EIA2017Italy - Elizabeth Baio & Bradley Taub - DIY IP – Getting Patents & Trademarks on a Limited Budget
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Bradley Taub, a U.S. patent attorney, gave a presentation on patents and patent searching. He discussed what patents are, the different types of patents including utility and design patents, and the key parts of a patent like claims, drawings, and specifications. He emphasized the importance of claims in defining the legal boundaries of an invention. Taub also covered how to conduct a DIY patent search, including forming search terms and reviewing results, in order to determine if an invention is patentable. He provided a example of searching for patentability in a photo app invention. Taub's presentation provided an overview of the basics of patents and strategies for patent searching.
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EIA2017Italy - Elizabeth Baio & Bradley Taub - DIY IP – Getting Patents & Trademarks on a Limited Budget
- 1. WANT TO GET FUNDED? GET A PATENT DIY PATENT SEARCHING CONCEIVE, SEARCH, AND PROTECT TORINO, JULY 24, 2017 BRADLEY TAUB, ESQ.
- 2. BRADLEY TAUB – U.S. PATENT ATTORNEY • Started tinkering with mechanical devices at age 8 • Studied Mechanical Engineering at Purdue University • Sold Toyota Cars • Law school in Chicago, IL • A decade of legal experience • Over 1000 patent matters • U.S. and Non-U.S. (EP, CA, MX, CN, JP, UK, AU, KR, etc.) • Amateur Drone Photographer Fluid Mechanics
- 3. WHAT WE WILL COVER TODAY • What is a patent? • How do I know if my invention is patentable? • DIY patent searching • Startup success story – figuring out what is patentable in an App
- 4. WHAT IS A PATENT? • Intellectual property right granted by government • Grants a right to exclude others from making, using, selling, and importing
- 5. WHAT IS A PATENT? • In exchange for publicly disclosing details of invention (quid pro quo) • For a limited term • Utility (20 years) • Design (15 years)
- 6. Utility Patents — Functional Aspects • How it works • Words form protection TYPES OF PATENTS: UTILITY V. DESIGN Design Patents — Aesthetics • How it looks • Pictures form protection Limited Protection
- 7. DESIGN PATENTS – EXAMPLES: SHOES, PURSES, AND EVEN USER INTERFACES Design Patent Advantages: • Statutory damages • Just need to prove law was broken, not actual value of infringement • Much less expensive than utility • Design - $1000-$3000 • Utility - $8000-$12,000 • Faster to get patent • Design – 1.5 years • Utility – 3-5 years
- 8. TYPES OF UTILITY PATENTS – WHICH IS RIGHT FOR ME, NOW? — Provisional (U.S. Only) • Informal – Very few legal requirements • “Patent pending” (tell your potential investors) • Not examined • Not published • Never becomes a patent • Priority • “Cover sheet” v. full blown • 1 year to convert/further develop • Less expensive ($1000-$3000) — Non-provisional • Formal - Comply with all legal requirements • Claims Examined • Patent Office interaction • Published* • Matures into patent • More expensive ($8,000- $12,000)
- 9. What are the PARTS of a Patent? 1. Claims—define the legal boundary of the invention 2. Disclosure—Describes the invention generally and provides a context for the claims to be understood
- 10. MOST IMPORTANT PART OF A PATENT - Claims
- 11. PARTS OF A PATENT – Cover Page
- 12. PARTS OF A PATENT - Drawings
- 13. PARTS OF A PATENT – Specification Body
- 14. PARTS OF A PATENT – Specification Body
- 15. TIPS FOR EFFICIENTLY REVIEWING A PATENT Just because the patent is written in a particular order does not mean we must review it in that order 1. Briefly review title and abstract (short) 2. Study the drawings 3. Jump to the claims (the invention protected) 4. Review the detailed disclosure in view drawings as needed
- 16. ABSOLUTE REQUIREMENTS FOR PATENTS 1. U.S.—1 year grace period to file after “offer for sale” or “public disclosure” • Examples: posting details of invention on Facebook, publishing article describing invention, offering to sell your invention to a friend 2. Non-US countries—no grace period. Must file before any public disclosure of the invention • Absolute bar • Can claim priority to earlier filed US application • Shush - Keep it quiet during development – protect the secret sauce from all 3rd parties • Use Non-Disclosure Agreements (NDAs) before filing patent application
- 17. ABSOLUTE REQUIREMENTS FOR PATENTS Legal Requirements of invention for getting a patent 1. utility – be useful 3. nonobvious 2. novel/new
- 18. COMMON PATENT MISCONCEPTION —My invention (improvement): • Car with 4-cylinder engine —Existing patent: • Car with engine
- 19. COMMON PATENT MISCONCEPTION Do I infringe the existing patent? —Yes! • I have a car with an engine (# cylinders irrelevant)
- 20. WHAT NOW? So I (may) infringe, do I give up?
