory• Federal Registration ® • Nationwide protection • Significant advantages • Presumption of validity at trial • Incontestability 5-6 years after registration • Sample Federal Registration
Benefits of Trademarks for SmallBusiness • 1. maximize product differentiation, advertising and marketing, thus enhancing recognition of your product or service • 2. increase revenues as consumers pay higher prices for branded goods • 3. derive loyalty largely due to consumer’s ability to recognize the product and distinguish it from the products of competitors
Types of Trademarks Arbitrary or Fanciful Suggestive Descriptive Generic
Arbitrary, Fanciful Marks • Unrelated to the goods or services • Preferred • easiest to register • strong when connection is made with consumers • Examples • Nike Swoosh (shoes) • YAHOO! (internet portal)
Suggestive Marks• Implies a characteristic of the product• Requires some imagination to connect mark with the goods, usually registrable• Examples • SPARKLE (window cleaner) • PENGUIN (food freezers) • GOBBLE GOBBLE (turkey meat)
Descriptive Marks• Product or its function is set forth in the mark• Not inherently capable of identifying the source of the goods or services • Registrable if secondary meaning is shown• Examples • PRE-INKED (stamp pads) • 5 MINUTE (five minute glue)
Generic Marks/Names • Defines a class of goods • Needed by competitors to adequately identify the goods • Not registrable • Examples • PHOTOCOPY MACHINE (copy machines) • COMPUTER (computers) • ASPIRIN (aspirin) - became generic over time
Domain Names and Trademarks • Picking a Domain name • 1. Pick a domain name that is not the subject of a third party’s trademark registration or common law right • 2. Pick a domain name that resonates with customers and is capable of building good will (i.e. not generic or merely descriptive) • Enforcing a Trademark Against Domain Name Holder • 1. Uniform Administrative Dispute Resolution Policy
Due Diligence -TrademarkSearch Informal Search: www.uspto.gov; Google Professional Search: -Federal trademark registrations -Common Law trademarks -Brand names -Company names -Domain names -State Trademarks -Internet usageNote: Just because the Secretary of State’s Office says that a name is available for incorporation, doesn’t mean it can used as a trademark
File Registration Application• File trademark application• Types • Use (mark already in use in interstate commerce) • ITU (bona fide intent-to-use)• Office Actions• Responses, Amendments• Publication for Opposition in Official Gazette• Registration Certificate
Trademark RegistrationMaintenance• Declaration of Continuous Use/Incontestability (between 5 and 6 years from Federal Registration)• Renewals every 10 years if mark is still in use • 10 year term of registration
Copyrights – Protection for SmallBusiness • Is the work protectible? • Original? • Expression of ideas, not the ideas themselves • non-functional • Types • Textbooks, magazines, newspapers • Sculptures, jewelry designs • Photographs • Music, lyrics • Content on the Internet
Conclusion • Identify • Identify property and determine whether it is important to you and your company • Research • Take early action to search inventions, clear trademarks to avoid problems • Protect • File for appropriate patents, registrations • Enforce • Police property, pursue infringers