2. Intellectual Property By Wilmer Arellano Fall 2013

3. Home Previous Next Help Overview Intellectual Property Patents –What Can Be Patented? –Utility Patents Copyright –What works are protected? –Duration Copyright Trademarks and Service marks Wilmer Arellano

4. Home Previous Next Help References http://www.uspto.gov/ http://www.copyright.gov/ http://web.mit.edu/afs/athena.mit.edu/org/i/invent /h-chapters/h-one.htmlhttp://web.mit.edu/afs/athena.mit.edu/org/i/invent /h-chapters/h-one.html http://www.law.cornell.edu/wex/index.php/Patent http://www.wfva.net/pdf/Basic%20US%20patent %20law--4%20Feb%202005%20presentation-- slides.pdfhttp://www.wfva.net/pdf/Basic%20US%20patent %20law--4%20Feb%202005%20presentation-- slides.pdf Patent Basics, Presented by: Michael Dever,September 15, 2006 Wilmer Arellano

5. Home Previous Next Help Intellectual Property n : intangible property that is the result of creativity (such as patents or trademarks or copyrights) Source: WordNet ® 2.0, © 2003 Princeton University Source Wilmer Arellano

6. Home Previous Next Help Intellectual Property There are four well recognized types of intellectual property rights: Copyrights, Trademarks, Patents, and trade secrets. –These forms of intellectual property differ significantly in the rights they confer, how they are obtained, and how they are maintained. –http://www.yale.edu/ocr/pfg/guidelines/patent/t ypes_of_ip.htmlhttp://www.yale.edu/ocr/pfg/guidelines/patent/t ypes_of_ip.html Wilmer Arellano

7. Home Previous Next Help Patents Federal regulation of Copyrights and Patents: –U. S. Constitution, Article 1, Sec. 8, Clause 8. –“The Congress shall have Power... to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Wilmer Arellano

8. Home Previous Next Help Abraham Lincoln's Patent: Improvement for Buoying Vessels Over Shoals Wilmer Arellano

9. Home Previous Next Help Patents A patent is a property right granted by the Government of the United States of America to an inventor “to exclude others from: –making, –using, –offering for sale, –or selling the invention throughout the United States –or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted. Not a grant to make http://www.uspto.gov/patents/ Wilmer Arellano

10. Home Previous Next Help What Can Be Patented? Utility Patent-Issued for the invention of a –new and useful process, –machine, –manufacture, –or composition of matter, –or a new and useful improvement thereof for a period of up to twenty years from the date of patent application filing ++, subject to the payment of maintenance fees. Approximately 90% of the patent documents issued by the Wilmer Arellano

11. Home Previous Next Help Design Patents & Plant Patents 1502 Definition of a Design [R-2] In a design patent application, the subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself. –http://www.uspto.gov/web/offices/pac/mpep/s1502.htmlhttp://www.uspto.gov/web/offices/pac/mpep/s1502.html A plant patent is granted by the Government to an inventor (or the inventor's heirs or assigns) who has invented or discovered and asexually reproduced a distinct and new variety of plant. –http://www.uspto.gov/web/offices/pac/plant/#1http://www.uspto.gov/web/offices/pac/plant/#1 Wilmer Arellano

12. Home Previous Next Help Patent Rights Patent rights are based on claims of the patent. –What is protected is the invention as claimed. Infringer is accused of infringing the claims of a patent. Wilmer Arellano

13. Home Previous Next Help Claims Example Edison received a patent (U. S. Pat. No. 223, 898) for a light bulb with a carbon filament. –Claim 1: An electric lamp for giving light by incandescence, consisting of a filament of carbon of high resistance, made as described, and secured to metallic wires, as set forth. Wilmer Arellano

14. Home Previous Next Help THE PAST Wilmer Arellano

15. Home Previous Next Help Utility Patents 35 USC §102-- What is claimed must be new. 35 USC §103-- What is claimed must be nonobvious. –Non obvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable. Wilmer Arellano

