11

Intellectual Intellectual PropertyProperty

Patents, Trademarks and Patents, Trademarks and CopyrightsCopyrights

22

Types of PropertyTypes of Property

RealReal LandLand

PersonalPersonal Cars, jewelry, clothingCars, jewelry, clothing

EasementsEasements Non-corporal interest in real propertyNon-corporal interest in real property

• Railroads, utilitiesRailroads, utilities

IntellectualIntellectual Patents, copyrights and trademarksPatents, copyrights and trademarks

33

PatentsPatents

Grant of a property right to the inventorGrant of a property right to the inventor Issued by the Issued by the Patent and Trademark Patent and Trademark

OfficeOffice Term of a new patent is Term of a new patent is 20 years20 years from the from the

date on which the application for the patent date on which the application for the patent was filed in the United Stateswas filed in the United States

US patent grants are effective only within US patent grants are effective only within the US, US territories, and US possessions.the US, US territories, and US possessions.

44

PatentsPatents

The right to The right to excludeexclude others from making, others from making, using, offering for sale, or selling” the using, offering for sale, or selling” the invention in the United States or invention in the United States or “importing” the invention into the United “importing” the invention into the United StatesStates

NotNot the right to make, use, offer for sale, the right to make, use, offer for sale, sell or import, but the sell or import, but the right to exclude right to exclude others from making, using, offering for others from making, using, offering for sale, selling or importing the inventionsale, selling or importing the invention

55

66

Patent LawsPatent Laws

Constitution of the United States gives Constitution of the United States gives Congress the power to enact laws Congress the power to enact laws relating to patents, in relating to patents, in Article I, section 8Article I, section 8, , which reads which reads

““Congress shall have power . . . to promote the Congress shall have power . . . to promote the progress of science and useful arts, by securing for progress of science and useful arts, by securing for limited times to authors and inventors the exclusive limited times to authors and inventors the exclusive right to their respective writings and discoveriesright to their respective writings and discoveries""

77

Patent LawsPatent Laws

Specifies the subject matter for which a Specifies the subject matter for which a patent may be obtained and the conditions patent may be obtained and the conditions for patentabilityfor patentability

Establishes the Establishes the Patent and Trademark Patent and Trademark OfficeOffice (PTO) (PTO) to administer the law relating to administer the law relating to the granting of patents, and contains to the granting of patents, and contains various other provisions relating to various other provisions relating to patents. patents.

88

PatentabilityPatentability((What may be patented?What may be patented?))

Statute says, "any person who Statute says, "any person who invents any new and useful invents any new and useful process, machine, manufacture, process, machine, manufacture, or composition of matteror composition of matter, or any , or any new and useful improvementnew and useful improvement thereof"thereof"

99

PatentabilityPatentability ProcessProcess::

Process, act or method, and primarily includes Process, act or method, and primarily includes industrial or technical processesindustrial or technical processes

MachineMachine:: Self explanatorySelf explanatory

ManufactureManufacture:: Articles which are made, including all manufactured Articles which are made, including all manufactured

articlesarticles

Composition of MatterComposition of Matter chemical compositions and may include mixtures of chemical compositions and may include mixtures of

ingredients as well as new chemical compoundingredients as well as new chemical compound

1010

Conditions of PatentabilityConditions of Patentability

UtilityUtility subject matter has a subject matter has a useful purposeuseful purpose and and

also includes operativenessalso includes operativeness Invention must "work" to be usefulInvention must "work" to be useful

NoveltyNovelty Must not be known or used by others in this Must not be known or used by others in this

countrycountry Or patented or described in a printed Or patented or described in a printed

publication in this or a foreign countrypublication in this or a foreign country

1111

Conditions of PatentabilityConditions of Patentability

Non-obviousnessNon-obviousness The subject matter sought to be patented The subject matter sought to be patented

must be sufficiently different from what must be sufficiently different from what has been used or described before that it has been used or described before that it may be said to be may be said to be nonobvious to a nonobvious to a person having ordinary skill in the person having ordinary skill in the area of technology related to the area of technology related to the inventioninvention

Three leg stoolThree leg stool

1212

Patent and Trademark OfficePatent and Trademark Office(PTO)(PTO)

Issue patents on behalf of the GovernmentIssue patents on behalf of the Government Headed by Commissioner of Patents and Headed by Commissioner of Patents and

TrademarksTrademarks Part of Part of Department of CommerceDepartment of Commerce Administers the patent laws as they relate Administers the patent laws as they relate

to the granting of patents for inventionsto the granting of patents for inventions Examines applications for patentsExamines applications for patents

1313

PTOPTO

Publishes issued patents and various Publishes issued patents and various publications concerning patentspublications concerning patents

Similar functions are performed with respect to Similar functions are performed with respect to the registration of trademarksthe registration of trademarks

No jurisdictionNo jurisdiction over questions of infringement over questions of infringement and the enforcement of patentsand the enforcement of patents

Divided among a number of examining groups, Divided among a number of examining groups, each group having jurisdiction over certain each group having jurisdiction over certain assigned fields of technologyassigned fields of technology

1414

Patent ApplicationPatent Application

Application = Application = written documentwritten document which which comprises a specification (description comprises a specification (description and claims), and an oath or declarationand claims), and an oath or declaration

Drawing or Drawing or reduction to practicereduction to practice Filing feeFiling fee Filing dateFiling date of an application for patent of an application for patent

determines priority determines priority (first to file wins!!)(first to file wins!!)

