The Patent Law Primer By Attorney Brantley Shumaker
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This is a Techfest Louisville 2017 presentation by Attorney Brantley Shumaker entitled, "A Patent Law Primer." Techfest Louisville is Technology Association of Louisville Kentucky event held every other year.
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The Patent Law Primer By Attorney Brantley Shumaker
- 1. A Patent Law Primer Brantley Shumaker, Esq. Registered Patent Attorney Intellectual Property Group MIDDLETON REUTLINGER PSC 401 South 4th Street, Suite 2600 Louisville, KY 40202 502-625-2720 bshumaker@middletonlaw.com Copyright 2017 Middleton Reutlinger All rights reserved
- 2. Types of Property Real Personal Intellectual
- 3. Intellectual Property • A way of protecting rights in the fruits of human capital − Innovations − Artistic and literary works − Creative designs − Distinctive signs, symbols, words − Microchip designs − Quality or source indicators − Trade secrets
- 4. Why IP? Intangible Assets • Patents • Trademarks • Copyrights • Etc. > Physical Assets • Real estate • Equipment • Cash Brand Value $124.2 Billion $63.0 Billion $56.6 Billion Source: Forbes, Nov. 2014
- 5. Why IP? • Company Logo • Product Name • Company Marketing Materials • Product Design • Product Functionality Source: Association of Corporate Counsel, 2011 80% of the value of a typical business • Software • Website • Manufacturing Methods
- 6. IP Benefits IP-intensive industries pay higher wages; generate more sales and added value; and result in more exports, R&D spending and capital spending. Source: IP Watch Dog, May 2014 Creation Innovation IP rights Human capital Other Benefits: • Keep others from making or using your product/method • Protect good will of company • Collateral for financing • Revenues from licensing • Many, many, more
- 7. Intellectual Property • Patents • Trademarks • Copyrights • Trade Secrets
- 8. Variety of Forms of IP – … Novelty What Do You Have? Work of authorship Indicator of source of goods or services Invention Legal Classification Copyright © Trademark/Servicemark TM SM ® Patent Trade Secret Mode of Protection Inherent, though some benefit to registration Use in commerce (regional); benefits to registration Must teach, must register (file) Reasonable steps to maintain secret Comments Does not exclude independent development Words, designs, shapes, colors, sounds, smells… but nothing descriptive (initially), but immoral may be OK Next slides… State law/common law; reverse engineering, bad employee, independent development defeat
- 9. Global IP is Territorial • IP rights are territorial – The scope is limited to where the right is granted – For each country/region you want IP rights you must: • Register • Use • Enforce
- 10. Trademarks • Protects: words, product names, designs, colors, sounds, brands • Duration: as long as the mark is being used • Law: • Federal law (15 U.S.C. §§1051-1141, n.8131) • State laws
- 11. Trademarks • What is a Trademark? 15 U.S.C. §1127 − Any word, name, symbol, or device, or combination thereof • Used by a person, or • Which person has a bona fide intention to use in commerce and applies to register on the principal register • To identify and distinguish goods from those of others, and to indicate the source of goods
- 12. Acquiring Rights • Use mark in connection with the sale of goods/services Services – Place Mark On: •Brochures •Billboards •Direct mail leaflets •Instruction manuals Goods - Place Mark On: •Goods •Container •Displays closely associated with goods •Tags or labels affixed to goods • Intent to Use Application – a placeholder to establish priority
- 13. Federal Registration • Does not give rights to use the mark • Benefits of Registration: − Broadens scope of rights to include entire United States − Allows for suing infringers in federal court − Significant evidence of validity of and owner’s exclusive rights in mark − Notice to the public of claim of ownership of the mark
- 14. Federal Registration • Benefits of Registration (continued) − Legal presumption of exclusive right to use the mark nationwide in connection with goods identified in registration − Date of constructive use of the mark as of the date the application is filed (even if “ITU”) − Principal Registration can obtain status of “incontestability”
- 15. Registration Trademark Registers on the Principal Register Select Several Alternative Marks Preliminary Search for Each Mark Full Search for Best Marks MR Files Application and Verified Statement Application Receives Notice of Allowance Responses to Action(s) Filed Examiner Issues Office Action(s) Use “TM” or “SM” Use the Mark in Appropriate Manner File Statement of Use Examiner reviews (descriptive or confusingly similar) Publication of Application Use ® Public can file Opposition to Registration File Continued Statements of Use in years 5, 10, every 10
- 16. Ownership • 15 U.S.C. §1060 − Assignment, merger, or name change − Registered marks are assignable with the good will of the business − Assignments shall be in writing − Void against subsequent purchaser for value without notice, unless recorded at PTO within 3 months after date of assignment or prior to the subsequent purchase