16. Home Previous Next Help First to Invent The U.S. has a “first to invent” policy regarding invention, meaning that the first originator of an invention receives credit for it. The first person to patent an invention will not receive credit unless they were also the first to invent it. The presumption is that the first to reduce to practice is the first to invent Since June 8, 1995, the USPTO has offered inventors the option of filing a provisional application for patent which was designed to provide a lower cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants. Provisional applications may not be filed for design inventions (ornamental). –To be complete, a provisional application must also include the filing fee, and a cover sheet specifying that the application is a provisional application for patent. The applicant would then have up to 12 months to file a non-provisional application for patent Wilmer Arellano

17. Home Previous Next Help First to Invent In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if: – “(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,” or –“(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States...” Wilmer Arellano

18. Home Previous Next Help How to Prove the Idea Is Yours Use a Notebook with consecutively numbered and permanently bound pages Put your ideas in writing completely and accurately. Fully describe the invention in words and pictures. Date all your Entries and write with pen. Do not remove or skip pages The notebooks should be witnessed weekly by two knowledgeable people you trust which are not relatives of you Wilmer Arellano

19. Home Previous Next Help LEAHY-SMITH AMERICA INVENTS ACT (AIA) Patent Reform Wilmer Arellano

20. Home Previous Next Help Novelty; Prior Art.— A person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Wilmer Arellano

21. Home Previous Next Help Three Exceptions to 35 U.S.C. 102(a)(2)Prior Art In brief– 102(b)(2)(A): A disclosure of the inventor’s work in a U.S. patent document or PCT publication by another is not prior art to the inventor 102(b)(2)(B): A disclosure of the inventor’s work shields the inventor from the prior art effect of a subsequent disclosure in a U.S. patent document or PCT publication 102(b)(2)(C): A disclosure is not prior art to the inventor if it was commonly owned with the claimed invention not later than the inventor’s effective filing date Note that the 102(b)(2) exceptions pertain to the 102(a)(2) patent documents, which may be prior art as of the date that they are effectively filed. Grace period is not relevant. 20 Patent Cooperation Treaty (PCT)

22. Home Previous Next Help Novelty; Prior Art.— A person shall be entitled to a patent unless— Exceptions.— (1) Disclosures made 1 year or less before the effective filing date of the claimed invention.— A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if— (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Wilmer Arellano

23. Home Previous Next Help Novelty; Prior Art.— A person shall be entitled to a patent unless— Exceptions.— (2) Disclosures appearing in applications and patents.— A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if— (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Wilmer Arellano

24. Home Previous Next Help Common Ownership Under Joint Research Agreements.— Exceptions.— (c) Common Ownership Under Joint Research Agreements.— Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if— (1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention; (2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and (3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement. Wilmer Arellano

25. Home Previous Next Help Patents and Published Applications Effective as Prior Art.— (d) Patents and Published Applications Effective as Prior Art.— For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application— (1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or (2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365 (a), or 365 (b), or to claim the benefit of an earlier filing date under section 120, 121, or 365 (c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter. Wilmer Arellano

26. Home Previous Next Help 35 U.S.C. §103 A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. Wilmer Arellano

27. Home Previous Next Help END LEAHY-SMITH AMERICA INVENTS ACT (AIA) Patent Reform Wilmer Arellano

28. Home Previous Next Help Inventors A patent cannot be given to non-inventors An inventor can never relinquish his/her inventorship rights. However, an inventor(s) may assign their ownership rights over to another party Wilmer Arellano

29. Home Previous Next Help Co-Inventors If each had a share in the ideas forming the invention as defined in the claims – even if only as to one claim, they are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application. If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent application and patent shall be in his/her name alone. Wilmer Arellano

30. Home Previous Next Help Current Fee Schedule Typical filing fees for an Inventor when application filed with a written assertion of small entity status (See Simplified Small Entity Status Practice): Filing a provisional application. $100 Filing a non-provisional application. Approximately $150* Issue fee Approximately $650 Maintenance fees: –Due at 3 1/2 years,Approximately $450 –Due at 7 1/2 years,Approximately $1150 –Due at 11 1/2 years,Approximately $1900 *Does not include the search fee or examination fee. Utility Examination Fee $100 Utility Search Fee $250.00 Wilmer Arellano

