1. © Kolisch Hartwell 2010 All Rights Reserved, Page 1 Protecting Innovations in Green Technology Peter D. Sabido Intellectual Property Attorney Kolisch Hartwell, P.C.

2. © Kolisch Hartwell 2010 All Rights Reserved, Page 2 Overview Basics of the primary areas of intellectual property law:  Patents  Trademarks  Copyrights  Trade Secrets General considerations for each of those areas Hypothetical example

3. © Kolisch Hartwell 2010 All Rights Reserved, Page 3 US Patent No: 5,443,036 Method of Exercising a Cat "A method for inducing cats to exercise consists of directing a beam of invisible light produced by a handheld laser apparatus onto the floor or wall or other opaque surface in the vicinity of the cat, then moving the laser so as to cause the bright pattern of light to move in an irregular way fascinating to cats, and to any other animal with a chase instinct.”

4. © Kolisch Hartwell 2010 All Rights Reserved, Page 4 PATENTS Our inventions mirror our secret wishes. - Lawrence George Durrell

5. © Kolisch Hartwell 2010 All Rights Reserved, Page 5 What is a Patent? Grants the right, for a fixed period of time, to exclude others from making, using, selling, offering to sell, or importing into the United States a “patented invention”.

6. © Kolisch Hartwell 2010 All Rights Reserved, Page 6 What can be Patented? Devices Compositions of Matter Processes Articles of Manufacturing Methods of Use Software Business Methods Genetically Engineered Organisms

7. © Kolisch Hartwell 2010 All Rights Reserved, Page 7 What Cannot be Patented? Principles Laws of Nature Mental Processes Intellectual Concepts Ideas Natural Phenomena Mathematical Formulae Fundamental Truths Original Causes Motives

8. © Kolisch Hartwell 2010 All Rights Reserved, Page 8 Types of Patents Utility Patents  Protects how an invention works Design Patents  Protects how an invention looks Plant Patents  Protects new varieties of plants

9. © Kolisch Hartwell 2010 All Rights Reserved, Page 9 Requirements for Patents Useful Novel (New) Nonobvious Invented by you

10. © Kolisch Hartwell 2010 All Rights Reserved, Page 10 Is it Patentable? Existing ArticlesInvention

11. © Kolisch Hartwell 2010 All Rights Reserved, Page 11 Practice the Patent? Patent grants only a right to exclude and not a right to use A patented article may infringe a third party’s patent Patent covering chair may cover chair with wheels

12. © Kolisch Hartwell 2010 All Rights Reserved, Page 12 A Growing Field of Innovation All U.S. Patents granted 1800–2004

13. © Kolisch Hartwell 2010 All Rights Reserved, Page 13 Patent Considerations Conduct patentability searches Consider conducting clearance searches  Entering new technology area  Concerned with particular competitor File patent application before public disclosure  One year grace period in North America  No or limited grace periods in most other countries

14. © Kolisch Hartwell 2010 All Rights Reserved, Page 14 Patent Considerations Consider expediting patent applications, such as via USPTO Green Technology Pilot Program  First 3,000 green technology patents  1/3 so far in chemical & materials engineering category Mark products appropriately

15. © Kolisch Hartwell 2010 All Rights Reserved, Page 15 Hypothetical: The Banana Bike Designer: Joey Greentech New company: Shrek Bicycles, Inc. Name: BANANA BIKE

16. © Kolisch Hartwell 2010 All Rights Reserved, Page 16 The Banana Bike Banana-shaped frame more aerodynamic than previous frames Very distinctive look.

17. © Kolisch Hartwell 2010 All Rights Reserved, Page 17 The Banana Bike What may be patentable?

18. © Kolisch Hartwell 2010 All Rights Reserved, Page 18 US Patent No: 5,996,127 Wearable device for feeding and observing birds "A device for feeding and observing flying animals comprising: a hat, the hat including a front portion and a rear portion; a first support mounted on the hat and extending forward of the front portion of the hat; and a feeder configured to contain food for flying animals mounted on the first support, wherein the flying animals can be observed while they feed.”

19. © Kolisch Hartwell 2010 All Rights Reserved, Page 19 TRADEMARKS

20. © Kolisch Hartwell 2010 All Rights Reserved, Page 20 What is a Trademark? Protects an exclusive “sign” or “mark” that is used to distinguish products or services. Right to exclude others from using a confusingly similar mark for similar products or services For famous marks, right to exclude others from using a confusingly similar mark for any products or services

21. © Kolisch Hartwell 2010 All Rights Reserved, Page 21 Examples of Trademarks

22. © Kolisch Hartwell 2010 All Rights Reserved, Page 22 Other Trademark Examples

23. © Kolisch Hartwell 2010 All Rights Reserved, Page 23 Trademark Types Common law  Automatic  Rights exist where mark used plus zone of expansion  Burden on owner to prove rights State registered  Rights exist within state Federally registered  Nationwide rights, regardless of where mark used  May be obtained before use begins  Prevents later user from affecting use of your mark

24. © Kolisch Hartwell 2010 All Rights Reserved, Page 24 How to Select a Mark Two main considerations: A distinctive element Cannot cause confusion with existing marks

25. © Kolisch Hartwell 2010 All Rights Reserved, Page 25 Can “Apple” be a trademark? No Common commercial name for the goods Does not distinguish goods from others in marketplace Yes Identifies goods Distinguishes goods from others in marketplace

26. © Kolisch Hartwell 2010 All Rights Reserved, Page 26 Trademark Considerations Conduct trademark searches  Violate a third party’s mark?  Can register mark? File trademark applications early Present the mark as a mark  Set marks apart from regular text  Follow marks with a trademark symbol (TM, SM, ®)  Marks always are adjectives, never nouns

27. © Kolisch Hartwell 2010 All Rights Reserved, Page 27 U.S. Trademark Statistics Fuel Cells > 900 Solar Panels > 1300 Wind Turbines > 700

28. © Kolisch Hartwell 2010 All Rights Reserved, Page 28 The Banana Bike (continued) Registered “Shrek Bicycles” with the Secretary of State Obtained the following internet domain names: shrek.com shrekbicycle.com shrekbicycles.com shrekbike.com shrekbikes.com Enough to avoid problems based on use of “Shrek Bicycles” as brand name?