1515

Provisional Patent Provisional Patent ApplicationApplication

Designed to provide a lower cost first Designed to provide a lower cost first patent filing in the United Statespatent filing in the United States

Establish an Establish an early effective filingearly effective filing date date in a patent applicationin a patent application

Permits the term “Permits the term “Patent PendingPatent Pending”” Applicant would then have up to Applicant would then have up to twelve twelve

months months to file a non-provisional to file a non-provisional application for patentapplication for patent

1616

PatentabilityPatentability

Laws of nature, physical phenomena Laws of nature, physical phenomena and abstract ideas are not patentable and abstract ideas are not patentable subject mattersubject matter

Cannot obtained a patent for a mere Cannot obtained a patent for a mere idea or suggestion idea or suggestion

Reduction to PracticeReduction to Practice of the actual of the actual machine or other subject matter for machine or other subject matter for which a patent is sought is requiredwhich a patent is sought is required

1717

Design PatentsDesign Patents

Any Any newnew and and nonobviousnonobvious ornamental design ornamental design for an article of manufacturefor an article of manufacture

Protects only the Protects only the appearanceappearance of an article, of an article, notnot its structural or functional featuresits structural or functional features

Design patent has a term of Design patent has a term of 14 years14 years from from grantgrant

Proceedings relating to granting of design Proceedings relating to granting of design patents are the patents are the same as other patentssame as other patents

1818

Plant PatentsPlant Patents

Any newly Any newly discovereddiscovered and and asexuallyasexually reproducedreproduced, distinct and , distinct and new varietynew variety of of plant, including cultivated sports, mutants, plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant than a tuber-propagated plant or a plant found in an uncultivated statefound in an uncultivated state

same parts as other applicationssame parts as other applications with the with the addition of a plant color coding sheetaddition of a plant color coding sheet

1919

Patent InfringementPatent Infringement Unauthorized making, using, offering for sale Unauthorized making, using, offering for sale

or selling any patented invention within the or selling any patented invention within the United StatesUnited States

Patentee may sue for relief in the appropriate Patentee may sue for relief in the appropriate FederalFederal court where remedies include: court where remedies include: injunctioninjunction to prevent the continuation of the to prevent the continuation of the

infringement infringement Money damagesMoney damages because of the infringement because of the infringement

Appeal to the Appeal to the Court of Appeals for the Federal Court of Appeals for the Federal Circuit, then US Supreme Court (writ of certiorari)Circuit, then US Supreme Court (writ of certiorari)

2020

Trademarks / ServicemarksTrademarks / Servicemarks

Word, name, symbol or device which is Word, name, symbol or device which is used in trade with goods to indicate the used in trade with goods to indicate the source of the goodssource of the goods and to and to distinguishdistinguish them from the goods of othersthem from the goods of others

ServicemarkServicemark is the same as a trademark is the same as a trademark except that it identifies and distinguishes except that it identifies and distinguishes the source of a the source of a service rather than a service rather than a productproduct

2121

TrademarksTrademarks

Used to prevent others from using a Used to prevent others from using a confusingly similarconfusingly similar mark mark

Not to prevent others from making the Not to prevent others from making the same goods or from selling the same same goods or from selling the same goods or services under a clearly goods or services under a clearly different markdifferent mark

May be registered with the Patent and May be registered with the Patent and Trademark OfficeTrademark Office

2222

Trademark RegistrationTrademark Registration

Trademark rights established by:Trademark rights established by: First First to use the "mark"to use the "mark" First First to file application with PTOto file application with PTO

Federal registration not required but has Federal registration not required but has advantagesadvantages Registered owner can use mark nationwideRegistered owner can use mark nationwide

Registration granted for 10 yearsRegistration granted for 10 years renewable renewable for another 10for another 10

2323

Trademark RegistrationTrademark Registration

PTO is responsible for the PTO is responsible for the federal federal registrationregistration of trademarks of trademarks

PTO assigns it a PTO assigns it a serial numberserial number and and sends the applicant a receipt about two sends the applicant a receipt about two months after filingmonths after filing

Examining attorneyExamining attorney at the PTO at the PTO reviews the application and determines reviews the application and determines whether the mark may be registeredwhether the mark may be registered

