THE BASICS PATENTS TRADE SECRETS TRADEMARKS COPYRIGHTS OWNERSHIP

THE BASICS: PATENTS, TRADE SECRETS, TRADEMARKS, COPYRIGHTS OWNERSHIP & LICENSING adapted from Tara Nealey, Ph. D. ’s October 2015 presentation October 28, 2019 Mariquita L. Barbieri Carmody Mac. Donald P. C. 120 S. Central Ave. , Suite 1800 Clayton, Missouri 63105 314 -854 -8600 mlb@carmodymacdonald. com

Overview: Types of Intellectual Property (“IP”) • Patents • America Invents Act (AIA) • Trade Secrets • Trademarks • Copyrights

Portability Overview • Registered IP Protection • Patent, Trademarks, Copyright • Unregistered IP • Trade Names, Trade Dress, • Trade Secrets, know-how, show-how • Confidential Information

Portability Acquiring Registered IP • Patents • Application Exam Grant • Trademarks & Services Marks • Use in Interstate Commerce Application for • Federal registration Exam Grant • Copyright • Create “work of authorship” perfect by declaration & request for federal registration with Copyright Office

Portability Complementary IP Protections • Layered IP protection of one product Example: Computer software -- Patent can protect the way the software functions and/or systems incorporating the software -- Trademark can protect name of software -- Copyright can protect lines of code, screen graphics -- Trade secrets can protect confidential aspects

Portability U. S. Patents • Grant of rights from U. S. Government • Article 1, Section 8, U. S. Constitution -- 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. ” • Rights to exclude others from making, using, selling the claimed invention within, or importing into, the U. S.

Portability Three Types of U. S. Patents • Utility • 20 yrs from appl. filing date • (17 yrs from issue for apps. filed < June 1995) • Plant • 20 yrs from appl. filing date • Design • 14 yrs from grant date (apps filed < Dec. 18, 2013) • 15 yrs from grant date (apps filed > Dec. 18, 2013)

Portability Utility Patent • Issued for the invention of a new and useful process, machine, manufacture, or composition of matter • Or for a new and useful improvement • Approximately 90% of the patents are utility patents, also referred to as "patents for invention”

Portability Plant Patent • Similar to Utility Patent • For a fixed period of time (20 years in U. S. ) • Granted to inventor or discoverer of a distinct, new variety of plant • Living plant organism -- Must be asexually reproduced -- Not a tuber propagated plant or a plant found in an uncultivated state -- Expresses a set of characteristics determined by its single, genetic makeup or genotype -- Not otherwise "made" or "manufactured" • Sports, mutants, hybrids, and transformed plants -- Spontaneous or induced -- Naturally occurring or purposefully bred hybrids -- Algae and macro fungi are regarded as plants, but not bacteria

Portability Design Patents • Design Patent: ornamental design of an item -- Jewelry -- Furniture -- Running shoes -- Beverage containers -- Rounded corners of i. Phones

Portability Nike D 498, 914 - Portion of a shoe midsole 1. The ornamental design for a portion of a shoe midsole, as shown and described.

Portability -- Inventions -- Exam process -- New (Novel) and Useful -- Not obvious -- Patentable subject matter -- Processes (methods), machines, articles of manufacture, compositions of matter -- 35 U. S. C. § 101

Portability Nike Utility Patent U. S. Pat. No. 7, 533, 477 1. An article of footwear having an upper and a sole structure secured to the upper, the sole structure incorporating a support element comprising: a chamber formed of a polymer material. . . wherein the chamber encloses a pressurized fluid that places an outward force upon the first surface to deform the first insert and decrease a curvature of the first insert. . .

Portability Types of U. S. Patent Applications Provisional Applications File with Cover Sheet identifying the application as a provisional application Name(s) of all inventors Inventor residence(s) Title of the invention Name and registration number of attorney/agent, any applicable correspondence address • Identify any U. S. Government agency with a property interest in the application • • •

Portability Types of U. S. Patent Applications Types of Non-Provisional Patent Applications • Original (“Parent”) • Divisional • Continuation-in-Part Creation of Patent Families or Trees Name(s) of all inventors Inventor residence(s) Title of the invention Name and registration number of attorney/agent, any applicable correspondence address • Identify any U. S. Government agency with a property interest in the application • • •

Portability AIA: First to File • As of March 16, 2013: U. S. patent goes to first inventor to file (not necessarily first to invent) • File early and often! • Provisional patent applications can be filed early • Relatively low filing fee • Have 1 year to follow up with non-provisional app. • Consider filing series with Cover Sheet identifying the application as a provisional application

Portability AIA: Prioritized Examination • • • $4800 ($2400 small entity) surcharge Accelerated prosecution Final Disposition in 12 months Extensions not permitted – filing extension terminates No need for support/justification documents Stay on track! (Or you’ll fall off)

Portability AIA: Micro Entity Fees • If Applicant qualifies as Small Entity • May be entitled to additional 25% (overall 75%) fee discount as micro entity • Institutes of higher education qualify OR Applicant: -- has no more than 4 previous U. S. patent applications -- gross income not exceeding 3 x median income -- has not assigned, granted, or conveyed, and not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to a non-micro entity

Portability AIA: Third Party Pre-issuance Submissions • Challenge Pending Patent Applications -- Submit any printed pub, issued patent or published app -- Argument: state relevance of references to patentability -- Narrow Window • Before Allowance, AND • Within 6 Months After Publication, OR • Before First Office Action • Can submit more than one at a time, and/or more than once (with fee!) • Monitor competitors’ patent publications!

