Intellectual Property an Introductory Primer United States Patent and Trademark Office

Ideas! The way to have a good idea is to have lots of ideas and throw the bad ones away – Linus Pauling, 20 th Century chemist Invention isn’t some impenetrable brand of magic, anyone can have a go –Trevor Baylis, inventor, wind-up radio A good idea is never lost. Even though it’s originator or possessor may die without publicizing it, it will someday be reborn in the mind of another –Thomas A. Edison, inventor

Inventors Genius “Genius is one percent inspiration and ninety-nine percent perspiration. Accordingly, a genius is often merely a talented person who has done his or her homework.” -Thomas Edison Like genius, inventors need to do homework to make the most from their inventions and IP protection

Inventors, Inventions & Patents – Their Influence on our Lives Howe – Sewing machine – 1846 Bradley – Game board – 1866 Davis – Blue jeans – 1873 Glidden – Barbed wire – 1874 Otto – Gas engine – 1876 Cochran – Dishwasher – 1886 Benz – Automobile – 1886 Tesla – Electric motor – 1888 Painter – Bottle cap – 1892 Kellogg – Cereal – 1896 Gillette – Safety Razor – 1904 Carrier – Air-conditioner – 1906 Birdseye – Refrigerator – 1927 Baird, Zworykin, Farnsworth – Television – 1920s,1930,1938 Drew – Adhesive tape – 1928 Darrow – Monopoly – 1935 Carlson – Photocopier – 1940 Plunket – Teflon® – 1946* Spencer – Microwave – 1950 Woodland et al. – Bar codes – 1952 Bohlin – Seat belt – 1962 Eckert, Jr. et al. – Computer – 1964 Kilby – Microchip – 1964 Mestral – Velcro® – 1960s Engelbart – Mouse – 1970 Weber – Snow board – 1975 Dyson – Bagless vacuum – 1980s Who and what is next??

Small Business/Entrepreneur/Inventor So where is the intellectual property?

Where Do We Go Now? High tech Low tech Mixture of both

High Tech

Low Tech

Mixture of Both

Creativity Protection Homework –Notebook Type Importance Patentability –Search Marketability

Important Steps Filing of application before disclosure –US importance –Foreign rights Types of Utility Applications –Provisional one year period, no claims required, written disclosure must meet same requirements as non-provisional, not allowed for design. –Non-provisional claims required, written disclosure must meet requirements of 35 USC 112 1st paragraph. Examined for patentability, can result in a patent.

America Invents Act First Inventor to File –Derivation Micro Entity Status –75% reduction on most fees Pro bono programs Electronic filing incentive Paper filing adds $200, no discount for micro-entity * New fees will apply after 3/16/2013

Fees Reduction of 75% from large entity fees UtilityDesign Basic filing Search Examination Issue Maintenance Track

Design Application 14 Ornamental design of invention –No provisional applications Lower fees than Utility Shorter wait for examination that utility 15 year term from issue No maintenance fees

8 Foreign Filing Country by country PCT –PCT is a filing system, it does not grant a patent –Allows entry of designated country national stage application process

13 Trademark Protection Product identification –Word, phrase, symbol/design or combination that identifies source of goods –Service mark is same as Trademark for identification of source of service Is registration required? –Use of TM or SM –Registration provides Constructive notice Legal presumption Ability to bring action in federal court, and others

13 Trademark Application? Requirements for registration –Use of mark in commerce; and –File an Allegation of Use Sworn statement, $100 fee & specimen showing use in commerce Term –Ten years original; ten years for renewal Madrid protocol –“International registration” –Allows member countries to apply own laws

18 Copyright Protection Original work of authorship –Protected at creation –For published and unpublished work –Registration provides legal presumption Term and cost –Authors life + 70 years or 95 year from publication/120 years from creation for anonymous works –Basic fee - Currently $45 ($35 electronic submission)

19 Trade Secret Any information that derives economic value from not being generally known or readily ascertainable Can be formulas, patterns, compilations, programs, devices, methods, techniques or processes No fees or term limits Are covered under contract law Protection stems from common law dating to the 1800’s All states have some sort of trade secret protection Most laws based on the Uniform Trade Secrets Act

Contact Information John Calvert Senior Advisor Office of Innovation Development United States Patent and Trademark Office Department of Commerce Alexandria, VA