1. Fundamentals of Intellectual Property
Presenter
Jeffrey Siew
United States Patent and Trademark Office

2. Objectives This module presents the fundamentals of
intellectual property, including the following topics:
Definition of Different Types of Intellectual Property (IP)
(2) Strategic Application of IP
(3) Rights reserved to the rightful IP owner

3. Patented Products Can you identify a patented product on this desk?
Inventor: Timothy Miller Steven Jobs Alexander Graham Bell
Invention: Ergonomically condensed Touch screen device, Improvement in telegraphy QWERTY keyboard method and graphical
user interface for
determining commands
by applying heuristics
Patent number: 5,660, ,479, ,465
Application filed: 9/23/ /11/08 2/14/1876
Patent granted: 8/26/ /20/09 3/7/1876

4. Intellectual Property Identified
Cover and drawings of a famous patent
Intellectual Property Identified
LCD monitor
LCD stand
Printer
PC speaker
Phone
Staple remover
Stapler
Post-it Notes
2 hole punch
iPhone
Binder clip
Computer mouse pad
Ergonomic keyboard
Keyboard support
Computer mouse

5. Types of Property Real property Intellectual property
Personal property

6. What is Intellectual Property
4 types of intellectual property:
Copyright
Trademark
Trade Secrets
Patent

7. Copyright
Definition: A form of protection provided to the authors of “original works of authorship”
Protects: Literary, dramatic, musical, artistic, and certain other intellectual works
Duration: In general, author’s life + 70 years
For more information on copyright,
visit the U.S. Copyright Office website at

8. Trademark
Definition: Any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods or services
Protects: All of the above & logo, banner, sound, smell, etc.
Duration: 10-year terms with 10-year renewal terms
Trademark Registration #: GE: , Kellogg’s : , LG: , FedEx: , Starbucks: , IBM:

9. Trade Secrets
Definition: Any information that provides economic value that is not in the public domain and that has been reasonably kept secret
Protects: Formulas, patterns, compilations, programs, devices, methods, techniques or processes
Duration: As long as they remain secret
Trademark Registration #: Coca Cola: , KFC:

10. What is a Patent?
A grant by the U.S. Government conferring to an inventor the right to exclude others from the:
manufacture
sale or offering for sale
use
or importation of
her/his invention
in/into the U.S.
Letters
Patent

11. U.S. patent system is a quid pro quo
Patent Fundamentals
U.S. patent system is a quid pro quo
The inventor discloses the invention to the public in specific terms
The government grants exclusive rights to the inventor
When an inventor discloses his/her invention to the USPTO in specific terms that are understood by one having ordinary skill in the technology of that invention and that invention is new, non-obvious and useful then the inventor is awarded with a grant of patent rights that establish a “monopoly” of that invention for a period of years set by statute – presently 20 years from the date the application is first filed.
Henry Ford – 161 patents

12. Types of Patents Utility Design Plant
New and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof
Design
Any new, original and ornamental design
Plant
Whoever invents or discovers and asexually produces any distinct and new variety of plant
Three Types of Patents
1. Utility - inventions that function in a unique manner to produce a utilitarian result.
2. Design - covers the unique ornamental or visible shape of a non-natural object.
3. Plant - covers asexually reproducible plants (flowers) or as some of us like to say plants that don’t have any fun.

13. Design Patent Applications
Design patents protect the way an object appears, ornamental features of invention
No provisional application
15 year term, from issue
No maintenance fees

14. Designs Design may consist in configuration or ornamentation or both.
In re Schnell, 8 USPQ 19 (CCPA 1931)
(1)
Surface ornamentation applied to an article
(2)
Configuration embodied in an article
(3)
Configuration and Surface ornamentation for an article

15. Design vs. Utility A design patent protects the way an article looks;
A utility patent protects the way an article is used or works
Both design and utility patents may be obtained for the same article.

16. Filing for a Patent – Why bother?
Creation of Assets (To Sell or License, Collateral for Financing)
Building Block for Future Inventions
Source of Historical Information
Contribution to Society
Example of creation of assets is IBM
Example of Historical Information, mention classification system
Contribution to society - air bags, medicine, environment

17. Who Enforces Patents?
Infringement: Violation of any of the patent rights – unauthorized use, sale, offer for sale, or importation into the U.S. of the invention
Enforcement: Private right enforced by Patent Owner, not the government. U.S. Patent enforceable only in U.S.