- 21. WHAT NOW? NO!!! • Build up your own Arsenal of Patents • Natural deterrence effect • Cross-license opportunities
- 22. CROSS-LICENSING – WHAT IS THAT? • Company B • Patent on car with 4-cylinder engine • Company A • Patent on car with engine Now Company A can make an improved car with a 4-cylinder engine and Company B can practice their patent (car with a 4- cylinder engine) without risk of being sued by company A
- 23. HOW DO I KNOW IF I CAN GET A PATENT? DIY Patent Searching • Why do we search prior art? • www.patents.google.com
- 24. HOW TO SEARCH MY INVENTION Example Invention – Car shaped convertible backpack
- 25. HOW TO SEARCH MY INVENTION Step 1: Run a few searches to get baseline of art and terminology
- 26. HOW TO SEARCH MY INVENTION Step 1: Run a few searches to get baseline of art and terminology
- 27. HOW TO SEARCH MY INVENTION Step 2: Review closest matches
- 28. HOW TO SEARCH MY INVENTION What are the functions and elements of the invention? • Function – Converts between storage container and an activity mat • Elements: • Car shaped (curved edges) when assembled • Flat when unzipped • Two zippers (follow curved path) • Base portion • Two side portions • Lid flap portion Step 3: Formulate Detailed Search Terms in view of Knowledge Obtained from Broad Searching
- 29. HOW TO SEARCH MY INVENTION Step 4: Run pointed searches using search terms to find any knockout references
- 30. HOW TO SEARCH MY INVENTION Step 4: Run pointed searches using search terms to find any knockout references
- 31. HOW TO SEARCH MY INVENTION Step 5: Review results
- 32. HOW TO SEARCH MY INVENTION Step 5: Review results
- 33. HOW TO SEARCH MY INVENTION Step 6: Compare results with invention and note the differences Closest Search Result My Invention
- 34. EXAMPLE – SOFTWARE APP • What is the invention? • Cloud based photo storage and organization • What could possibly be patentable in a photo app? • What is the relevant time frame? • Filed June 9, 2011
- 35. CLOUD BASED PHOTO STORAGE AND ORGANIZATION
- 36. CLOUD BASED PHOTO STORAGE AND ORGANIZATION – APP SCREENSHOT • What is the invention? 1) Storing photos with geotags 2) Displaying interactive map 3) Displaying 1st selectable thumbnail with 1st count value 4) Displaying 2nd selectable thumbnail with 2nd count value 5) Responsive to click display location view
- 37. CLOUD BASED PHOTO STORAGE AND ORGANIZATION 1ST LOCATION VIEW
- 38. CLOUD BASED PHOTO STORAGE AND ORGANIZATION 2ND LOCATION VIEW
- 39. CLOUD BASED PHOTO STORAGE AND ORGANIZATION PATENT ISSUED JANUARY 24, 2017
- 40. KEYS TO REMEMBER • A patent grants you the right to exclude, NOT a right to practice your invention • car with the engine example • Filing a provisional application permits the use of • You can protect the aesthetics of your invention with a design patent (including user interfaces for Apps) • Focus on the new/nonobvious differences between your invention and the prior art to find patentable features • Come see us in the clinics
- 41. Bradley Taub, Esq. – Nixon Peabody – 312-425-8563
- 42. TRADEMARKS: BUILDING YOUR BRAND TORINO, JULY 25, 2017 ELA BAIO, ESQ.
- 43. THANK YOU FOR BEING HERE!
- 44. TRADEMARKS – SOURCE IDENTIFIERS WORD MARKS DESIGN MARKS • UBER • UPS • NIKE • COKE • LEVI’S • APPLE • GOOGLE • MICROSOFT
- 45. TRADEMARK RIGHTS 45 Common Law Rights™ By virtue of use Geographically limited in scope Federal Registration® (~$1,000) Registration granted by USPTO Presumption of nationwide ownership
- 46. ADVANTAGES OF A TRADEMARK REGISTRATION Legal presumption of ownership and the exclusive right to use a mark nationwide Put others on notice U.S. Customs & Border Protection Quicker, easier enforcement Trademark Office does the work for you! Bolster your IP portfolio
- 47. WHAT’S IN A TRADEMARK REGISTRATION?
- 48. You’ve got the product/service . . . Now how do you brand it? SELECTING A TRADEMARK – LET’S TAKE A POLL!
- 49. 1. Photo App™ 49 Common name of the product in question So descriptive of a product or service or an entire class of products that it is incapable of ever functioning as a trademark. NOT REGISTRABLE!
