1. Patent & Trademark Law LOYOLA PRESENTATION Copyright © 2014, Fitch, Even, Tabin & Flannery LLP and Neal & McDevitt, LLC. All rights reserved.

2. Patent & Trademark Law  What is a patent? Why important, value to you and your client  How to obtain a patent Copyright © 2014, Fitch, Even, Tabin & Flannery LLP and Neal & McDevitt, LLC. All rights reserved.

3. Patents  What is a patent?  What is patentable?  Structures, processes, programs, designs  Benefits of Patents  Support Competitive Position  Support commercial position with suppliers  Control licensing and joint ventures  Trade-off in infringement situations Copyright © 2014, Fitch, Even, Tabin & Flannery LLP and Neal & McDevitt, LLC. All rights reserved.

4. Requirements to be Patentable  New  Useful  Non-obvious Copyright © 2014, Fitch, Even, Tabin & Flannery LLP and Neal & McDevitt, LLC. All rights reserved.

5. Requirements to be Patentable  Useful—it works, it has some legal purpose  First to file  New—not shown by prior art  Patents  Printed publications  Products offered for sale, sold or publicly used Experimental use  Prior invention  Grace period (U.S. but not foreign)  Duty of Disclosure Copyright © 2014, Fitch, Even, Tabin & Flannery LLP and Neal & McDevitt, LLC. All rights reserved.

6. Patent Process  Preparation of application  Formal documents signed by inventors  Missing Parts, what is going on here?  Lots of events and interactions to docket, track, and process, many with deadlines to be observed Copyright © 2014, Fitch, Even, Tabin & Flannery LLP and Neal & McDevitt, LLC. All rights reserved.

7. Patent Pending  U.S. Patent Office Prosecution (normally 2-3 years) (patent good from issue to 20 years from application)  Official Action from Patent Office after about a year  Patent Office allows or rejects, with possibility to appeal, refile or abandon the application  If case not allowed, response is filed  Once case allowed, patent issue in a few months  Continuation-In-Part (improvements)  Divisional Application (more than one invention, need daughter application)  Foreign Patents, file within one year first application Copyright © 2014, Fitch, Even, Tabin & Flannery LLP and Neal & McDevitt, LLC. All rights reserved.

8. Process Map Copyright © 2014, Fitch, Even, Tabin & Flannery LLP and Neal & McDevitt, LLC. All rights reserved.

9. Model Patent Timeline Copyright © 2014, Fitch, Even, Tabin & Flannery LLP and Neal & McDevitt, LLC. All rights reserved.

10. A Bit Of Trivia About Patents Copyright © 2014, Fitch, Even, Tabin & Flannery LLP and Neal & McDevitt, LLC. All rights reserved.

11. Trademark  What is a trademark?  Prosecution—all actions associated with obtaining and maintaining a trademark registration  Enforcement—all actions associated with policing the market for infringing third party use Copyright © 2014, Fitch, Even, Tabin & Flannery LLP and Neal & McDevitt, LLC. All rights reserved.

12. Trademark Litigation  3 types of litigation  Federal lawsuits—typically for trademark infringement, dilution, unfair competition  Oppositions—trial before the Trademark Trial and Appeal Board (TTAB) seeking to prevent registration of a pending application  Cancellations—trial before the TTAB seeking to cancel an existing registration Copyright © 2014, Fitch, Even, Tabin & Flannery LLP and Neal & McDevitt, LLC. All rights reserved.

13. Typical Tasks of a Trademark Paralegal  Conducting preliminary/knockout searches for clearing marks and/or advertisements  Conducting research based on results of preliminary or comprehensive search  Preparing and filing new applications and renewal applications  Maintaining evidence/use files  International portfolio management Copyright © 2014, Fitch, Even, Tabin & Flannery LLP and Neal & McDevitt, LLC. All rights reserved.

14. Typical Tasks of a Trademark Paralegal Continued  Reviewing watch reports and providing recommendations for next steps  Assignments  Drafting all correspondence to clients and drafting briefs for litigation  Explaining complex issues in layman’s terms Copyright © 2014, Fitch, Even, Tabin & Flannery LLP and Neal & McDevitt, LLC. All rights reserved.

15. Technical Skills  USPTO and TTAB site are generally user friendly  High use of specialized software for clearance, watching, etc.  Docketing software Copyright © 2014, Fitch, Even, Tabin & Flannery LLP and Neal & McDevitt, LLC. All rights reserved.

16. Current Trends in IP  Tone and wording of cease and desist letters  IP Rights in Social Media Copyright © 2014, Fitch, Even, Tabin & Flannery LLP and Neal & McDevitt, LLC. All rights reserved.

17. Globalization of IP and International Protection  Madrid Trademark Filing System via WIPO (World Intellectual Property Organization)  90+ members Copyright © 2014, Fitch, Even, Tabin & Flannery LLP and Neal & McDevitt, LLC. All rights reserved.

18. How to Break into the IP Field  Entry level positions—administrative assistant/secretary  Networking opportunities—IPLAC (Intellectual Property Law Association of Chicago) and INTA (International Trademark Association) Copyright © 2014, Fitch, Even, Tabin & Flannery LLP and Neal & McDevitt, LLC. All rights reserved.

19. The Ideal Paralegal Is…  Attention to Detail – Detail Oriented  Organized  Reliable  Consistent  Flexible  Trustworthy Copyright © 2014, Fitch, Even, Tabin & Flannery LLP and Neal & McDevitt, LLC. All rights reserved.