Diane Cavello Patent Prof. at Uconn presents

1. Using Intellectual Property to Protect Your
Scientific and Business Innovations
Diane Covello
Co-Director, IP and Entrepreneurship Law Clinic
UConn Law School
Fairfield University
April 28, 2022

2. UConn IP and Entrepreneurship
Law Clinic
Hartford, CT
Kathleen Lombardi
Clinic Co-Director and Trademark Supervising Attorney
Diane Covello
Clinic Co-Director and Patent Supervising Attorney
Mary Miller
Adjunct Professor and Trademark Supervising Attorney
16-22 Second and Third Year Law Students
Connecticut entrepreneurs may email iplawclinic@uconn.edu
to request an application for services

3. UConn IP Clinic
Patent And Trademark Statistics
January 1, 2017 through December 31, 2021
Patent Applications Filed: 99
Patents Granted: 40
Trademark Applications Filed: 102
Trademarks Registered: 92

4. Definitions
A patent provides the patent owner with the right to decide how - or whether – a new, useful and non-obvious
invention can be used by others. In exchange for this right, the patent owner makes technical information about the
invention publicly available in the published patent document. A patent application must be filed within 1 year of the
initial public disclosure, and if non-US protection is sought, the application should be filed before any public disclosure.
A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.
A trademark application can be filed before the trademark is used, but in most cases the USPTO will not grant
registration until the mark is actually being used in interstate commerce.
Copyright is a legal term used to describe the rights that creators have over their literary and artistic works. Works
covered by copyright range from books, music, paintings, sculpture and films, to computer programs, databases,
advertisements, maps and technical drawings. Registration is optional. Notice can be added to a document, such as a
web page:
Any confidential business or technical information which provides a competitive edge may be considered a
trade secret. Trade secrets encompass manufacturing or industrial secrets and commercial secrets.

5. Three Types of Patents
Utility patent - useful, novel and nonobvious
Design patent - ornamental
Plant patent - plants that are not produced from seed

6. Provisional Patent Application
Expires after 1 year
Can be in any format
Is not published by the USPTO
Is not required to include claims
Allows you to describe your product
and/or process as “patent pending”
Cannot cover ornamental designs

7. Example of the Timeline for a Patent Matter
Handled by the IP Clinic
• Month 1 – Clinic reviews a new application and conducts a conflicts check.
• Month 2 – A student and their supervising attorney hold an intake meeting with a potential client via WebEx and prepare a
letter of engagement for pro bono services, if appropriate.
• Month 3 – Clinic conducts a patentability search and prepares a written search report.
• Months 4-5 – If appropriate, the Clinic prepares and files a provisional or nonprovisional patent application with the USPTO.
Typically, the Clinic recommends a provisional if no prototype has been made, and a nonprovisional if the inventors already
have a prototype.
• Months 6-17 - If a provisional application was filed, a corresponding nonprovisional application is due no more than 12
months after the provisional filing date, and is usually filed after a prototype has been made (although a prototype is not
required).
• Months 18-48 – A USPTO Examiner will correspond, mostly in writing, with the IP Clinic about a patent application until an
agreement is reached regarding scope of the patent claims to be allowed. Most applications are published 18 months after
their earliest filing date, and this publication usually takes place before the application has been examined.
Patents typically are granted 2-4 years after their earliest filing date. Occasionally, the IP Clinic will receive a granted patent
within 1 ½ years of the filing date.

8. Trademarks
• GOOD NEWS: you can create a trademark without filing a registration
application
• BAD NEWS: you need to use it properly and police its use by others, or
you may lose your rights.
MARKS THAT BECAME GENERIC (USED IMPROPERLY):
ASPIRIN
THERMOS
ESCALATOR

9. Should I Register My Trademark?
• It’s a good way to see if anyone else has something similar
You get some procedural advantages if you ever decide to enforce your
trademark