- 50. GENERIC MARKS LUNCHEON LOAF lunch meat COLA carbonated beverage CORN FLAKES cereal
- 51. 2. Map My Pics™ 51 Describes an attribute of the app DESCRIPTIVE! Unlikely to be granted Registration – 3rd parties may have legit rights to use If it is, it’s going to be a weak mark
- 52. DESCRIPTIVE MARKS COLD & CREAMY ice cream APPLE PIE potpourri BED & BREAKFAST REGISTRY lodging reservations services
- 53. 3. Monster Maps™ 53 Common meaning in the English language but used in connection with products that are unrelated to that meaning ARBITRARY
- 55. MONSTER MAPS: LET’S SEARCH IT! GOOGLE & WWW.USPTO.GOV
- 56. TESS - BASIC SEARCH
- 57. TESS - BASIC SEARCH
- 58. TESS - BASIC SEARCH
- 59. TESS - BASIC SEARCH
- 60. TESS - BASIC SEARCH Similarity of marks Similarity of goods/services Amount of hits Trends o Coexisting marks – double-edged sword o Recent dead marks – why? L K for things for:
- 61. WATCH OUT FOR BULLIES! Monster Energy Company has opposed: MONSTER CLAW for footwear AB MONSTER THE SCARIEST CORE WORKOUT ALIVE! + Design for exercise equipment MONSTER MIX SCARY TASTES GOOD! for frozen yogurt And more!
- 62. 4. Cheazew™ A fanciful or coined mark including a combination of letters that has no meaning; an invented word USPTO search for CHEAZEW – no hits! Search some variations: Cheezu Cheezyou / Cheezeyou / Cheeze-you Cheesyou / Cheeseyou / Cheese-you Cheasyou / Cheaseyou / Chease-you
- 63. FANCIFUL MARKS KODAK cameras REEBOK shoes EXXON petroleum products STARBUCKS coffee PEPSI cola
- 64. AND THE WINNER IS . . . . 1. Photo App™ 2. Map My Pics™ 3. Monster™ 4. Cheazew™
- 65. MEMORYWEB - THE SEQUEL? Likelihood of confusion rejection overcome by arguing: • Differences in goods/services • Differences in connotation • Different consumers
- 66. TYPICAL TRADEMARK PROSECUTION TIMELINE – USE-BASED APPLICATION 66 Application Filed Mark Publishes Office Action Final Office Action Applicant Responds w/ Notice of Appeal Appeal Proceedings Mark Registers ~3 months ~1 month within 6 months ~1-2 months within 6 months ~1-2 months ~3 months Applicant Responds Examining Atty Reviews ~1 month
- 67. 67 Mark Publishes Notice of Allowance ~2 months Use Office Action ~1 month Extension of time to show use w/in 30 mos. Approves & Registers TYPICAL TRADEMARK PROSECUTION TIMELINE –INTENT-TO-USE APPLICATION within 6 months USPTO reviews ~1 month
- 68. FILING TRADEMARK APPLICATIONS OUTSIDE THE U.S. 68 File country-by-country (country $pecific) If U.S. appln filed, 6 months to claim priority File by region EUTM Registration: Valid in all 28 countries of the EU (~$2,500) African Intellectual Property Organization WIPO application (Madrid Protocol) / IR registration (~$1,000 to file) File in 114 countries using a single application Territorial Rights – File where you’re doing business & where you plan to do business
- 69. DON’T FUHGEDDABOUTIT!!! Choose a mark that is unique and non-descriptive • Then commit to branding to make the connection for consumers Foreign language marks examined based on English & foreign meanings Name of company vs. name of product/service Conduct a proper search prior to use • Registered marks & common law uses Be aware of your geographic market • Consider clearance / registration Be vigilant (Google alerts & deadlines)
Editor's Notes
- Hello. Thank you all for coming today. My name is Bradley Taub and I am a United States Patent Attorney. I have been interested in tinkering with mechanical devices since a very young age. When I was 8, I became interested in how my sister’s tricycle worked. What better way to figure out how something works than to take it apart. So I did. That was the easy part. The hard part was figuring out to put it back together, which was harder than expected. And unfortunately, it left my sister quite upset! Since then, I continued to be interested in how devices worked so I went to school for mechanical engineering at Purdue University, where I studied things like thermodynamics, fluid mechanics, machine design, and much more. While I knew I wanted to attend law school, I took a brief break before to sell cars for Toyota, law school was, and is, quite expensive and I needed to save a few dollars. After six months of car selling, I attended law school in Chicago. I now have a about a decade of legal experience, including my work on over 1000 patent matters. I have worked on US matters as well as many matters outside the US, like in Canada, Mexico, Europe, Australia, China, and Japan to name a few. A fine fact, in furtherance of my tinkering, I recently purchased a drone and I am now an amateur photographer. Her are a few examples of my recent works.
