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Jonathan D’Silva MMI Intellectual Property 900 State Street, Suite 301

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Presentation on theme: "Jonathan D’Silva MMI Intellectual Property 900 State Street, Suite 301"— Presentation transcript:

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


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