By Divya Khullar

USAPatents.com

What is intellectual property? Intangible Asset of a business

What constitutes intellectual property?

Patent, Trademark (Internet Domains), Trade Secret,

Copyright.

Can I file my own IP or DO I have to hire an ATTORNEY YOU HAVE TO HIRE ME

NO – There is no such requirement that you hire an

attorney?

What is a Copyright? Property rights to the Authors of “original works of

authorship”

Literary, Dramatic, Musical, Artistic and certain other kind of works.

Copyright owner has exclusive right to: Make copies; Derivative works of original; Distribute copies to the public

Sale, Rent, Lease, or Lend; Perform the work publicly

Literary, musical, dramatic, audiovisual works; Display the work publicly; and Perform the work publicly by means of digital audio

transmission (sound recordings). Integrity

Who Can Claim Copyright?

Authors

Work made for hire

Authors of a joint work are co-owners

If I sell my a book, manuscript, painting, CD, DVD do I loose my copyright?

Mere transfer of ownership of any material object that

embodies a protected work does not of itself convey any rights in the copyright.

What cannot be Copyrighted?

Work that cannot or have not be fixed in a tangible form. Titles, names, short phrases, and slogans; familiar symbols or

designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents

Ideas, procedures, methods, systems, processes, concepts,

principles, discoveries, or devices, as distinguished from a description, explanation, or illustration.

Do I have to register my copyright? NO

Copyright is created as soon as you manifest the work.

Advantages Legal

Cannot file a law suite if registration/pre-registration not done. Constructive notice to the entire world. Treaty: Protection in other countries

Digital Millennium Copyright Act (DMCA) Berne Convention

Practical Peace Of Mind

How long does a copyright lasts Before January 1, 1978

95 years from their publication date. After January 1, 1978

Individual: Life of the author + 70 years

Joint Work: Life of the last surviving author + 70 years.

Corporate work/work for hire: 95 years from publication or 120 years from creation which ever occurs earlier

Resource

www.copyright.gov/

What is a trademark?

Anything used by owners to identify goods/Services.

Trade + Mark

Goodwill of your Business

Kinds of trademarks?

Trademarks;

Service marks;

Certification marks;

Collective marks;

Trade Dress

Do I have to file for a trademark?

NO

Your trademark is in effect as soon as you start using it in trade.

Why should I obtain a trademark?

Constructive notice nationwide; Geographic limitation with non-registered trademarks.

Evidence of ownership of the trademark;

Jurisdiction of federal courts may be invoked;

As a basis for obtaining registration in foreign countries; and

U.S. Customs Service to prevent importation of infringing

foreign goods.

Other practical advantage

Attorney will conduct trademark search prior to filing for a trademark.

Know if your mark is already registered or is in use in the

trade.

Investment of time and money in branding and promoting your mark

Describe your product ("goods and services")

What is trademark infringement?

Similarity in the overall impression created by the two marks;

Similarities of the goods and services involved;

Strength of the plaintiff's mark;

Evidence of actual confusion by consumers;

Intent of the defendant in adopting its mark;

Physical proximity of the goods in the retail marketplace; and

Degree of care likely to be exercised by the consumer.

Resource

http://www.uspto.gov/

What is a Patent? 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”

Limited time

In exchange for public disclosure of the invention

Who can apply for a patent?

Actual inventor(s). Inventor(s) can SELL or ASSIGN

Employee/Contractor agreement

What can be patented? A. Utility patents

B. Design patents

C. Plant patents

What can be patented? A. Utility patents

1. A new, nonobvious and useful:

Process; Machine; Article of manufacture; or Composition of matter.

2. Improvements of any of the above.

What can be patented? B. Design patents

new and non-obvious

ornamental designs

for articles of manufacture.

What can be patented? C. Plant patents

Invented or discovered asexually reproduced, distinct and new varieties of plants, including cultivated sports, mutants, hybrids, and newly found

seedlings,

other than a tuber propagated plant or

a plant found in an uncultivated state.

What cannot be patented?

Laws of nature;

Physical phenomena; and

Abstract ideas which are not useful (such as perpetual motion machines)

Offensive to public morality. Medical Procedures (35 U.S.C. § 287(c)): when a medical procedure

is found to be a “MEDICAL ACTIVITY,” that procedure, although patentable, is not enforceable.

How long does patent protection last?

A. Utility & C. Plant Patents 20 years from the date the inventor first applies for the patent, Subject to the payment of appropriate maintenance fees.

B. Design patents 14 years from the date the patent is issued. No maintenance fees are required for design patents.

How long does it take to get a patent? Timeline

Filing date

18th month publication deadline & Examiner assigned

Office actions and response

RESOURCE

USPTO (United States Patent and Trademark Office)

http://www.uspto.gov

What is a trade secrets?

Common sense definition

Trade + Secret

Confidential Information

Classified Information

Legal definition

(1) information;

(2) reasonable measures taken to protect the information; and

(3) which derives independent economic value from not being publicly known.

Example?

Coca-Cola

How do I get trade secret

Non-compete and Non-disclosure contracts

Employees/Contractors/Collaborators

Vendors or / Licensees

Laws State Laws: Uniform Trade Secrets Act (46 States)

Federal Laws: Theft/Misappropriation of a trade secret is a federal crime.

Why get a patent? Can I keep my idea/invention a secret?

YES you can keep the idea a secret

Practical Consideration

3rd party

Independently duplicating the secret information Reverse Engineering

Independently develop

What is a patent?

Idea/Invention, new & useful

What is a Trademark? Goodwill of your business

What is a Copyright? Authors original work

Divya Khullar

E-mail: Dkhullar@USAPatents.com

USAPatents.com