2. What is Intellectual
Property Law ?
 “Intellectual property (IP) refers to creations of the
mind: inventions, literary and artistic works, and
symbols, names, images, and designs used in
commerce.” –WIPO
 “Congress shall have 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…”
–US Constitution Article 1 Section 8

3. Why is it Important to Protect
your Intellectual Property ?
 Ability to protect core ideas
 Limited term monopoly
 Provides a protected competitive advantage
 Opportunity to recoup costs on necessary R&D
 Defend one’s ideas from infringement
 Commercialize your invention successfully no more
“Grant Proposals”!

4. Types of IP
 Trade Secret
 “Secret Sauce”
 Copyright
 “Artistic expression in the way something looks or sounds”
 Patent
 “Protects the embodiment or method of an idea”
 Trademark
 “Branding”
 DO NOT USE THESE TERMS INTERCHANGEABLY!

5. Trade Secret
 Industrial and/or Commercial secrets
 Confidentiality agreements and Legal recourse
 May impact future employment opportunities
 Classic examples: Coca Cola or KFC Spice Blend
 Uniform Trade Secrets Act
 Economic Espionage Act of 1996

6. Copyright
 A legal term of for the exclusive rights of a creator’s
literary or artistic works
 Protection duration is lifetime of Author plus 70 years
 Types of works: books, film, music, software
algorithms, plays, etc…
 Tangibility of expression is key distinction between a
copyright and a patent
 Registration is not required but it helps
 Fair Use Doctrine

7. Trademark
 A distinctive sign associated with goods or services
 Distinctiveness needs to be maintained (e.g. Xerox)
 Registration is not required but it helps
 Duration is indefinite as long as it is in use and
renewed every 10 years (First renewal must occur in
between the 5th and 6th year time frame) (Find a better
way of stating this point)

8. Patent
 Exclusive limited term monopoly for a novel, useful, unobvious,
invention (20 Yrs from Date of Filing)
 3 US types: Utility, Design, and Plant
 Patents are examined for viability thus full disclosure is required
 International Patent protection requires extensive planning
 First to Invent to now become First Inventor to File (AIA)
 Flow Diagram from the USPTO on the Process

9. First Inventor to File
 US will be switching from First to Invent to a First
Inventor to File System on 3/16/2013
 Syncing with the rest of the world’s IP Filing Systems
 Grandfathered into the First to Invent Category til
3/16/2013

10. Prior Art & International
Protection
 People will forever keep on “reinventing the wheel”
 Know your technology’s competitive landscape
 Just because you have a patent does not mean your IP is protected
 Make sure the claims match up with the actual product
 US Patent is good only in the US
 PCT Applications provide an opportunity to file your patent
protection globally with other country’s IP offices
 Hard to enforce adequate protection overseas without procuring
Patents in foreign countries.
 Unless you are a MNC or buddies with the USTR Rep

11. Provisional and Non-
Provisional Applications
 Provisional Application
 Secures your spot in line as a filer
 1 year to take your idea and RTP towards POC
 Cheap and effective
 Non-Provisional Application
 Convert Provisional to a NP or file a NP on its own
 Actual Patent Application (Title,Abstract, Spec, Claims,
Drawings, etc…)
 Backlog of initial review is on avg between 2-3 years
 Patent Agent/Attorney represents your case to the
USPTO where a Patent Examiner makes a legal,
science, and technical determination on your case

12. Typical Patent Application
Process
 Provisional
 Non-Provisional-Examiner Reviews Case
 Non-Final Rejection
 Claim Amendment by Filer
 Allowance or Final Rejection
 If Allowed-Done but if FR then an After-Final Typically Occurs
 If AF-Rejected then RCE, Abandonment, or Appeal to BPAI
 If case goes BPAI route can eventually go CAFC and then
SCOTUS

13. Bayh-Dole Act
 Applicable to Universities, Small Businesses, and Non-
Profits ONLY!
 Designation and Ownership of IP rights becomes
crucial during Bayh-Dole Implications (Major Points)
 Re-assigning of rights is generally prohibited
 Deferred IP assignment in lieu of License-free
arrangement for federally-sponsored research
 Report each disclosed invention to the funding agency
 File for Patent Protection
 Must try to commercialize the invention
 Share royalties with inventor
 Use leftover funding for R&D and Education

14. How we protect against
copy-cat competitors?
 Trade Secrets
 For many companies the greatest value are unique un-definable processes and
system designs, not specific easily ascertainable aspects.
 This type of competitive info is best kept confidential.
 Do it best.
 Sounds trivial, but if the best user experience is provided, including cost, to
customers, it will be extremely difficult or intimidating for other companies to
enter the market.
 Capital intensiveness of the industry matters.

15. Know Your Options in
Legal Firms
 Technical Competency is crucial
 Patent Agent might be suffice for USPTO purposes
 Patent Attorney makes more sense if litigation is part of
the formula
 Lower Registration Number generally means more
experienced practitioner
 General Exception to the rule: A former patent
examiner with 3+ years of experience
 Handle the initial documentation and prep-work
yourself
 Let the $500/hr attorney do the high level work

16. Refresher: Why you Should
keep IP Rights in Mind?
 Defense:
 Future: defense against Patent Trolls or competitors who may come after you
due to significant revenue creation
 Current: defense against competitors who want to slow the process down
 Education:
 Learn what’s been patented already & who’s competing
 Revenue:
 Patents may enable us to increase revenue by licensing our technology to
others, without starting additional businesses
 Valuation:
 Financial capital is required to build your business
 The above points add value & confidence in your business model

17. Thank You
 Now switching topics for a second to make a brief
announcement about the recently launched Patents for
Humanity program!

19. Overview
For over two centuries, strong patents have provided business
incentives that encourage technological progress to build our
modern world. As we struggle against humanitarian issues
plaguing many of the world's poor, patents play an essential role
in creating lasting solutions.
The USPTO Patents for Humanity program creates business
incentives for patent holders to engage in humanitarian issues.
After consulting with industry, universities, and non-profits, the
USPTO has developed this 12-month voluntary pilot program to
recognize patent owners and licensees who apply their technology
to pressing global challenges.

20. Program Structure
 Awards competition
 Applicants describe how they have used patented technology
or products to address humanitarian needs
 Up to 50 winners

21. Categories
Applicants confront global challenges in:
Medical Technology
Food & Nutrition
Clean Technology
Information Technology

22. Awards
 Certificate for expedited USPTO processing:
 appeal to internal Board of Appeals (BPAI)
 ex parte reexamination, including 1st appeal
 examination of a patent application, including 1st appeal
 USPTO plaque at an awards ceremony
 Public recognition

23. Selection Criteria
 Two sets of criteria: use
and research
 It’s about distribution (of
benefits)
 Focus on real-world results
(C) Anna Ridout/Oxfam 2011

24. Humanitarian Use
è Subject Matter – patented tech. effectively addresses a
recognized humanitarian issue;
i Target Population – the actions target an impoverished
population; and
n Demonstrated Impact – the actions have significantly
increased application of the technology to address the
humanitarian issue

25. More info
 Program info and materials:
http://www.uspto.gov/patentsforhumanity
 Apply or view submissions:
http://patentsforhumanity.challenge.gov/
 Complete program rules in the Federal Register Notice at
USPTO website
 Email patentsforhumanity@uspto.gov