- So, what are we going to talk about today. First we will discuss, what is a patent? Then we will discuss how do I know if my invention or my project is patentable? Specifically, we will talk about some tools and tips you can use yourselves in your groups after this presentation. Finally, we will conclude with a success story about a startup I worked with and we will discuss what was patentable in their software app.
- Words of the “claims” form the protection. Pictures in the description form the protection.
- A great use of design patents, particularly for software Apps, is in protecting the user interface of the APP.
- There are two types of utility applications in the US. One is informal and the other is formal. The informal one is called a “provisional” application, meaning it does not need to be in final format. The formal one is called a “non-provisional” application because …. Well, it is not a provisional. Some key features of a provisional application are that it….. By way of contrast, some key features of a non-provisional application are that it….
- Let’s take a look at the parts of a patent. We will start at the end of the patent with the most important part of the patent, the claims. How do you know you are looking at the claims? The claims follow the statement “What is claimed is” and are separately numbered run-on sentences. Remember it is the claims that define the parameters or boundaries of the protection of the patent.
- Abstract is the general idea of the invention, but it is not necessarily what the patent covers. That is the claims.
- The detailed description is the narrative. This is where you include all the details you can think of so you can claim that later if needed. To the extent that any of a patent is written in plain English, this is it, whereas the claims are not so much.
- Absolute bar if you miss the deadline.
- Absolute bar if you miss the deadline.
- Explain that the car with the 4 cylinder engine is novel and nonobvious and a very important improvement such that all car manufacturers moving forward will need to make 4 cylinder cars to compete.
- When you have a broad patent it covers more narrow improvements on the patent.
- I say “MAY” because there is always wiggle room and as a Patent Attorney, depending on whether I‘m representing the patent owner or the alleged infringer, I may take a different position.
- Your patent arsenal deters competitors from suing you because of the risk of counterclaiming and deters would be competitors from entering the market as they won’t want to deal with a potential infringement lawsuit from you.
- With that background of patents, let’s jump into an exercise of searching “prior art” or other people’s inventions. Why do we search prior art? It is so we can learn what has been done by others so we can figure out what, if anything, in our invention is patentable. This is important because in order for you to get a patent on your invention, your invention remember that your invention needs to be new and non-obvious in view of the prior art. So let’s get started. A great place to search is google. Specifically google patents. As you are about to see, the best part about patent searching on google is that … it’s a lot a fun….you can do it yourself and it’s free … and with the tips I’m about to give you, you will be have a great jump start on figuring out what in your invention is patentable.
- So what are we searching for? Let’s search a product that I previously worked on – a car shaped convertible backpack.
- When you click on the result, a text searchable version of the patent appears and all of the search terms are highlighted to make it easy for you to review the portions of the reference of interest because no one wants to read a 20 page patent that is not remotely relevant to their search!!!
- Once we finish reviewing the relevant references from our broad baseline search, it’s time to formulate a detailed search string using a combination of our terminology and the terminology of the prior art to try and find the closest prior art and any knockout references, which disclose exactly what we want to patent. So, how do we formulate this search string? Let’s start by listing the function of the invention and then all of the structural elements of the invention.
- The search results are returned and we note that 33 results are provided. Also, on the left side of the screen under the heading “Search terms” we have the ability to tweak and modify all of the individual terms google used in the search. So, if we think a term is too narrow we can delete or add one or more synonyms. Let’s give it a try. What are some good synonyms for the term “container”? (bag, purse, box, suitcase, etc.); Good, what about for the term “zippers” (fastener, snaps, hook and loop, magnet, etc.). Great. By tweaking the search terms we can get more results if the original 33 seem off.
- The differences between your invention and the closest art will be the focus of your patent application. That’s because almost every element is known, so most inventions now a days are combinations of known elements in a novel an inventive way.
- So that was a rather simple mechanical example, but what about a more difficult invention, like a software APP. How do we figure out what is patentable in a software APP? Let’s take a look at an example.
- At first glance, we have a basic interface with a menu bar at the top and a grid of selectable photos below. But the patentability is found in the details. Let’s take a look at a few features and see if can spot the patented features
- The first selectable thumbnail is associated with a number of pictures taken at the same location and thus have the same geotag. Same for the second selectable thumbnail.
- Shows a location view with a first location name (Taub Talman Home); scaled replica of each photo with first geotag (comment these are my kids); and a map image indicating the location of the first geotag. And that was patented.
- Shows a location view with a first location name (Taub Talman Home); scaled replica of each photo with first geotag (comment these are my kids); and a map image indicating the location of the first geotag. And that was patented.
- And here is the cover page of the patent we secured for our client on this photo app earlier this year. This client is a small three person startup and we have secured 2 US patents for them and currently have a third application pending.