- 17. Trademarks • What to do? − Use It or Lose It − Consistency – of use and with registration − Put Third Parties on Notice of Rights • TM for unregistered marks • ® for registered marks − Mind Your Assignments – must transfer goodwill and record with Trademark Office − Trademarks are Territorial – must protect in each country
- 18. Copyrights • Works of authorship − Literary Works − Books − Articles − Advertising copy − Source code − Pictorial works − Photographs − Paintings − Graphical user interfaces
- 19. Copyrights • Works of authorship − Sculptures − Photographs − Musical works − Different ownership rights for songwriting and recordings − Architectural works − Can overlap with design patents
- 20. Copyrights • Registration at Copyright Office essentially a rubber stamp • Deposit required − Mostly filling out forms − Inexpensive − Fees are $35/$55, etc. − Registration prerequisite for filing suit − Pre-infringement reg. required for attorneys’ fees, statutory damages (<=$150K)
- 21. Patents • 3 types − Utility • Most common; protects structure and function − Design • Protects ornamental appearance − Plant • Asexually reproduced new and distinct varieties
- 22. Patents • U.S. Patent Laws substantially revised on September 16, 2011 with the Leahy-Smith America Invents Act, Public Law No. 112- 29 (H.R. 1249), 125 STAT. 284 • Converted U.S. from a “first to invent” country to a “first inventor to file” country
- 23. Patents • Protects: Inventions • Common Misconception: a patent allows you to do something • Truth: a patent allows you to stop others from doing something • Can include: Products, Processes, and Compositions • Duration: 20 years from date of filing
- 24. Patents • Offensive and Defensive • Patents can be enormously profitable – you may prevent the use, manufacture, and/or sale (including importation) • Your independent development is not a defense to infringement – “Freedom to Operate” – do you infringe someone else’s patent?
- 25. Types of Patents • Design • Plant • Utility • Provisional • one year • filed for filing date priority • not examined, so no patent granted • allows for “patent pending” • Non –Provisional • examined for patentability • 20-year patent protection from filing • Maintenance fees • 3.5/7.5/11.5 yrs • $12,600/$6,300
- 26. Patent Life Cycle Filing or “priority” date Foreign filing deadline Patent published & visible Patent granted Patent Expires 12 months 6 months 12-24+ months JP, CN Europe Etc.… 20 years – Patent Life PatentFamily
- 27. Getting a Patent
- 28. Patents • Despite the changes in the law, to be patentable, an invention still must be: − Useful (35 U.S.C. §101) − Novel (35 U.S.C. §102) − Non-obvious (35 U.S.C. §103)
- 29. Patents • Utility—35 U.S.C. §101 − Requires practical application • Does the invention really do anything? • Is there some contribution to society as part of the bargain with the Federal Government?
- 30. Need Not be Good!
- 31. Need Not be Good!
- 32. Need Not be Good!
- 33. Need Not be Good!
- 34. Patents • Utility—35 U.S.C. §101 cont. − Supreme Court recently created confusion on this issue − Abstract ideas not “patent eligible” unless claims recite “significantly more” − Prior art not supposed to be considered − But Examiners freely arguing things are “well-known” − Mostly comes up with software and business method patent applications − But also in other areas in which software is at issue, such as robotics
- 35. Patents • What is Prior Art? − Information publicly available prior to filing date − Examples: • Patents • Publications • Offers for sale • Public use • “Otherwise publicly available”
- 36. Patents • Novelty—35 U.S.C. §102(a)(2) • Novelty involves a single prior art reference • Examiner’s can/do argue that features are “inherent” − Patent applications typically publish 18 months after filing − One reason patentability searching is inconclusive − People who do their own searching often don’t consider patent office records
- 37. Patents • Novelty—35 U.S.C. §102(a)(1)* − No patent if invention was • described in printed publication, or • in public use, or • on sale or otherwise available to the public before the effective filing date *as of March 16, 2013
- 38. Patents • Novelty—35 U.S.C. §102(a)(2) − No patent if invention was described in a • patent or • published patent application • in which the patent or the published application: − names another inventor and − was filed before the date of the claimed invention
- 39. Patents • Obviousness—35 U.S.C. §103 − A patent for a claimed invention may not be obtained…if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.
- 40. Patents • Obviousness—35 U.S.C. §103 cont. − Typically supported by a combination of multiple prior art references − Examiner must demonstrate motivation to combine references − But this is usually not difficult − No limit as to how many references can be combined − Does the claimed combination “do more than yield predictable results?”