31. Home Previous Next Help Statistics Currently, the average patent application pendency is 24.6 months. Applications received in the U.S. Patent and Trademark Office are numbered in sequential order and the applicant will be informed within eight weeks of the application number and official filing date if filed in paper. If filed electronically, the application number is available within minutes. Wilmer Arellano

32. Home Previous Next Help Statistics Wilmer Arellano

33. Home Previous Next Help Wilmer Arellano

34. Home Previous Next Help Statistics Wilmer Arellano

35. Home Previous Next Help What works are protected? Copyright protects "original works of authorship" that are fixed in a tangible form of expression. The fixation need not be directly perceptible so long as it may be communicated with the aid of a machine or device. Copyrightable works include the following categories: –literary works (Computer Programs); –musical works, including any accompanying words –dramatic works, including any accompanying music –pantomimes and choreographic works –pictorial, graphic, and sculptural works –motion pictures and other audiovisual works –sound recordings –architectural works Wilmer Arellano

36. Home Previous Next Help How to Secure a Copyright Copyright is secured automatically when the work is created, and a work is "created" when it is fixed in a copy or phonorecord for the first time. –"Copies" are material objects from which a work can be read or visually perceived either directly or with the aid of a machine or device, such as books, manuscripts, sheet music, film, videotape, or microfilm. In general, copyright registration is a legal formality intended to make a public record of the basic facts of a particular copyright. However, registration is not a condition of copyright protection. Wilmer Arellano

37. Home Previous Next Help Fair Use “Fair Use” is not an infringement of copyright. Use for purposes such as: –Criticism, –Comment, –News reporting, –Teaching, –Scholarship, or –Research. Sections 107 through 118 of the Copyright Act (title 17, U. S. Code)title 17, U. S. Code Wilmer Arellano

38. Home Previous Next Help Duration Copyright For works created on or after January 1, 1978, copyright begins with creation and lasts for the life of the author plus 70 years Wilmer Arellano

39. Home Previous Next Help Trademarks and Service marks A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Wilmer Arellano

40. Home Previous Next Help Trademarks and Service marks Wilmer Arellano

41. Home Previous Next Help Letters and words: A word or other groupings of letters is the most common type of mark. Examples include: APPLE SILICON GRAPHICS NETSCAPE IBM NBC –http://www.bitlaw.com/trademark/devices.html Wilmer Arellano

42. Home Previous Next Help Logos: Logos are probably the next most common form of mark. A logo can be described as a design which becomes a mark when used in close association with the goods or services being marketed. The logo mark does not need to be elaborate; it need only distinguish goods and services sold under the mark from other goods and services. Examples of logo marks are –http://www.bitlaw.com/trade mark/devices.html Wilmer Arellano

43. Home Previous Next Help Pictures or drawings Pictures or drawings of a character or scene are often used as trademarks or service marks. –http://www.bitlaw.com/ trademark/devices.html Wilmer Arellano

44. Home Previous Next Help Combination: Or a trademark might be a combination of letters and a design, such as: –http://www.bitlaw.com/ trademark/devices.html Wilmer Arellano

45. Home Previous Next Help Slogans: Slogans from advertising campaigns are also used as trademarks. Example slogans which have strong trademark rights attached to them are: –http://www.bitlaw.com/ trademark/devices.html Wilmer Arellano

46. Home Previous Next Help Is registration of my mark required? No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, e.g., –constructive notice to the public of the registrant's claim of ownership of the mark; –a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration; –the use of the U.S registration as a basis to obtain registration in foreign countries; and –the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods Wilmer Arellano

47. Home Previous Next Help Maintaining a federal trademark registration Rights in a federally-registered trademark can last indefinitely if the owner continues to use the mark on or in connection with the goods and/or services in the registration and files all necessary documentation in the USPTO at the appropriate times. In general, the owner of a registration must periodically file: –Affidavits of Continued Use or Excusable Nonuse under 15 U.S.C. §1058; and –Applications for Renewal under 15 U.S.C. §1059 Wilmer Arellano

49. Home Previous Next Help Overview Intellectual Property Patents –What Can Be Patented? –Utility Patents Copyright –What works are protected? –Duration Copyright Trademarks and Service marks Wilmer Arellano

50. Home Previous Next Help & & Q uestions A nswers Wilmer Arellano