Portability AIA: Challenging Issued Patents • Post Grant Review: -- Requester can use ANY Prior Art/Any Basis for Invalidity • (except failure to disclose Best Mode) -- Deadline: • 9 Months from Issuance • Monitoring Only Practical Way to Identify Opportunities -- Appealable/Estoppel

Portability AIA: Challenging Issued Patents • • • Inter Parties Review Prior Art limited to printed publications & patents Applies to patents 9 months after issuance After availability of Post Grant Review Appealable Estoppel

Portability AIA: Patent Marking • Simplified Marking • Allows Virtual Marking -- The word “patent” or abbreviation “pat. ” AND -- A website address “accessible to the public without charge” • Must associate “the patented article with the number of the patent”

Portability AIA: Prior User Defense • AIA expands former, limited prior use defense • Prior commercial use = defense to any patent infringement claim • Potentially available even when commercial use is a Trade Secret • Invention Disclosure Forms (IDFs) can be used as evidence of prior use -- Revise IDFs to expressly state “Date of First Commercialization” -- Use, update and preserve IDFs until Date of First Commercialization is established -- Regardless of intent to file patent based on IDF

Portability Trade Secret • Any confidential business information which provides a business with a competitive advantage -- Not generally known to the public -- Competitive advantage or economic benefit must derive specifically from its not being publically known, not just from the value of the information itself -- Subject to reasonable efforts to maintain as a secret • Examples -- Any manufacturing, industrial or commercial secrets – “know how” -- Supplier or client lists -- Sales and distribution methods -- Consumer profiles -- Marketing and advertising strategies -- Manufacturing processes, formulas

Portability Trade Secret • Unauthorized use may be actionable -- State law governs • Act of unfair competition • Industrial or commercial espionage • Breach of contract • Breach of confidence -- Uniform Trade Secret Act (UTSA)

Portability Trademarks, etc. • Trademark® , ™ -- identifies tangible good or product of a company or individual -- state and federal protections • Servicemark ®, SM -- identifies tangible good or product of a company or individual -- State and federal protections • “Trade name”

Portability Trademark • Any word, name, symbol, or device, or any combination thereof • used, or intended to be used, in commerce • to identify and distinguish the goods or services of one manufacturer or seller, from goods manufactured or sold by others, and to indicate the source of the goods or services. • Trademark ≈ brand name.

Portability Registered Trademark ® • File application with the USPTO • Application designates mark + classification and description of goods/services associated with the mark • Exam by Trademark Examiner (attorney) • Generic or merely descriptive? Confusingly similar?

Portability Copyright • Exclusive rights protecting “original works of authorship” • Any work “fixed in tangible medium” -- literary, artistic, dramatic, musical, architectural, cartographic, choreographic, pantomimic, pictorial, graphic, sculptural, AV creations and computer software • Not: ideas, procedure, process, system, title, principle, or discovery • Not: names, titles, short phrases, slogans, familiar symbols, mere variations of typographic ornamentation, lettering, coloring, and listings of contents or ingredients • Exclusive right to reproduce, adapt, perform, display and distribute the work • Exists from the moment the work is created (“fixed in tangible medium”) • Duration depends on several factors, generally for works created after Jan. 1, 1978, lasts for the life of the author plus 70 years, is nonrenewable.

Portability Copyright • Copyright registration at Library of Congress is voluntary • BUT only registered works eligible for statutory damages, attorneys’ fees for infringement • Register copyright online by completing an application, submitting non-refundable fee of $35, and non-returnable copy of your work • Average processing time: -- e-filed applications 2. 5 months -- paper applications 5. 6 months

Portability Copyright: Works Made for Hire • Generally, copyright belongs to actual author of work • Exception: “Works made for hire” -- With a work “made for hire”, employer is considered the author even if an employee actually created the work -- Employer can be a firm, an organization, or an individual • US law defines “work made for hire” • Work prepared by an employee within the scope of his or her employment OR • A work specially ordered or commissioned for use OR • As a contribution to a collective work OR • If the parties expressly agree in a written instrument signed by them that the work is “made for hire”

Portability One Company – Multiple Forms of IP • Copyright: Nike's "Frozen Moment" ad, allegedly copied by Sega in 2002 ad for its “NBA 2 K 2” game • Trademarks: • U. S. Pat. Nos. 7, 533, 477 and 8, 302, 234 -- Claims to “Article of footwear with a sole structure having fluid-filled support elements” -- And methods of manufacturing • Trade Secret(s)?

Portability Transfers of Ownership • Assignments -- U. S. law: patent ownership starts with inventor(s) -- Employee inventors often obligated to assign ownership to employer -- Ownership can lie with an entity • Licenses -- Licensed uses can be carved up -- Geographic, field of use

Portability Assignments • Transfer of right to exclude others from unauthorized use (i. e. , right to sue) • Transfer right to sue for past damages • Transfer right to future inventions • MUST have magic language "hereby assign” • Agreement to later assign is not an assignment -- Employment agreements should include magic language

Portability Licenses • • • Waiver of right to exclude (the licensee) Exclusive or Non-exclusive Geographic and/or Field of Use limitations Research and Commercial use limitations Exclusive licensee ≠ owner or assignee -- Potential control issues • Standing re: enforcement against 3 rd parties • Control of prosecution and future related filings

Portability QUESTIONS?