This document provides an overview of various forms of intellectual property including trademarks, copyrights, trade secrets, and patents. It discusses what each type of intellectual property protects, how to obtain protection, duration of protection, benefits of protection, and common issues to consider. The document covers topics such as trademark clearance searches, federal registration of trademarks and copyrights, requirements for patents including novelty and non-obviousness, international protection, and types of patent applications.

1. Mintz Levin. Not your standard practice.
Intellectual Property
What is Intellectual Property, and Why is it Important?

2. General Discussion Topics
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• Trademarks
– Trademarks vs. Copyrights
– Trademark Clearance
– Federal Trademark Application Process
– Proper Trademark Usage
• Copyrights
– What is a Copyright?
– Common Pitfalls - Third party contributions, "private use" and "public
domain"
– Derivative Works
– The importance of Federal registration

3. General Discussion Topics
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• Trade Secrets
• Patents
– What is protectable?
– The patent process – U.S. and rest of world (e.g., AIA and first-to-file
provisions)
– Do I have freedom to operate (FTO) in view of third-party patents?
– Protecting software innovations
– Employment agreement pitfalls

4. Forms of Intellectual Property
• Trademarks
• Copyrights
• Trade Secrets
• Patents
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5. Trademarks
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6. What is a Trademark?
• Created by state and federal law (common law vs. registered)
• A word, name, phrase, symbol or device that helps consumers identify
a product or service and distinguish them from the products and
services of competitors (i.e. an "indicator of source")
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7. Duration and Benefits of Trademark
• Rights exist when mark used in commerce, but without a Federal
registration, they are limited to geographic area in which used
• Unlimited in duration as long as mark is continuously used in
commerce and does not become “generic” (e.g., Aspirin, Band-Aid,
Scotch Tape)
• Owner may prevent others from using mark if public likely to be
confused
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8. Trademark Characteristics
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Distinctiveness Spectrum
SuggestiveDescriptiveGeneric FancifulArbitrary
less distinctive more distinctive