2424

Trademark RegistrationTrademark Registration

Examining attorney will approve the Examining attorney will approve the mark for publication in the mark for publication in the Official Official GazetteGazette

PTO sends PTO sends Notice of PublicationNotice of Publication to to the applicantthe applicant

Opportunity for Opportunity for public oppositionpublic opposition Certificate of RegistrationCertificate of Registration 12 weeks 12 weeks

after publicationafter publication

2525

"TM", "SM", ""TM", "SM", "®" ®"

Use of Use of TMTM (trademark) or (trademark) or SMSM (service (service mark) designation with the mark to mark) designation with the mark to alert the public to the claimalert the public to the claim

Prior registration with PTO not Prior registration with PTO not requiredrequired

Registration symbol,Registration symbol, ® ®, may , may onlyonly be be used when the mark is used when the mark is registeredregistered in in the PTOthe PTO

2626

CopyrightsCopyrights

Protects the Protects the form of expressionform of expression rather rather than the subject matter of the writingthan the subject matter of the writing

Copyrights are registered by the Copyrights are registered by the Copyright Office of the Library of Copyright Office of the Library of CongressCongress

Duration is life + 70 yearsDuration is life + 70 years Title 17 U.S. CodeTitle 17 U.S. Code

2727

CopyrightsCopyrights

Form of protection provided to the Form of protection provided to the authors of “authors of “original works of original works of authorship"authorship"

Including Including literaryliterary, , dramaticdramatic, , musicalmusical, , artisticartistic, and certain other intellectual , and certain other intellectual works, both published and unpublishedworks, both published and unpublished

Gives author and authorized other Gives author and authorized other exclusive rightsexclusive rights

2828

Copyright ProtectionCopyright Protection

AAuthor and Agent haveuthor and Agent have exclusive rights exclusive rights to:to:

1.1. ReproduceReproduce the copyrighted work the copyrighted work

2.2. Prepare Prepare derivative worksderivative works

3.3. Distribute copiesDistribute copies or or phonorecordsphonorecords of of the copyrighted work, the copyrighted work,

4.4. PerformPerform the copyrighted work publicly the copyrighted work publicly1.1. Includes digital audio transmission Includes digital audio transmission (Napster)(Napster)

5.5. DisplayDisplay the copyrighted work publicly the copyrighted work publicly

2929

Scope of Copyright ProtectionScope of Copyright Protection

Literary worksLiterary works Musical worksMusical works

Including lyricsIncluding lyrics

Dramatic worksDramatic works Including musicIncluding music

Pantomines Pantomines MP-3 Music (Napster)MP-3 Music (Napster)

ChoreographyChoreography Motion picturesMotion pictures Pictorial, graphic, Pictorial, graphic,

sculptoral workssculptoral works Sound recordingsSound recordings Architectural worksArchitectural works

3030

Scope of Copyright ProtectionScope of Copyright Protection

Must be Must be "fixed in a tangible medium of "fixed in a tangible medium of expression"expression" to be protected. to be protected.

Not protected:Not protected: Unrecorded choreographyUnrecorded choreography Slogans, short names, titles, familiar symbolsSlogans, short names, titles, familiar symbols Ideas, procedures, methods, systems, Ideas, procedures, methods, systems,

principlesprinciples Information that is "common property"Information that is "common property"

• Calendars, rulers, tape measures, public listsCalendars, rulers, tape measures, public lists

3131

Copyright RegistrationCopyright Registration

Registration not require to secure copyrightRegistration not require to secure copyright Since 1978 Copyright protection is obtained Since 1978 Copyright protection is obtained

automatically when the work is created, automatically when the work is created, fixed in tangible medium of expression and fixed in tangible medium of expression and published published (distribution in public domain)(distribution in public domain)

Gives right to defend copyrightGives right to defend copyright Copyright registrationCopyright registration has advantages has advantages

3232

Copyright RegistrationCopyright Registration

Legal formality intended to make a Legal formality intended to make a public public recordrecord of the basic facts of a particular copyrightof the basic facts of a particular copyright

Not a condition of copyright protectionNot a condition of copyright protection Registration establishes a Registration establishes a public recordpublic record of the of the

copyright claim copyright claim Required before an infringement suit may be Required before an infringement suit may be

filed in court filed in court (Jurisdictional prerequisite)(Jurisdictional prerequisite)

3333

Copyright NoticeCopyright Notice

Notice of CopyrightNotice of Copyright Symbol Symbol ©© Word Word ""copyrightcopyright"" Abbreviation Abbreviation ""CoprCopr."."

Example: © 2000 John Doe Example: © 2000 John Doe Sound recording require Sound recording require symbolsymbol, , year year

first publication first publication and and name of ownername of owner Example: (P) 2001 A. B. C. Records Inc.Example: (P) 2001 A. B. C. Records Inc.