intellectual property patents, copyrights,trademarks and trade secrets

Intellectual Property

Patents, Copyrights,Trademarks and Trade Secrets

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Four Forms of Intellectual Property

• Copyrights © - creative works of art Writings, lyrics, poems, music

• Trademarks ™ ® Logos like IBM’s

• Trade Secrets Knowledge that is kept secret by a company

– Formula for Coca Cola

• Patents Inventions or things and processes

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Copyrights and Patents

Congress shall have the power ... To promote the progress of science and

the useful arts, by securing for limited times to authors and inventors the exclusive rights to their respective writings and discoveries.

• Copyright applies to writings• Patent applies to inventions

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Copyright - AGOF Chapter 5

• Extensive discussion - also see AGOF lecture notes

• Originally for 14 years Renewable for 14 years if author living

• Copyright Act of 1976: Retroactively extended to up to 75 years

• Sony Bono Copyright Term Extension Act 1998 Extended yet another 20 years Currently author’s life + 70 years “Works for hire” - shorter of 95 years from publication

or 120 years from creation (MM)

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Patents - Topics

• What is a patent?• How to get a patent?• Why patent?

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What is a Patent?

• A description of a new idea that would not be obvious to a person of “ordinary skill in the art” Must pass an originality test with the US Patent and

Trademark Office (USPTO)

• A piece of property, granted for a finite number of years as a monopoly to the patent holder Can be licensed to others (usually for a fee, but not

always) Can be inherited

• Acquired when a company is bought by another

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Patent Ownership

• Inventor• Most employment agreements

assign patent to the employer• Sometimes the employer assigns the

patent to company paying for development

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Design Patent

• Last for 14 years• Protects the look/shape of an object

The shape of a car

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Utility Patent

• Machine• Manufactured item• Process (computer algorithm, chemical

process, way to make a drug)• Business method

Amazon vs Barnes & Noble on one-click shopping

• Composition of matter (a drug)• Any new and useful improvement of any of

the above• 20 years from date of application

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Plant Patent

• Distinct and new varieties of plants that have been invented or discovered and asexually reproduced

• 20 years from date of application

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Can Not Patent if

• Is not new, ie, is not an invention• Fails the utility test - is it good for

something• Was known to the public more than a

year prior to filing date• Obvious variation on a known

technology Obvious to “one skilled in the arts”

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www.uspto.gov

QuickTime™ and a TIFF (LZW) decompressor are needed to see this picture.

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Obligations of the Inventor

• Disclose everything about the invention in the patent application to the USPTO

• If patent is granted, it is published by USPTO Two years after filing if not yet granted

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Patent has four parts

• Front Page• Drawings• Specification aka Description• Claims

FrontPage


DateFiled

DateGranted

Inventor(s)

Owner(s)

Patent Examinerhas looked atthese patents

Illustrativefigure

Drawing


Number with eachportion of the

figure called outin text. All numbers

for Fig 7 begin with 7.


Specification


Columnnumber

Linenumber

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Specification

• Is of the preferred embodiment• There must be an instantiation of the

patent Used to be submitted to USPTO as a

working model

Claims


Anotherclaim

element

A claimelement

Anindependent

claim

A dependentclaim

• Claims are not limited to the preferred embodiment

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Legal Issues about Patents

• Validity of a Patent - Did USPTO make a bad decision? Is it really an invention? Was there prior art? Would it have been obvious to someone

skilled in the art at the time?

• Infringement - is someone’s product practicing the invention?

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Patent Validity

• Issued patent is presumed valid• Burden of proof is on party alleging

invalidity Typically happens when someone sued for

infringement

• Each claim stands alone A claim being invalid does not affect other

claims Dependent claim can be valid even if claim on

which it depends is invalid

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Patent Invalidity -Anticipation

• A claim is anticipated iff Each element of the claim

– exists in a single– publicly available publication– or product – at least one year prior to publication of the

document or sale of the product

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Patent Invalidity - Obviousness

• Each element exists in some publicly available document or product at least one year….

• AND the invention would have been obvious to one of ordinary skill in the art

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Patent Infringement

• At least one claim must be infringed• Literal Infringement

Compare claim with the accused product Determine whether each element of claim is

present If so, then accused product infringes that claim

• Infringement Under Doctrine Of Equivalents If the differences between the product and the

claim element would be considered insubstantial by a person of ordinary skill in the field at the time of the alleged infringement, then…

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First to Invent, First to File

• First to Invent - US• First to file - most other countries

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Provisional Patent

• A short-term and inexpensive place-holder

• Good for a year• Then must file real patent

application

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How to Get a Patent

• Do it yourself :-(• Pay a lawyer

~$10,000 plus maintenance fees after 3, 7 , and 11 years on utility patents

• Takes typically two years• Often have several iterations with

patent examiner (read $$)• Success rate about 2 out of 3

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Why Patent

• To protect an idea• To build a wall around your product• To limit a competitor’s options• For cross-licensing

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Avoiding Infringement

• Really hard to do• If are patenting the new idea, then

patent search and application will come close

• But if not doing a patent, then may not know

• Willful infringement vs Non-willful infringement

intellectual property patents, copyrights,trademarks and trade secrets

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