Intellectual Property Patents, Copyrights,Trademarks and Trade Secrets

Four Forms of Intellectual Property Copyrights © - creative works of art Writings, lyrics, poems, music Trademarks ™ ® Logos like IBM’s Trade Secrets Knowledge that is kept secret by a company Formula for Coca Cola Patents Inventions or things and processes CS 4001

Copyrights and Patents Congress shall have the power ... To promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive rights to their respective writings and discoveries. Copyright applies to writings Patent applies to inventions CS 4001

Copyright - AGOF Chapter 5 Extensive discussion - also see AGOF lecture notes Originally for 14 years Renewable for 14 years if author living Copyright Act of 1976: Retroactively extended to up to 75 years Sony Bono Copyright Term Extension Act 1998 Extended yet another 20 years Currently author’s life + 70 years “Works for hire” - shorter of 95 years from publication or 120 years from creation (MM) CS 4001

Patents - Topics What is a patent? How to get a patent? Why patent?

What is a Patent? A description of a new idea that would not be obvious to a person of “ordinary skill in the art” Must pass an originality test with the US Patent and Trademark Office (USPTO) A piece of property, granted for a finite number of years as a monopoly to the patent holder Can be licensed to others (usually for a fee, but not always) Can be inherited Acquired when a company is bought by another CS 4001

Patent Ownership Inventor Most employment agreements assign patent to the employer Sometimes the employer assigns the patent to company paying for development CS 4001

Design Patent Last for 14 years Protects the look/shape of an object The shape of a car CS 4001

Utility Patent Machine Manufactured item Process (computer algorithm, chemical process, way to make a drug) Business method Amazon vs Barnes & Noble on one-click shopping Composition of matter (a drug) Any new and useful improvement of any of the above 20 years from date of application CS 4001

Plant Patent Distinct and new varieties of plants that have been invented or discovered and asexually reproduced 20 years from date of application CS 4001

Can Not Patent if Is not new, ie, is not an invention Fails the utility test - is it good for something Was known to the public more than a year prior to filing date Obvious variation on a known technology Obvious to “one skilled in the arts” CS 4001

www.uspto.gov CS 4001

Obligations of the Inventor Disclose everything about the invention in the patent application to the USPTO If patent is granted, it is published by USPTO Two years after filing if not yet granted CS 4001

Patent has four parts Front Page Drawings Specification aka Description Claims CS 4001

Front Page Date Granted Inventor(s) Owner(s) Date Filed Patent Examiner has looked at these patents Illustrative figure

Drawing Number with each portion of the figure called out in text. All numbers for Fig 7 begin with 7.

Specification Line number Column number

Specification Is of the preferred embodiment There must be an instantiation of the patent Used to be submitted to USPTO as a working model CS 4001

Claims Claims are not limited to the preferred embodiment An independent claim A claim element Another claim element A dependent claim Claims are not limited to the preferred embodiment

Legal Issues about Patents Validity of a Patent - Did USPTO make a bad decision? Is it really an invention? Was there prior art? Would it have been obvious to someone skilled in the art at the time? Infringement - is someone’s product practicing the invention? CS 4001

Patent Validity Issued patent is presumed valid Burden of proof is on party alleging invalidity Typically happens when someone sued for infringement Each claim stands alone A claim being invalid does not affect other claims Dependent claim can be valid even if claim on which it depends is invalid CS 4001

Patent Invalidity -Anticipation A claim is anticipated iff Each element of the claim exists in a single publicly available publication or product at least one year prior to publication of the document or sale of the product CS 4001

Patent Invalidity - Obviousness Each element exists in some publicly available document or product at least one year…. AND the invention would have been obvious to one of ordinary skill in the art CS 4001

Patent Infringement At least one claim must be infringed Literal Infringement Compare claim with the accused product Determine whether each element of claim is present If so, then accused product infringes that claim Infringement Under Doctrine Of Equivalents If the differences between the product and the claim element would be considered insubstantial by a person of ordinary skill in the field at the time of the alleged infringement, then… CS 4001

First to Invent, First to File First to Invent - US First to file - most other countries CS 4001

Provisional Patent A short-term and inexpensive place-holder Good for a year Then must file real patent application CS 4001

How to Get a Patent Do it yourself :-( Pay a lawyer ~$10,000 plus maintenance fees after 3, 7 , and 11 years on utility patents Takes typically two years Often have several iterations with patent examiner (read $$) Success rate about 2 out of 3 CS 4001

Why Patent To protect an idea To build a wall around your product To limit a competitor’s options For cross-licensing CS 4001

Avoiding Infringement Really hard to do If are patenting the new idea, then patent search and application will come close But if not doing a patent, then may not know Willful infringement vs Non-willful infringement CS 4001