9. Choosing Trademarks
• Develop branding strategy
• Develop numerous alternatives
– Focus on distinctive names
• Clearance Searches to Determine Other Potential Users
– U.S. Patent and Trademark Office database
– State registries
– Popular Search engines
• Narrow down
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10. Trademark Clearance
• What is clearance searching?
• Why Search?
– Two Purposes
• offensive (understanding potential registration problems and limitations)
• defensive (understanding potential use problems)
– Costs
– Benefits
• Understand landscape
• Assists with drafting identifications to minimize "Office Actions"
• Preliminary or "Knockout" vs. Comprehensive or "Full"
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11. Registration
• May file for federal registration with U. S. Patent and Trademark Office
(about 18+ month wait)—Also may file with state
• Must determine one or more classes and describe goods/services
• USPTO Examination Process
• Benefits of Federal Registration:
– Presumption of nationwide rights (vs. "local" common law rights)
– Right to sue in federal court and seek statutory damages and attorneys fees
– Trademark achieves incontestable status after five years of registration and
continuous use – limits objections by third parties
– Right to use the "®" symbol
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12. Proper Trademark Usage
® Mark has been registered with the USPTO—
It may be a service mark or a trademark
TM An unregistered (or registration is pending) trademark for
equipment, software or other products
SM An unregistered (or registration is pending)
service mark; used for services
• Set off Mark - Color, font, size, initial capitalization
• Do not use Descriptively, always as a trademark
• Never use as a noun or verb, e.g. I'm going to Google this
• Always use as adjective, e.g. I bough a new Apple computer
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13. Copyrights
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14. What is a Copyright?
• Created by federal law
• Original work of authorship
• Fixed in a tangible medium
• Must be nonfunctional expression
• Owned by author unless “work for hire” -- Must get assignment from contractors
– Created by employee in the scope of his/her employment
– Specially created or commissioned and created by IC with a writing stating it
is work for hire, and work is one of nine enumerated types of works (17
U.S.C. Sec. 101)
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15. Examples of Copyrights
• Software code
• Manuals, publications, blueprints
• Website content
• Graphics
• Music and video
• Fabric design
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16. Duration of a Copyright
• Rights exist from the moment created:
– But federal registration required to enforce and recover statutory damages
and legal fees
• Duration:
– If work for hire, 95 years from publication or 120 years from creation
(whichever is first)
– If not work for hire, life of author + 70 years
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17. Benefits of a Copyright
• Owner may prevent others from:
– Making copies
– Preparing derivative works
– Distributing copies
– Performing the work
– Displaying the work
• Exception: “fair use”
– Factors: purpose of new use (is it "transformative"), nature of copyright,
amount and substantiality of portion taken, effect on the market for original
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18. Benefits of a Copyright
• Common Pitfalls
– Not properly taking into account third party material
– Improper assignments from independent contractors
– Believing the "private use" fallacy
– Assuming something is "public domain" because it can be easily copied or
obtained on the internet
– Software exists to scan the internet for infringement, and this is an area
where many business are trying to create a revenue stream
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19. Trade Secrets
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20. What is a Trade Secret?
• Created by state law
• Information, including formula, pattern, compilation, program, device,
method, technique or process that is:
1. Valuable because it’s secret; and
2. Owner takes reasonable efforts to maintain secrecy
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21. Examples of Trade Secrets
• Formulas (e.g., for Coke)
• Software programs
• Business methods
• Customer lists
• Financial forecasts (business plans)
• Pricing information
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22. Duration and Benefits of Trade Secrets
• Rights exist when created
• Unlimited in duration if kept secret
• Owner may prevent others from “misappropriating” trade secrets
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23. How Do You Maintain Secrecy?
• Adopt policies to protect against disclosure
• Communicate policies to employees
• Third parties must sign non-disclosure agreements (“NDAs”)
• Implement physical safeguards
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24. Patents
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25. What is a patent?
• Created by federal law (and laws of other countries)
• Government grant to exclude others from making, using, selling,
offering for sale or importing the patented invention
• Inventors must disclose the details of the invention to the public
• But, does not give owner “right to practice” (i.e., use the invention)
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26. Types of Patents
• Utility patents (most common)
– Protects the way the invention is used and works
• Design patents
– Protects the way the invention looks
(ornamentality)
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27. Filing of Application and Duration
• All individual inventors must file a patent application with U.S. Patent
and Trademark Office (although patent usually assigned to an entity)
• A utility patent expires 20 years from filing date (may be extended if
USPTO caused unreasonable delay)
• A design patent expires 14 years after it is issued
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28. What Can be Patented?
• Machines
• Articles of manufacture
• Processes or business methods
• Compositions of matter
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29. What Cannot be Patented?
• Laws of nature (e.g. E=mc2)
• Natural phenomena or discoveries (a new element)
• Mathematical algorithms (a2 + b2 = c2)
• Human beings
• Abstract ideas
• Nuclear weapons
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30. Requirements of Patent
• Novel (new)
• Non-obviousness
• Useful
• Enablement
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31. Novelty Requirement—Old Rule
• Application filed prior to March 16, 2013 will be denied if invention:
– Was known or used by someone (other than inventor) before date of
invention; or
– Was patented or described in printed publication by someone (other than
inventor) before date of invention
– Single reference must completely anticipate invention
– Date of invention: conception and reduction to practice
• Application will be denied if, more than one year before filing date,
invention:
– Was patented or described in a printed publication; or
– Was publicly used or offered for sale by anyone (including inventor)
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32. Novelty Requirement—New Rule
• Application filed on or after March 16, 2013 will be denied if invention:
– Was patented, described in printed publication (including another patent
application), in public use or on sale before filing of date of application
– Exception: Disclosures made 1 year or less before filing date if made by the
inventor or by another who obtained invention from inventor
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33. Nonobviousness Requirement
• Must not have been obvious to person with ordinary skill in the art
before filing of application (or, prior to 3/16/13, before invention was
made)
• Factors considered:
– Scope and content of prior art
– Difference between the prior art and the claims
– Level of ordinary skill in the pertinent art at the time invention was made
– Any relevant secondary considerations
– Commercial success
– Failure of others
– Long felt need
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34. Useful Requirement
• A specific, substantial and credible use
• Must be apparent to a person of ordinary skill in the art
• Need not be superior to existing products
• The invention must be capable of some beneficial use to society
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35. Enablement Requirement
• Patent must include description that enables one skilled in the art to
practice invention
• Some experimentation is allowed—factors include:
– Quantity of experimentation required
– Amount of direction presented
– Nature of the invention
– State of the prior art
– Relative skill in the art
– Predictability/unpredictability of the art
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36. Parts of a Utility Patent
• The disclosure of a patent application has 4
main parts:
– Abstract (brief description of invention)
– Written description
– Drawing(s) if necessary (graphical illustrations, flow
charts, diagrams, etc.)
– Claim(s)—MOST IMPORTANT PART (tells public
what the patent is protecting)
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37. Types of Patent Application
• Provisional – Does not get examined. Used to get a filing date at
USPTO. Must convert provisional patent application to a non-
provisional within 12 months
• Non-Provisional – A patent application which gets examined
• Continuation – It is based on a previous patent application and
contains NO NEW MATTER
• Continuation-in-part – It is based on a previous patent application and
contains some new matter
• Divisional – A patent application that was filed because the USPTO
indicated there was more than one invention
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38. Publication
U.S. patent applications will generally get published 18 months from the
filing date/priority date, UNLESS (i) applicant requests no publication
AND (ii) applicant does not file patent outside of the U.S.
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39. International Patent Protection
• File multiple applications in all countries
• File one application in a Paris Convention
country and then file separate applications in
other Paris Convention countries within 12
months
• Best: File one application under the Patent
Cooperation Treaty (“PCT”), which is the easiest
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40. Member
New York
212.692.6850
PSnell@mintz.com
JD, Fordham University
BSEE, Rutgers University
(Electrical and Computer
Engineering)
• Litigates patent infringement, patent invalidity, and other
intellectual property disputes in courts all across the
country, including US district courts and the US Court of
Appeals for the Federal Circuit
• Has examined witnesses at trial, taken and defended
depositions of fact and expert witnesses, and conducted
discovery
• Particular experience in communications systems and
networking, packet switching, integrated circuits,
semiconductor technology, powerline networks, RFID,
electronics components, broadband applications for cable
and satellite television systems, Internet and e-commerce
applications, machine learning, software, business methods,
and medical devices
Peter F. Snell
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