1. Intellectual Property: Copyrights, Patents, Trademarks, and Trade Secrets.
Jonathan D’Silva
MMI Intellectual Property
900 State Street, Suite 301
Erie, PA 16501
Office:
Direct:

2. Copyright Notice
Copyright © 2017
D’Silva Law Group, PLLC
All Rights Reserved
All materials contained herein are protected by United States copyright law and may not be reproduced, distributed, transmitted, displayed, published, or broadcast without the prior written permission of D’Silva Law Group, PLLC, d.b.a. MMI Intellectual Property.
The information contained in this presentation is for informational purposes only. These materials should not be viewed or interpreted as providing legal advice. Please consult an attorney concerning your own situation. Use of this presentation or related content should not be construed as created an attorney-client relationship.

3. Patents

4. What is Patentable? 35 U.S.C. 101 Inventions Patentable
"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore…"

5. What is Patentable? Applied Computer Software Business Methods
Machinery
Gadgets
Compositions of Matter
Methods of Using Any of the Above

6. Requirements for Patentability
Novelty
Must incorporate something new
Utility
No perpetual motion machines
Non-obviousness
Patentable subject matter
"Anything new under the sun" that is made by man
Cannot patent "the laws of nature, physical phenomenon, and abstract ideas" – no equations, no theories
Enablement
Must disclose how to practice the invention

7. Types of Patents Utility Patents Design Patents Plant Patents
"process, machine, manufacture, or composition of matter, or any new and useful improvement thereof"
Design Patents
"new, original, and ornamental design for an article of manufacture"
Plant Patents
"invents or discovers and asexually reproduces any distinct and new variety of plant“
Provisional Patent
1 year placeholder for Utility Patent Applications

8. Patent Terms Utility and Plant Patents Design Patents
Prior to June 8, 1995, 17 years from date of grant
After and on June 8, 1995, 20 years from date of filing
Must pay maintenance fees at 3.5 years, 7.5 years and 11.5 years after grant
Design Patents
15 years from date of grant
No maintenance fees
Provisional Patent
1 Year from filing

9. Patent Filing Deadline
For Patents Not Available for International Protection
Deadline to file U.S. patent application
Date of first:
-Offer for sale
-Public use
-Publication
-Public disclosure
-Non-confidential written disclosure
365 days

10. Paris Convention International patent filings
365 days
Date of first U.S. formal or provisional patent application
Deadline to file in all foreign patent offices and/or regional patent offices.

11. Patent Cooperation Treaty (PCT)
For Patents to be Filed in Multiple Countries:
Date of first U.S. formal or provisional patent application
Deadline to file PCT (International) Application
International Examination
(Ch. II)
National Phase
365 Days
Months 12 18 30 19
Application goes to various national/regional patent offices
Application gets published

12. Provisional Application
Filed with the USPTO but not examined
Purpose is to establish priority date and conform with international patent practice
Non-provisional (formal) patent application must be filed within 1 year and have at least one common inventor with the provisional application
Allows use of the term "patent pending" on the invention

13. Provisional Application
Application is kept confidential and never published
Inventor may sell, continue developing, publish, and promote the invention without loss of patent rights; but:
Risk loss of rights if you do not convert the application to a non- provisional application
Any public disclosure starts the 1 year statutory time bar if non- provisional application is not filed

14. Non-provisional Patent Application
Must be a complete application – no new matter may be added later
May claim priority from a provisional patent application, a prior filed non-provisional patent application, or an International Patent Application filed under the PCT
Allows use of the term "patent pending" on the invention
Application is published 18 months after filing unless a non- publication request is made
May only request non-publication if you waive the right to seek patent protection overseas

15. Patent Cooperation Treaty (PCT)
Entered into force in 1978.
Currently 148 member countries.
Administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva.

16. Patent Cooperation Treaty (PCT)
Does not result in a patent
Allows residents of any signatory state to file patent applications that will have effect in multiple states.
Gives applicants 30 months (from priority date) to decide whether to file patent applications in other countries.

17. Patent Costs Prepare Application: $5,000 - $50,000+
Search Prior Art: $800 - $2,500
Analyze Prior Art: $500 - $1,500+
Filing Fees at USPTO: $1,600 - $2,500+
Filing Fees for PCT: $3,750 - $5,000+
Respond to Office Actions: varies
Issue Fee: $960
Maintenance Fees (US): $1,600/$3,600/$7,400

18. Infringement Must show that every element of the claims is infringed.
Recovery: Lost Profits, Reasonable Royalty, Triple Damages, Injunction, Attorneys Fees.
National scope: No infringement for activity outside of the country of the patent.
Suit must be filed within six years of infringement.

19. Defenses to Infringement
Prior Use
Invalid Patent
Previously unknown prior art
Mistake at the Patent Office
Improper Inventorship
No Actual Infringement

20. Joint Ownership Multiple owners may jointly own a patent.
Each owner is a full owner of the patent rights.
Make, Use, Offer to sell, Sell, and Import the patented invention.
No consent or accountability needed.
Owners may dispose of their interest independent of the other owners.
Ownership agreements must be recorded with the patent office within three months from date of agreement.

21. Benefits of Patents
Patent owner may prevent others from making, using, selling, offering to sell invention for the life of the patent.
Helps to keep competitors out of the market.
Licensing opportunities.
Marketing opportunities.
Most companies avoid infringement.

22. Risks of Patents Expensive to obtain
Expensive to enforce through litigation (corollary: threatening litigation can be effective)
No guarantee of success
Prosecution risk
Enforcement risk