Intellectual Property By Wilmer Arellano Fall 2013 Overview

Intellectual Property By Wilmer Arellano Fall 2013

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

References Home Previous Next Help • http: //www. uspto. gov/ • http: //www. copyright. gov/ • http: //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%20 US%20 patent %20 law--4%20 Feb%202005%20 presentation-slides. pdf • Patent Basics, Presented by: Michael Dever, September 15, 2006 Wilmer Arellano

Intellectual Property Home Previous Next Help • n : intangible property that is the result of creativity (such as patents or trademarks or copyrights) • Source: Word. Net ® 2. 0, © 2003 Princeton University Wilmer Arellano

Intellectual Property Home Previous Next • There are four well recognized types of intellectual property rights: – Copyrights, – Trademarks, Help – 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 Wilmer Arellano ypes_of_ip. html

Patents are Protected by Federal Laws Home Previous Next Help • 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

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

Patents: Home Previous The Right to Exclude Others. • A patent is a property right granted by the Government of the United States of America to an inventor “to exclude others from: – making, Next Help – 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. • A patentee, merely because he/she has received a patent for an invention, is not thereby authorized to make, use, offer for sale, or sell, or import the invention if doing so would violate any law. • http: //www. uspto. gov/patents/ Wilmer Arellano

What Can Be Patented? Home Previous • Utility Patent-Issued for the invention of a – new and useful process, – machine, Next Help – 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 USPTO in recent years have been utility patents, also referred to as "patents for invention" Wilmer Arellano

Design Patents & Plant Patents Home Previous Next Help • 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. • The design for an article consists of the visual characteristics embodied in or applied to an article. – http: //www. uspto. gov/web/offices/pac/mpep/s 1502. 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/#1 Wilmer Arellano

Patent Rights Home Previous Next • 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. Help Wilmer Arellano

Claims Example Home Previous Next Help • 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

Basic Patent Cooperation Treaty (PCT) Home Previous Next Help • The Patent Cooperation Treaty (PCT) enables the U. S. applicant to file one application, “an international application, ” in a standardized format in English in the U. S. Receiving Office (the U. S. Patent and Trademark Office), and have that application acknowledged as a regular national or regional filing in as many Contracting States to the PCT as the applicant “designates” or “elects, ” that is, names, as countries or regions in which patent protection is desired. (For international applications filed on or after January 1, 2004, the filing of an international application will automatically constitute the designation of all contracting countries to the PCT on that filing date. ) Wilmer Arellano

Home Previous Next Help Patent Reform LEAHY-SMITH AMERICA INVENTS ACT (AIA) WILMER ARELLANO

Novelty; Prior Art. — A person shall be entitled to a patent unless— Home Previous Next Help (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 (notification, payment Process), 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

Three Exceptions to Prior Art Home Previous Next Help 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): 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 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 is not Treaty relevant. Patentperiod Cooperation (PCT) 16

Novelty; Prior Art. — A person shall be entitled to a patent unless— Exceptions. — Home Previous Next Help (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

35 U. S. C. § 103: What is claimed must be nonobvious. Home Previous Next Help 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

Home Previous Next Help Patent Reform END LEAHY-SMITH AMERICA INVENTS ACT (AIA) WILMER ARELLANO

Provisional Application Home Previous Next Help • 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

Inventors Home Previous Next Help • 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

Co-Inventors Home Previous Next Help • 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

Current Fee Schedule Home Previous Next • Typical filing fees for an Inventor when application filed with a written assertion of small entity status: • • Filing a provisional application. $130 Filing a non-provisional application. Approximately $140* Issue fee Approximately $480 Maintenance fees: – – – Help • • Due at 3 1/2 years, Due at 7 1/2 years, Due at 11 1/2 years, Approximately $800 Approximately $1800 Approximately $3700 *Does not include the search fee or examination fee. Utility Examination Fee $360 Utility Search Fee $300. 00 Micro Entities get better prices Wilmer Arellano

Statistics Home Previous Next Help • 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

Statistics Home Previous Next Help Wilmer Arellano

Statistics Home Previous Next Help Wilmer Arellano

Statistics Home Previous Next Help Wilmer Arellano

Copyright Home Previous Next Help • 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

How to Secure a Copyright Home Previous Next Help • 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

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

Duration Copyright Home Previous Next Help • For works created on or after January 1, 1978, copyright begins with creation and lasts for the life of the author plus 70 years • For an anonymous work, a pseudonymous work, or a work made for hire, the copyright endures for a term of 95 years from the year of its first publication or a term of 120 years from the year of its creation, whichever expires first. Wilmer Arellano

Trademarks and Service marks Home Previous Next Help • 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

Trademarks and Service marks Home Previous Next Help Wilmer Arellano

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

Logos: Home Previous Next Help • 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

Pictures or drawings Home Previous Next Help • 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

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

Slogans: Home Previous Next Help • 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

Is registration of my mark required? Home Previous Next Help • 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

Maintaining a federal trademark registration Home Previous Next Help • 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

Wilmer Arellano

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

Home Previous Next Help & Questions Answer s Wilmer Arellano