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Jonathan winteroct2015


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presentation for ece508. home page at Engineering entrepreneurship

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Jonathan winteroct2015

  1. 1. Introduction to Intellectual Property. Where does a startup begin? Presented at: Fairfield University Date: October 6, 2015 Presented by: Jonathan A. Winter Associate St. Onge Steward Johnston & Reens LLC Stamford, Connecticut, U.S. 203-324-6155
  2. 2. What is Intellectual Property • Patents • Trademarks • Designs • Copyrights • Trade Secrets
  3. 3. • Copyright protects “original works of authorship” that are fixed in a tangible form of expression. • Copyright does not protect ideas. • Does not protect function Copyright
  4. 4. •Copyright is secured automatically when the work is created, and a work is “created” when it is fixed in a tangible medium of expression. •© 2011 Jonathan Winter •“no person is entitled to any such right . . . under the common law or statutes of any State” Sec. 301 •Why Register? • Public Record. • Necessary to file infringement suit. • Prima facie evidence of validity. • Statutory Damages / Attorney’s Fees. • Record with U.S. Customs Service Copyright
  5. 5. • The right to reproduce the copyrighted work in copies or recordings. • The right to prepare derivative works based upon the copyrighted work. • The right to distribute copies or recordings of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending. • Work for hire. Copyright
  6. 6. Ownership of a valid copyright must be shown. Copying of elements of the work that are original must also be shown. The allegedly infringing work must be substantially similar to the registered work. Independent creation is a valid defense to a charge of copyright infringement. Copyright Infringement
  7. 7. Copyright – The Obama Photo
  8. 8. Trademarks
  9. 9. Trademarks • What is a trademark? • A word, name, symbol, or device that identifies and distinguishes goods of one party from those of others.
  10. 10. Trademarks • Why do we have Trademark Protection? • Identify the source, quality, origin of goods and services. • We focus on the consumer. • What Can I Trademark? • Brand Name • Product Name • Slogan • Logo • Sound • Color • Trade Dress.
  11. 11. Trademarks • Types of Trademark Protection • Common Law Protection • State Registration • Federal Registration
  12. 12. Trademarks • Benefits of Federal Registration • Presumption of ownership and validity. • Attorney’s fees and enhanced damages. • Nationwide notice to all later users of a mark. • Eliminates defense of innocent adoption – common law • “Incontestable” status - 5 Years. • U.S. Customs service. • International Registrations.
  13. 13. Trademarks • What should I protect? • Generally a Block Letter registration is best. • BILLBOARD, CLARKS, WIFFLE, etc. • Protect your company name. • Consider protecting primary product or slogan. • Word + Design (Logo). • Make sure you are happy with the logo. • Changes to the logo will require new registrations. • What does a Trademark protect? • It protects the brand name associated with a description of goods in a particular classification. •
  14. 14. Trademarks • What if I don’t use it yet? • Search Trademark Records (TESS) • Get an opinion from an Attorney! • Make sure you will be able to get the brand before you start branding. • It is cheaper to get the brand right in the beginning. • Intent to Use Application. • When do I first accumulate Trademark rights? • Use in commerce. • Senior user (first to use) is typically in a better position.
  15. 15. Trademarks • How Strong is my Mark? • Coined/Fanciful. (make up a word) • XEROX® • GOOGLE® • Arbitrary (no connection between word and product) • APPLE® for computers • Suggestive. • GREYHOUND® for bus transportation • Descriptive. (Show secondary meaning) • US NEWS AND WORLD REPORT® • Generocide. • Common words (PIZZA was refused as generic)
  16. 16. Trademarks • How Long Does My Trademark Last? • Strength v. Promotion • Public Perception (remember, we are protecting consumers) • XEROX® • “You can’t Xerox a Xerox on a Xerox” • GOOGLE® • “Google it” – Search it, or Search it on Google? • JELL-O
  17. 17. Trademarks • What do I need to file? • We recommend a search and opinion. • Goal is to have a solution for issues before they happen • What are you going to use the mark for? • Which Classes? • How Many Classes? • Description of the goods/services (Stay within the class). • Specimen of use/Statement of use or file ITU (Intent to Use).
  18. 18. Trademarks • Using a trademark • TM and ® Symbols. • No use as noun/verb • Make copies on a XEROX® Copier - YES • Xerox that report - NO • Use as adjective • BAND AID® - brand Bandages • KLEENEX ® Tissues • Don’t make plural • Don’t alter mark (don’t alter logo).
  19. 19. Trademarks • Approximately How Much Does It Cost to File? • Searching and opinion $600. • Preparing and filing application $1200 (One Class) • ~$500 for additional classes. • Later prosecution fees – Office action response $500 for simple responses. • Statement to allege use (ITU Applications) ~$500.
  20. 20. Patents