18. Overlapping IP Protection
These IP rights are often confused.
There are some similarities, but these IP rights are different and serve different purposes.
But they need not be mutually exclusive.
For any one product, more than one form of IP protection may apply, as long as it meets the requirements of the laws that govern that form of protection.

19. Overlapping IP Protection
For a CLASSIC example of overlapping IP protection….

20. Overlapping IP Protection: The Coca-Cola Contour Bottle
In 1915, the Root Glass Company won a Coca-Cola Company contest for a bottle design that would be recognizable to everyone, even by touch in the dark.
The first design patent on the “hobble skirt” contour bottle was granted on Dec. 25, 1923, to the bottle manufacturer (known as “the Christmas bottles”).
We do not know if this is true – but rumor has it that the Edwardian period “hobble skirt” was the inspiration for the contour of the bottle.

21. Overlapping IP Protection: The Coca-Cola Contour Bottle
The second design patent for the contour bottle was granted to the Coca-Cola Company on August 3, 1937, preventing imitation of the bottle for another 14 years.

22. Overlapping IP Protection: The Coca-Cola Contour Bottle
The bottle shape became so well known that it became synonymous with the Coca-Cola product.
The Coca-Cola Company sought and obtained a federal trademark registration for its contour bottle shape on April 12, 1960, enabling the company to safeguard the bottle design indefinitely.

23. Overlapping IP Protection: The Coca-Cola Contour Bottle
Trademark: COCA-COLA, COKE, shape of bottle
Copyright: Advertising and Promotion
Trade Secret: The formula (SHHH! It’s a secret!)

24. Utility Patent Applications
Provisional:
One year period
Filed for filing date priority
No claims required
Not examined, so no patent
Not allowed for design
Non-Provisional:
20-year patent protection
from filing date
Examined for patentability
Claims required

25. #1 Problem – Territoriality
Failure to understand that almost all countries of the world require trademark registration to have effective trademark protection AND failure to understand that a patent is required in any country where a company wants to enforce its patent rights.
Use of a trademark on goods or services without registration does not provide effective trademark protection, except in a handful of countries (like the U.S.).
The concept of “prior art” may not protect a patent holder against issuance of an infringing patent; the patent holder must have a patent in that country to enforce against infringers.

26. Protection Outside the U.S.
Using a U.S. patent application for priority elsewhere:
Paris Convention:
Filing individual patent applications in the US and each other country where protection is desired, based upon Paris Convention priority (Must file all applications within 12-months of filing the U.S. patent application)
Instead of, or in addition to claiming priority, may file under the:
Patent Cooperation Treaty:
Filing a single application designating all the countries which are part of the treaty

27. Who is entitled to a patent?
Throughout the world
The first (inventor) to file a complete application is entitled to a patent, provided the invention was not copied from another
In some countries
Grace Period

28. Overview of Website Click on “Inventors”
Helpful links for independent inventors
- General Information
- Introductory Guides
- FAQs
- Upcoming Events
- Registered Attorneys & Complaints Against
- Inventors Assistance Center
- and much more…
Click on
“Inventors”

29. Inventor Resources
Wide variety of resources to help the independent inventor
FAQs, Online Chat Transcripts, events, and more
Administered by the Office of Innovation Development
FAQs on a wide variety of subjects related to patents and trademarks
Searchable online chat transcripts from conversations with USPTO experts provide a wealth of information and answers
Inventors Assistance program

30. Inventors Eye
Our Inventors Eye online newsletter is produced specifically for Independent Inventors and small businesses.
Entertaining and educational stories on issues in the innovation and patent world that appeals to independent inventor and small business audiences.
The popular Spark of Genius section profiles independent inventors and their success stories.
Advice section breaks down specific patent and trademark issues that specifically impact independent inventors and small businesses.

31. Contacts For Direct Help
Inventor Assistance Center (IAC) for general questions about the application process
Telephone: (571) or (800) ,
8:30 a.m. - 5:00 p.m., eastern time M-F
Office of Innovation Development:
(571)

32. Ideas for Your Ideas Collegiate Inventors Competition
National Collegiate Inventors and Innovators Alliance
The Lemelson-MIT Awards for Invention and Innovation

33. Questions Jeffrey Siew Jeffrey.Siew@uspto.gov USPTO Website: