OBTAINING INTELLECTUAL OBTAINING INTELLECTUAL PROPERTY PROTECTION PROPERTY PROTECTION

FOR YOUR NEW INVENTIONFOR YOUR NEW INVENTION

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By: Pasco GasbarroBy: Pasco Gasbarro William LoginovWilliam Loginov Amy B. SpagnoleAmy B. Spagnole October 20, 2006October 20, 2006

Trademarks, Copyrights and Patents Are Not The Same

– TrademarkTrademark: Trademark law protects product : Trademark law protects product

identifying symbols.identifying symbols.

– CopyrightsCopyrights: Copyright law deals with the tangible, : Copyright law deals with the tangible, original expression of ideas in the form of writing, original expression of ideas in the form of writing, drawing, sculpture, photos, film and music. drawing, sculpture, photos, film and music.

– PatentsPatents: Patent law protects new and useful : Patent law protects new and useful

inventions.inventions.

Some Differences (U.S. Law)Some Differences (U.S. Law)

TrademarkTrademark CopyrightCopyright PatentPatent

NATURENATURE Words, names, designs, slogans, symbols, Words, names, designs, slogans, symbols, sounds, product shape, product packaging.sounds, product shape, product packaging.

Works fixed in a tangible medium of Works fixed in a tangible medium of expression, literary and artistic expression, literary and artistic expression such as books, paintings, expression such as books, paintings, sculptures, computer software, plays, sculptures, computer software, plays, movies.movies.

New and useful inventions, New and useful inventions, such as manufacturing such as manufacturing process, mechanical process, mechanical aspects of product, design aspects of product, design of useful articles.of useful articles.

PURPOSEPURPOSE Protects trademark owners from unfair Protects trademark owners from unfair competitioncompetition and the public from and the public from confusion.confusion.

Encourages and rewards creative Encourages and rewards creative expression.expression.

Encourages and rewards Encourages and rewards innovation.innovation.

ACQUIRING ACQUIRING PROTECTIONPROTECTION

Use of the mark in commerce in Use of the mark in commerce in connection with goods or services connection with goods or services oror apply apply for federal or state registrationfor federal or state registration..

Automatic upon fixation in a tangible Automatic upon fixation in a tangible medium.medium.

Only by grant from Federal Only by grant from Federal Government.Government.

NOTICE NOTICE OPTIONAL: TM or SM if unregistered; ® OPTIONAL: TM or SM if unregistered; ® or Reg. U.S. Pat. & Tm. Off.; if registered.or Reg. U.S. Pat. & Tm. Off.; if registered.

OPTIONAL after March 1, 1989: © OPTIONAL after March 1, 1989: © or “Copyright with year of first or “Copyright with year of first publication and name of owner.” publication and name of owner.”

OPTIONAL: “Patent OPTIONAL: “Patent applied for” or “Pat. applied for” or “Pat. Pending” after application Pending” after application filed, or Patent or Pat. Plus filed, or Patent or Pat. Plus registration number after registration number after grant. grant.

More Differences (U.S. Law)More Differences (U.S. Law)TrademarkTrademark CopyrightCopyright PatentPatent

TERMTERM Common LawCommon Law: As long : As long as used in connection as used in connection with goods or services.with goods or services.

  

Federal RegFederal Reg.: 10 years .: 10 years from registration if use from registration if use declaration is filed declaration is filed during 6during 6thth year of year of registration. Renewable registration. Renewable for unlimited 10-year for unlimited 10-year periods.periods.

Creations after January 1, Creations after January 1, 1978:1978:

  

Author’s lifetime plus 70 Author’s lifetime plus 70 years. years.

  

Work made for hire: the Work made for hire: the earlier of 95 years from earlier of 95 years from publication or 120 years publication or 120 years from creation.from creation.

Utility or Plant PatentUtility or Plant Patent: 20 years : 20 years from application filing date.from application filing date.

  

Design PatentDesign Patent: 14 years from : 14 years from grant.grant.

PREQUISITES TO PREQUISITES TO AN INFRINGEMENT AN INFRINGEMENT ACTIONACTION

No registration needed.No registration needed. Registration required for Registration required for U.S. nationals.U.S. nationals.

Issued patent required.Issued patent required.

INFRINGEMENT INFRINGEMENT TESTTEST

Likelihood of confusion, Likelihood of confusion, mistake, or deception as mistake, or deception as to source or sponsorship.to source or sponsorship.

Unauthorized use or Unauthorized use or copying (access to work copying (access to work andand substantial similarity substantial similarity between protected work between protected work and allegedly infringing and allegedly infringing work).work).

Unauthorized manufacturing, use, Unauthorized manufacturing, use, sale or offering for sale devices sale or offering for sale devices embodying the protected embodying the protected inventioninvention

What Is A Trademark?What Is A Trademark?

Any word, name, logo, symbol or device, Any word, name, logo, symbol or device, or any combination thereof, used by a or any combination thereof, used by a person to identify and distinguish his or person to identify and distinguish his or her goods from those manufactured or her goods from those manufactured or sold by others and to indicate the common sold by others and to indicate the common source of the goods. Section 45 of the source of the goods. Section 45 of the Trademark Act of 1946 (Lanham Act).Trademark Act of 1946 (Lanham Act).

Types of Trademarks

WORDS

SYMBOL

SLOGAN

Types of Trademarks

TRADE DRESS (PACKAGING)

TRADE DRESS (PRODUCT DESIGN)

Why Are Trademarks Important?Why Are Trademarks Important?

Identifies one seller’s products and distinguishes Identifies one seller’s products and distinguishes them from products of others;them from products of others;

Signifies that all goods bearing the trademark Signifies that all goods bearing the trademark come from or are controlled by a common source;come from or are controlled by a common source;

Signifies that all goods bearing the trademark are Signifies that all goods bearing the trademark are of an equal level of quality; andof an equal level of quality; and

Is a prime instrument in advertising and selling Is a prime instrument in advertising and selling the goods.the goods.

How do I protect my Trademark?How do I protect my Trademark?

Trademark Clearance and SearchingTrademark Clearance and Searching

Federal RegistrationFederal Registration– BOU BOU – ITUITU

State RegistrationState Registration

Common LawCommon Law

Foreign RegistrationForeign Registration

Do Not Use ® If Not RegisteredDo Not Use ® If Not Registered

Registered Mark Registered Mark –– ®®

Unregistered Trademark – ™Unregistered Trademark – ™

Unregistered Service Mark Unregistered Service Mark –– SMSM

COPYRIGHTSCOPYRIGHTS

What is a copyright?What is a copyright?

Copyright is a form of protection provided Copyright is a form of protection provided by the laws of the United States to the by the laws of the United States to the authors of “original works of authorship.” authors of “original works of authorship.”

A copyright protects original works of A copyright protects original works of authorship, including books, paintings, authorship, including books, paintings, sculptures, computer software, plays, and sculptures, computer software, plays, and movies.movies.

What is not protected by copyright?What is not protected by copyright? Works that have not been fixed in a tangible form of expression (for Works that have not been fixed in a tangible form of expression (for

example, choreographic works that have not been notated or example, choreographic works that have not been notated or recorded, or improvisational speeches or performances that have not recorded, or improvisational speeches or performances that have not been written or recorded);been written or recorded);

Titles, names, short phrases, and slogans; familiar symbols or Titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents;coloring; mere listings of ingredients or contents;

Ideas, procedures, methods, systems, processes, concepts, Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a principles, discoveries, or devices, as distinguished from a description, explanation, or illustration;description, explanation, or illustration;

Works consisting entirely of information that is common property Works consisting entirely of information that is common property and containing no original authorship (for example; standard and containing no original authorship (for example; standard calendars, height and weight charts, tape measures and rulers, and calendars, height and weight charts, tape measures and rulers, and lists or tables taken from public documents or other common lists or tables taken from public documents or other common sources).sources).

What rights does a copyright provide?What rights does a copyright provide?

The right to:The right to: Make copies;Make copies; Prepare derivative works;Prepare derivative works; Distribute copies of the work to the public;Distribute copies of the work to the public; Perform the work publicly;Perform the work publicly; Display the copyrighted work publicly; Display the copyrighted work publicly;

Who can claim copyright?Who can claim copyright?

The copyright in a work is the property of The copyright in a work is the property of the author who created the work. the author who created the work.

The author can be one or more individuals The author can be one or more individuals or a company, if the work is a work made or a company, if the work is a work made for hire.for hire.

What about the rights of companies?What about the rights of companies?

In the case of works made for hire, the employer and not In the case of works made for hire, the employer and not the employee is considered to be the author. the employee is considered to be the author.

Copyright law defines a "work made for hire" as:Copyright law defines a "work made for hire" as:(1) a work prepared by an employee within the (1) a work prepared by an employee within the

scope of his or her employment; or scope of his or her employment; or (2) a work specially ordered or commissioned for (2) a work specially ordered or commissioned for

use as a contribution to a collective work, a part of a use as a contribution to a collective work, a part of a motion picture or other audiovisual work, a translation, a motion picture or other audiovisual work, a translation, a supplementary work, a compilation, an instructional text, supplementary work, a compilation, an instructional text, a test, answer material for a test, or an atlas, if the parties a test, answer material for a test, or an atlas, if the parties have expressly agreed (in a written instrument signed by have expressly agreed (in a written instrument signed by them) that the work shall be considered a work made for them) that the work shall be considered a work made for hire.hire.

When does copyright arise?When does copyright arise?

Copyright is secured automatically when Copyright is secured automatically when the work is created. A work is "created" the work is created. A work is "created" when it is fixed in a tangible medium.when it is fixed in a tangible medium.

No publication, registration, or other No publication, registration, or other action in the Copyright Office is required action in the Copyright Office is required to secure copyright.to secure copyright.

Where does copyright Where does copyright protection extend?protection extend?

There is no such thing as an “international There is no such thing as an “international copyright” that will automatically protect an copyright” that will automatically protect an author’s writings throughout the entire world. author’s writings throughout the entire world.

Protection against unauthorized use in a Protection against unauthorized use in a

particular country depends on the national laws particular country depends on the national laws of that country. of that country.

Most countries offer protection to foreign works Most countries offer protection to foreign works under certain conditions.under certain conditions.

Why Register?Why Register?

Registration is not a condition of Registration is not a condition of copyright protection. copyright protection.

Copyright registration is a legal formality Copyright registration is a legal formality intended to make a public record of the intended to make a public record of the basic facts of a particular copyright. basic facts of a particular copyright.

Registration may be made at any time Registration may be made at any time within the life of the copyright.within the life of the copyright.

Benefits of Copyright registrationBenefits of Copyright registration Registration establishes a public record of the copyright claim.Registration establishes a public record of the copyright claim.

Before an infringement suit may be filed in court, registration is Before an infringement suit may be filed in court, registration is necessary.necessary.

If made before or within 5 years of publication, registration will If made before or within 5 years of publication, registration will establish prima facie evidence in court of the validity of the copyright establish prima facie evidence in court of the validity of the copyright and the facts stated in the certificate.and the facts stated in the certificate.

If registration is made within 3 months after publication of the work or If registration is made within 3 months after publication of the work or prior to an infringement of the work statutory damages and attorney’s prior to an infringement of the work statutory damages and attorney’s fees will be available to the copyright owner in court actions. fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to Otherwise, only an award of actual damages and profits is available to the copyright owner.the copyright owner.

Registration allows the owner of the copyright to record the Registration allows the owner of the copyright to record the registration with the U.S. Customs Service for protection against the registration with the U.S. Customs Service for protection against the importation of infringing copies. importation of infringing copies.

How do I let others know about How do I let others know about my copyright?my copyright?

The use of a copyright notice is no longer required under The use of a copyright notice is no longer required under U. S. law, although it is often beneficial. U. S. law, although it is often beneficial.

The notice for visually perceptible copies should contain The notice for visually perceptible copies should contain all the following three elements:all the following three elements:

– 1. The symbol © (the letter C in a circle), or the word 1. The symbol © (the letter C in a circle), or the word "Copyright," or the abbreviation "Copr."; and"Copyright," or the abbreviation "Copr."; and

– 2. The year of first publication of the work. 2. The year of first publication of the work. – 3. The name of the owner of copyright in the work, or 3. The name of the owner of copyright in the work, or

anan– abbreviation by which the name can be recognized.abbreviation by which the name can be recognized.

Example: © 2002 John Doe Example: © 2002 John Doe

How long does a copyright last?How long does a copyright last?

A work that is created on or after January 1, 1978, is A work that is created on or after January 1, 1978, is automatically protected from the moment of its creation automatically protected from the moment of its creation and is ordinarily given a term enduring for the author's and is ordinarily given a term enduring for the author's life plus an additional 70 years after the author's death. life plus an additional 70 years after the author's death.

In the case of "a joint work prepared by two or more In the case of "a joint work prepared by two or more authors who did not work for hire," the term lasts for 70 authors who did not work for hire," the term lasts for 70 years after the last surviving author's death. years after the last surviving author's death.

For works made for hire, the duration of copyright will For works made for hire, the duration of copyright will be 95 years from publication or 120 years from creation, be 95 years from publication or 120 years from creation, whichever is shorter.whichever is shorter.