29. © Kolisch Hartwell 2010 All Rights Reserved, Page 29 The Banana Bike Answer: NO Trademark rights obtained by first to use a particular mark for goods/services in a particular geographic region Others could have trademark rights in “Shrek Bicycles” because another company may  use the exact same name in another part of the country for bicycles  have a federal trademark registration on the exact same name for bicycles

30. © Kolisch Hartwell 2010 All Rights Reserved, Page 30 US Patent No: 5,509,859 Leash With Sound "A novelty item for creating the illusion of an imaginary pet including a hollow, elongated leash with a handle at one end and a collar and harness adjacent the other end. Housed within the handle, which is hollow, is a battery power source and an integrated circuit for producing a plurality of animal sounds.”

31. © Kolisch Hartwell 2010 All Rights Reserved, Page 31 COPYRIGHTS

32. © Kolisch Hartwell 2010 All Rights Reserved, Page 32 What is a Copyright? Grants the right for a fixed period of time to exclude others from: copying, distributing, and performing or displaying publicly an original work of authorship, and preparing derivative works based on the original work of authorship

33. © Kolisch Hartwell 2010 All Rights Reserved, Page 33 Original Works of Authorship Literary works Pictorial, graphic, and sculptural works Audiovisual works Musical works Dramatic works Sound recordings Architectural works Choreographic works

34. © Kolisch Hartwell 2010 All Rights Reserved, Page 34 Original Works of Authorship Business-related examples: Software Product manuals and brochures Website design and content Training videos Presentations

35. © Kolisch Hartwell 2010 All Rights Reserved, Page 35 Not “Original Works of Authorship” Ideas Procedures Processes Systems Titles Short Phrases Methods of Operations Concepts Principles Discoveries Useful Articles

36. © Kolisch Hartwell 2010 All Rights Reserved, Page 36 Types of Copyrights Automatic Rights  Original work of authorship  Fixed on a tangible medium Registered Rights  Registered with a government entity - U.S. Copyright Office  Life of author plus 70 years  Statutory damages

37. © Kolisch Hartwell 2010 All Rights Reserved, Page 37 Copyright Considerations File copyright applications early Use copyright notice Have employees and contractors sign agreements that cover IP  Independent contractors own copyrights in their work unless have agreement to the contrary

38. © Kolisch Hartwell 2010 All Rights Reserved, Page 38 The Banana Bike User’s Manual written by a Shrek Bicycles employee company’s usual humorous style includes a brief history of bananas Any copyright considerations?

39. © Kolisch Hartwell 2010 All Rights Reserved, Page 39 US Patent No: 7,062,320 Device for the Treatment of Hiccups "A device for curing hiccups, comprising: a metallic cup-like vessel being a first electrode for producing electricity adapted to be applied to the lip of the user; and a second electrode electrically insulated from said first electrode being affixed to said vessel and extending from a point substantially within said vessel to a point substantially above a rim of the vessel.”

40. © Kolisch Hartwell 2010 All Rights Reserved, Page 40 TRADE SECRETS

41. © Kolisch Hartwell 2010 All Rights Reserved, Page 41 What is a Trade Secret? Protects against acquisition or disclosure by “improper means” Theft Bribery Misrepresentation Breach of a duty to maintain secrecy Espionage

42. © Kolisch Hartwell 2010 All Rights Reserved, Page 42 Examples of Trade Secrets Drawings Cost Data Customer Lists Compositions Patterns Compilations Programs Devices Techniques Processes Methods of Assembly Other Methods

43. © Kolisch Hartwell 2010 All Rights Reserved, Page 43 Trade Secrets – Specific Examples KFC’s 11 Secret Herbs and Spices Coca-Cola’s Secret Soft Drink Formula

44. © Kolisch Hartwell 2010 All Rights Reserved, Page 44 Requirements for Trade Secrets Independent economic value from being not generally known Reasonable efforts to maintain its secrecy

45. © Kolisch Hartwell 2010 All Rights Reserved, Page 45 Trade Secrets Considerations May last forever but all value may be lost at any time  Reverse engineering  Accidental disclosure  Independent development Consider patent protection  Otherwise, a third party may obtain a patent on your “secret”

46. © Kolisch Hartwell 2010 All Rights Reserved, Page 46 The Banana Bike (continued) Certain metal alloy The two banana shapes must be connected a certain way to avoid defects in the bike frames Protectible under trade secret law?

47. © Kolisch Hartwell 2010 All Rights Reserved, Page 47 Peter D. Sabido Intellectual Property Attorney Kolisch Hartwell, P.C. 520 SW Yamhill Street, Suite 200 Portland, Oregon 97204 (503) 224–6655 www.khpatent.com sabido@khpatent.com