  21. 21. Patents • Why do we have patents? • “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.” Article I, Section 8, Clause 8, U.S. Constitution. • What can I patent? • Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. 35 U.S.C. §101 • What does this include? • “Anything under the sun made by man is patentable“ Diamond v. Chakrabarty, 447 U.S. 303 (US Supreme Court 1980)
  22. 22. Patents What is a patent? • Right to Exclude v. Right to practice • Exclude another from Making, Using, Selling, Import, Export • Limited in time ~20 years from filing date. • Right to practice – Do you infringe another’s patent? • Patent exhaustion • Indemnification UCC 2-312 (unless disclaimed)
  23. 23. Patents Who owns it? • Inventors own the patent unless it is assigned. • Have appropriate agreements in place. • Employment agreement • Shop right? • Assignment documents. • Make sure the company is legally formed before you assign a patent to it
  24. 24. Patents Why should I file? • AIA First to file • First INVENTOR to file. • 1 year grace period (Trade Secret/Pre-patent). • Novelty drives revenue • Leverage in negotiations • Licensing • Defensive • Marketing (“Patent Pending”) • Enforcement v. Acquisition • You may not want to enforce it, but someone else may wish to acquire the technology to enforce against another.
  25. 25. Patents Contents • What is in a patent • Specification – Description • Drawings • Claims – This is what you assert in court.
  26. 26. Patents Why should I file? – Novelty = Loyalty • U.S. Patent 7,657,849 • User features. • Interaction with product.
  27. 27. Patents Why should I file? – Novelty = Loyalty
  28. 28. Patents Why should I file? – Novelty = Revenue • Novelty Drives Revenue • U.S. Patent 6,176,154. • What is new?
  29. 29. Patents What is the product
  30. 30. Patents Novelty = Revenue
  31. 31. Patents At what stage should I file? • Identify Market Need - ROI • Patents: Market weapons or Technology Weapons • What features are important? • What features are new? • Search: USPTO, Google Patents, Formal Search • Be careful of market testing. • Be careful of public disclosure. • NDA.
  32. 32. Patents At what stage should I file?
  33. 33. Patents What Can I Patent? • Examples? • Process - Method of making something. • Machine/Manufacture • Electrical/Mechanical Device • Consumer Products • Computer systems/software • Compositions of Matter • Plant Patents - Monsanto.
  34. 34. Patents What Can I Patent? • What is excluded? • Laws of Nature • Mathematical Principles • E = mc2 • Mental Process/Abstract Ideas
  35. 35. Patents How long do they last? • What am I protecting? • Ornamental Features • Design Patent – Term is 14 years from issue date. • Useful when you are making a large quantity of a product. • A Device/Computer System/Machine etc. • Provisional Patent – Saves your place in line, lasts 1 year. • Can’t assert it, but you can license/assign it. • Must follow up with Utility Patent within 1 year. • Utility Patent – 20 Years Filing Date of Earliest U.S. Application. • Right to exclude. • Can be bought/sold/licensed.
  36. 36. Patents Where do I start? • The Provisional Application • What is in a provisional application? • Drawing(s) • Description • Formalities • Cover sheet • Filing Fee • Assignment? Founders assign to their company
  37. 37. Patents Contents of a Provisional Patent • Drawings • You can take pictures. • Sketches. • Needs to show the features. • Use reference numbers to refer to description • Show how moving parts interact (dashed lines).
  38. 38. Patents Contents of a Provisional Patent • Drawings
  39. 39. Patents Contents of a Provisional Patent • Description • How does it work? • What does it do/what does it accomplish? • What features does it have? • Focus on the features or combination of features that are new. • Describe the drawings. • The description should enable one of skill in the art to make the device or understand how it works. • “Shot gun approach” v. “Targeted” (public disclosure?) • Continuations
  40. 40. Patents Contents of a Provisional Application The rigging system includes a pin 50 that is secured to the rigid support members 42/46 by one or more bolts 52. As one of ordinary skill in the art will understand, the pin 50 provides for the connection of an oarlock (not shown). Each of the 65 support members 42/46 include a hole 44/48 (e.g., support hole), at least one of which is designed to accommodate a pitch adjustment mechanism or pitch adjuster 60. • Description:
  41. 41. Patents How much is a Provisional Patent? • Cost. • Filing Fee: $130 (small entity) • Attorney Services: Typically around $1500. • Assuming inventors provide a good description. • Inventors provide drawings/photos. • Benefits. • Allows you to focus on marketing and selling your product • Gives you a year to: • Decide if your product is worth investing in a utility patent. • Get investors. • Start selling a “Patent Pending” product.
  42. 42. Patents What Happens After A Provisional? • Provisional = No Examination, No Publication • File a Utility Patent Application within a year. • What is the difference? • Utility Publishes • Has Claims • Meets more stringent formal requirements • Will be examined to determine if it is Novel, and Non-Obvious. • If it issues, you have the right to exclude
  43. 43. Questions? Jonathan A. Winter Associate St. Onge Steward Johnston & Reens LLC Stamford, Connecticut, U.S. 203-324-6155