PATENTSPATENTS

PATENTS ARE:PATENTS ARE:

A right to EXCLUDE OTHERS from making, using or selling A right to EXCLUDE OTHERS from making, using or selling a patented article -- not necessarily to make it yourselfa patented article -- not necessarily to make it yourself

Utility patents protect the FUNCTION of a machine, process, Utility patents protect the FUNCTION of a machine, process, computer program , composition of mattercomputer program , composition of matter

• Term: 20 from FILING – regardless of when granted Term: 20 from FILING – regardless of when granted

Design Patents protect the ORNAMENTAL DESIGN of an Design Patents protect the ORNAMENTAL DESIGN of an object – without regard to function object – without regard to function

• Term: 14 years from GRANTINGTerm: 14 years from GRANTING

PATENTSPATENTS Who is entitled to a patent?Who is entitled to a patent?

Our system protects the FIRST TO INVENTOur system protects the FIRST TO INVENT – So long as:So long as:

No public disclosure No public disclosure No offer for saleNo offer for sale No publicationNo publication No public useNo public use

If any of the above occur you have ONE YEAR to file or lose the If any of the above occur you have ONE YEAR to file or lose the right to patent on whatever was disclosed, offered, etc.right to patent on whatever was disclosed, offered, etc.

How to prove inventorship?How to prove inventorship?

Keep a bound notebook of ideas or other PROVABLE medium with Keep a bound notebook of ideas or other PROVABLE medium with dates and witnesses dates and witnesses – Mailing certified mail to yourself is unnecessaryMailing certified mail to yourself is unnecessary

PROVABLE mediumPROVABLE medium

What is the process for obtaining What is the process for obtaining a Utility Patent?a Utility Patent?

Determine whether the concept is ready for patentingDetermine whether the concept is ready for patenting

Consult a patent attorney and provide description of inventionConsult a patent attorney and provide description of invention

Consider whether a PATENTABILITY SEARCH is advisableConsider whether a PATENTABILITY SEARCH is advisable

Attorney prepares patent application and inventor reviews Attorney prepares patent application and inventor reviews

Application filed in US Patent and Trademark Office (USPTO)Application filed in US Patent and Trademark Office (USPTO)

What is the process for obtaining What is the process for obtaining a Utility Patent?a Utility Patent?

Now you have a PATENT PENDINGNow you have a PATENT PENDING

USPTO eventually examines application, searching for similar USPTO eventually examines application, searching for similar prior art prior art concepts and (often) rejecting the claims based upon concepts and (often) rejecting the claims based upon prior art as either NOT NEW or OBVIOUS prior art as either NOT NEW or OBVIOUS

Attorney (and inventor) reviews rejections and prepares Attorney (and inventor) reviews rejections and prepares response – possibly changing the claimsresponse – possibly changing the claims

If all goes well:If all goes well:

Allowance and Grant of PatentAllowance and Grant of Patent

PATENTPATENT Cost to obtain a US Patent?Cost to obtain a US Patent?

– Full cost is between about $7,500 - $17,500 in most Full cost is between about $7,500 - $17,500 in most technologies technologies

Foreign patents?Foreign patents?

– Every country/region has its own system Every country/region has its own system – By treaty file within ONE YEAR of US filingBy treaty file within ONE YEAR of US filing

– NO PRIOR PUBLIC DISCLOSURE before US filing NO PRIOR PUBLIC DISCLOSURE before US filing

Cost?Cost?

EXPENSIVE – use deferral tactics like PCT until product is EXPENSIVE – use deferral tactics like PCT until product is proven and investment capital is securedproven and investment capital is secured

What about PROVISIONAL What about PROVISIONAL APPLICATIONS?APPLICATIONS?

Filing fee only $100Filing fee only $100

No requirement of CLAIMSNo requirement of CLAIMS

Are a place holder - - CONFER NO RIGHTAre a place holder - - CONFER NO RIGHT– Must be followed by utility filing WITHIN ONE YEAR or benefit is lostMust be followed by utility filing WITHIN ONE YEAR or benefit is lost

BEWARE – except for claims a provisional application must BEWARE – except for claims a provisional application must meet ALL other standards for a full, enabled disclosure of the meet ALL other standards for a full, enabled disclosure of the invention!invention!

Foreign applications must be filed at the same time as the US Foreign applications must be filed at the same time as the US utility utility

Provisionals remain SECRET if not followed up with a utility Provisionals remain SECRET if not followed up with a utility filing filing