10. Example of the Timeline for a Trademark
Matter Handled by the IP Clinic
• Month 1 – Clinic reviews a new application and conducts a conflicts check.
• Month 2 – A student and their supervising attorney hold an intake meeting with a potential client via WebEx, and
prepare a letter of engagement for pro bono services, if appropriate.
• Month 3 – Clinic conducts a trademark registrability search and prepares a written search report.
• Months 4-12 – If appropriate, a law student prepares an application for federal trademark registration and files the
application with the USPTO. The filing fee is $250-350 per class of goods/services and is paid using the client’s
credit card or debit card. Clients are encouraged to wait and file their application after they are actually using
their mark in interstate commerce. Occasionally a client will file an “intent-to-use” application which requires an
additional $100 fee per class when proof of use is filed. A registration cannot be granted until after the mark is in
use in interstate commerce.
• Months 8-18 - A USPTO Examining Attorney will review the trademark application within 4-6 months after the
filing date and correspond with the IP Clinic until an agreement is reached or until the application goes
abandoned. Applicant has 6 months to respond to any office actions issued by the Examining Attorney. Once the
application is approved, it will be published for opposition. If no opposition is filed during the 30 day opposition
period, the USPTO will issue a Registration or Notice of Allowance within 2-3 months.
Federal Trademark Registrations typically are granted 8 -12 months after their filing date. Note, the USPTO is
experiencing delays processing trademark application due to a surge in filings during the COVID-19 pandemic.

11. Copyright Representation in the IP Clinic
 The IP Clinic Provides advice on what can be registered and submits
applications for registration with the U.S. Copyright Office.
 Visual Arts and Literary Works are the most common types of works
the IP Clinic has assisted clients with registering.
 Filing fees for the most common applications are $45-65 per
application and the registration process is typically 1-3 months.
 The IP Clinic also advises clients on the proper use of the copyright
notice on websites and provides copyright assignment templates for
logos designed by third parties.

12. Trade Secrets
Examples of Trade Secrets
• Customer lists
• Processes of making products
• Processes of using products
How to Protect Trade Secrets
• Keep the information secret from everyone who does not have a “need to
know”
• Get NDAs signed by those who need to know the secret
• If you’re not sure you can get a patent, file a “nonpublication request” with the
USPTO so that the application will only publish if it grants. This option is not
available if counterpart patent applications are being filed outside the US.

13. Examples of Types of IP Owned by
Connecticut Businesses
1. Restaurant or Brick-and-Mortar Retail Store
2. Online Retailer
3. Lab that Conducts Pharmaceutical Research
4. Developer of Mobile Phone App
5. Accounting Firm
6. Athletic Shoe Designer

14. 1. Restaurant or Brick-and-Mortar Retail Store
Patents – unlikely unless there is a unique business model
Trademarks – likely – registration is usually recommended
Copyrights – likely - menus; signs; unlikely to file federal application for
registration
Trade Secrets – likely - recipes, customer mailing lists

15. 2. Online Retailer
Patents – unlikely unless there is a unique computerized business process
Trademarks – likely - registration is recommended
Copyrights – likely - can put copyright notice at the bottom of each webpage, e.g.
Copyright 2022 Covello LLC; unlikely to file federal application for registration due to
frequent changes made to website
Trade Secrets – website software; customer mailing lists

16. 3. Lab that Conducts Pharmaceutical Research
Patents – likely – potential protection for active ingredient, composition that includes active
ingredient; combination of active ingredient and carrier; method of making pharmaceutical
product; method of using pharmaceutical product
Trademarks – likely - registration is recommended
Copyrights – likely – marketing materials; can put copyright notice on each page; unlikely to register
Trade Secrets – likely – useful to protect unpatentable aspects of innovations, including medical
diagnostics, products of nature, and marginal improvements over the prior art

17. 4. Developer of Mobile Phone App
Patents – utility patents unlikely unless there is a unique computer component used; design patents
or logo-type trademark registrations can be used to protect the icon/GUI used to access the App
Trademarks – likely for word mark and logo - registration is recommended
Copyrights – protection is likely available but most parties do not put copyright notice on screen
displays; some developers will copyright source code for an App; unlikely for small developers to file
federal applications for copyright registration
Trade Secrets – App software; customer mailing lists

18. 5. Accounting Firm
Patents – unlikely unless there is a unique business model
Trademarks – likely – registration is often recommended
Copyrights – likely – for websites and forms; registration is unlikely
Trade Secrets – likely – internal business processes; customer mailing lists

19. 6. Athletic Shoe Designer
Patents – likely – utility patent protection for functionally unique products; design
patent protection for look of the entire shoe or a portion of the shoe
Trademarks – likely – registration is usually recommended
Copyrights – likely – for websites pages; registration is unlikely
Trade Secrets – likely – internal business processes; customer mailing lists; unique
manufacturing methods (if patent protection is not sought)

20. Thank you!
Questions?