- 41. Patents • Ownership—35 U.S.C. §261 − Have the attributes of personal property − Assignable in writing − Owner can assign or license all or portions of the patent − Conveyance void as against subsequent purchaser, without notice, unless recorded within 3 months of its date or prior to subsequent purchase
- 42. Patents • Licensing—35 U.S.C. §261 − Express • Exclusive • Non-exclusive − Implied-in-fact − Implied-in-law • Common law shop rights • First sale doctrine/exhaustion/implied license
- 43. Patents • Joint Ownership—35 U.S.C. §262 − Absent agreement to the contrary, each joint owner may make, use, sell, offer to sell, or import the patented invention • Without the consent of the other joint owners (!) • Without accounting to the other owners (!) • Re-read this!
- 44. Patents • What to do? − Every agreement in writing − Every assignment to company − Every license to/from company − Record every agreement/license at PTO − Have clear employment agreements
- 45. Types of Patents • Design • Protect ornamental appearance • Much easier/cheaper to obtain than utility • Only last 14 years • No maintenance fees • Plant • Utility
- 46. Types of Patents • Design
- 47. Helpful Links IP for Small/Medium Sized Business: • http://www.wipo.int/sme/en • http://www.wipo.int/sme/en/ip_business/ • https://hbr.org/resources/html/infographics/2014/11/will -you-fall-into-ip-traps/index.html • http://intellectualpropertyexplorer.com/
- 48. Helpful Links Trademarks: • www.inta.org • www.icann.org • www.wipo.int/madrid Patent: • www.uspto.gov • www.wipo.int/patent/en/index.html • www.wipo.int/pct/en/index Copyright: • www.wipo.int/copyright/en/index.html • www.bsa.org • www.copyright.gov
- 49. Thank you Brantley Shumaker, Esq. Registered Patent Attorney Intellectual Property Group MIDDLETON REUTLINGER PSC 401 South 4th Street, Suite 2600 Louisville, KY 40202 502-625-2720 bshumaker@middletonlaw.com Copyright 2017 Middleton Reutlinger All rights reserved
Editor's Notes
- MOVE THIS TO SLIDE 1
- NOT simply a separate “legal” issue It’s a human-made mechanism to monetize intellectual capital by giving creators a limited time to exploit their rights
- Move this to SLIDE 2 IP touches many aspects of your business every day.
- Back to PREVIOUS SLIDE When properly viewed as a BUSINESS ASSET, and not merely a legal issue: Numerous benefits! Source: http://www.ipwatchdog.com/2014/05/02/the-economic-case-for-strong-protection-for-intellectual-property/id=49376/
- But . . . the key is that . . . IP rights are territorial!
- Others of you are involved in companies that rely more on the company brand and name-recognition This identifies your company in the market as a source for quality services and goods
- “The owner of a trademark used in commerce may request registration of its trademark on the principal register hereby established by . . . filing in the Patent and Trademark Office an application and a verified statement . . . and such number of specimens . . . .” 15 U.S.C. § 1051(a)(1). The verified statement must specify that the mark is in use in commerce. 15 U.S.C. § 1051(a)(3)(C).
- Some of you are involved in businesses and industries that rely in large part on Technological advances and innovations Some of your products and processes may very well be covered by U.S. patents
- Assignments must be in writing. However, nothing in the statute limits assignment as the only means for transferring patent ownership, which can change by operation of law. Foreign intestacy laws may decide patent ownership and therefore standing to sue for infringement. Akazawa v. Link New Tech., 520 F.3d 1354, 1356 (Fed. Cir. 2008). Property rights under Section 261 attach to patents as a whole, not to individual claims. Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1466 (Fed. Cir. 1998).
- This means that each owner can license independently. Wisconsin Alumni Research Found. v. Xenon Pharms., 591 F.3d 876, 882 (7th Cir. 2010). And, because an action for infringement must join as plaintiff all co-owners, one co-owner has the right to impede the other co-owner’s ability to sue infringers by refusing to voluntarily join in such suit. Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1467-68 (Fed. Cir. 1998).
- This means that each owner can license independently. Wisconsin Alumni Research Found. v. Xenon Pharms., 591 F.3d 876, 882 (7th Cir. 2010). And, because an action for infringement must join as plaintiff all co-owners, one co-owner has the right to impede the other co-owner’s ability to sue infringers by refusing to voluntarily join in such suit. Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1467-68 (Fed. Cir. 1998).