Intellectual Property

By Wilmer Arellano

Fall 2007

Home

Previous

Next

Help

Overview

• Intellectual Property

• Patents– What Can Be Patented?

– Utility Patents

• Copyright– What works are protected?

– Duration Copyright

• Trademarks and Service marks

Home

Previous

Next

Help

References

• 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%20US%20patent%20law--4%20Feb%202005%20presentation--slides.pdf

Home

Previous

Next

Help

Intellectual Property

• n : intangible property that is the result of creativity (such as patents or trademarks or copyrights)

•Source: WordNet ® 2.0, © 2003 Princeton University

Home

Previous

Next

Help

Intellectual Property

• Intellectual Property includes four different kinds of rights: – Patent,

– Copyright,

– Trademark,

– and Trade Secrets. Usually included under unfair competition.

Home

Previous

Next

Help

http://www.msnbc.msn.com/id/13722797/

07/06/06• Three charged with stealing Coca-Cola secrets.

Suspects accused of trying to pass drink recipes to rival company PepsiCo.– ATLANTA - Coca-Cola and Pepsi are usually bitter

enemies, but when PepsiCo Inc. got a letter offering to sell Coke trade secrets, it went straight to its corporate rival.

– Six weeks later, three people face federal charges of stealing confidential information, including a sample of a new drink, from The Coca-Cola Co. and trying to sell it to PepsiCo Inc.

– The suspects arrested Wednesday — the day a $1.5 million transaction was to occur — include a Coke executive’s administrative assistant, Joya Williams, who is accused of rifling through corporate files and stuffing documents and a new Coca-Cola product into a personal bag.

Home

Previous

Next

Help

Patents

• 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.”

Home

Previous

Next

Help

Abraham Lincoln's Patent: Improvement for Buoying Vessels Over

Shoals

Home

Previous

Next

Help

Patents

• A patent is a 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”

• for a limited time in exchange for public disclosure of the invention when the patent is granted.

• Not a grant to make

Home

Previous

Next

Help

What Can Be Patented?

• Utility Patents, any new and useful:– Process, includes industrial or technical processes.

– Machine, The term “Machine” needs no explanation.

– Manufacture, includes all manufactured articles.

– or Composition of Matter, relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds.

• or any new and useful improvement thereof.

• These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.

• Are granted for a period of 20 years from the date of filing a patent application

Home

Previous

Next

Help

• Can you patent a process?

Home

Previous

Next

Help

• Blockbuster to rewrite video rental script after Netflix settlement– Blockbuster Inc. says it has reached a

settlement in a lawsuit Netflix Inc. filed in April 2006 charging Blockbuster with infringing on patents related to online video rental services. Blockbuster reported the settlement in a filing with the U.S. Securities and Exchange Commission and said terms of the settlement would not be released

Home

Previous

Next

Help

Design Patents & Plant Patents

• Any new and non obvious ornamental design for an article of manufacture. – The design patent protects only the appearance of an

article, but not its structural or functional features.– A design patent has a term of 14 years from grant, and

no fees are necessary to maintain a design patent in force.

• Any invented or discovered and asexually reproduced distinct and new variety of plant.– Asexually propagated plants are those that are

reproduced by means other than from seeds.– The term of a plant patent shall be 20 years from the

date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application under 35 U.S.C. 120, 121 or 365(c), from the date the earliest such application was filed

Home

Previous

Next

Help

Utility Patents

• 35 USC §102-- What is claimed must be new .

• 35 USC §103-- What is claimed must be nonobvious .– Non obvious to a person having ordinary

skill in the area of technology related to the invention. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable.

Home

Previous

Next

Help

First to Invent

• The U.S. has a “first to invent” policy regarding invention, meaning that the first originator of an invention receives credit for it.

• The first person to patent an invention will not receive credit unless they were also the first to invent it.

• The presumption is that the first to reduce to practice is the first to invent

• 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

Home

Previous

Next

Help

First to Invent

• In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if:– “(a) the invention was known or used by others in

this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,” or

– “(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States . . .”

Home

Previous

Next

Help

“Patent pending” and “Patent applied for”

• They are used by a manufacturer or seller of an article to inform the public that an application for patent on that article is on file in the United States Patent and Trademark Office. The law imposes a fine on those who use these terms falsely to deceive the public.

Home

Previous

Next

Help

Patent Rights

• 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.

Home

Previous

Next

Help

• Who invented the light bulb?

Home

Previous

Next

Help

Claims Example

• 1880, 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.

• 1878, 205,144 William Sawyer and Albon Man 6/18 for Improvements in Electric Lamps

• 1879, Swan began installing light bulbs in homes and landmarks in England

Home

Previous

Next

Help

How to Prove the Idea Is Yours

• Use a Notebook with consecutively numbered and permanently bound pages

• Put your ideas in writing completely and accurately. Fully describe the invention in words and pictures.

• Date all your Entries and write with pen. Do not backdate.

• Do not remove or skip pages• Do not erase, draw a line across errors• The notebooks should be witnessed weekly

by two knowledgeable people you trust which are not relatives of you

Home

Previous

Next

Help

Why would you care?

Home

Previous

Next

Help

Some Myths about Inventors

• Miths– In order to invent you need to be mature

– Most successful inventors have years of experience in their fields

– In order to invent you need to have a lot of resources

Home

Previous

Next

Help

Some Myths about Inventors

• Myth: In order to invent you need to be mature– George Westinghouse,

at age 19, obtained his first patent, for a rotary steam engine.

– 1824 When Louis Braille was 15 years old, he developed an ingenious system of reading and writing by means of raised dots. Today, in virtually every language throughout the world, Braille is the standard form of writing and reading used by blind people.

Home

Previous

Next

Help

Some Myths about Inventors

• Myth: In order to invent you need to be mature

– 1642 The mechanical adding machine was invented by a nineteen year old French boy named Blaise Pascal .

– 1648 Anton van Leeuwenhoek is best known for his work on the improvements of the microscope, at the age of 16.

– 2005 Taylor Hernandez, age 10, invented "Magic Sponge Blocks," large building blocks made from sponge that can safely stack high without worry that they could fall and hurt a child.

Home

Previous

Next

Help

Some Myths about Inventors

• Myth: In order to invent you need to be mature

Home

Previous

Next

Help

Philo Farnsworth

In 1922 a 14-year-old farm boy first sketched an idea for his science teacher…"What has this got to do with Chemistry?" Tolman asked. "I've got this idea," Farnsworth calmly replied. "I've got to tell you about it because you're the only person I know who can understand it." The boy paused and took a deep breath. "This is my idea for electronic television.“

"Television?" Tolman said, "What's that?"

Home

Previous

Next

Help

Home

Previous

Next

Help

Inventors

• 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

Home

Previous

Next

Help

Co-Inventors

• 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.

Home

Previous

Next

Help

Current Fee Schedule

• Typical filing fees for an Inventor when application filed with a written assertion of small entity status (See Simplified Small Entity Status Practice):

• Filing a provisional application. $100 • Filing a non-provisional application. Approximately $150* • Issue fee Approximately $650 • Maintenance fees:

– Due at 3 1/2 years, Approximately $450– Due at 7 1/2 years, Approximately $1150– Due at 11 1/2 years,Approximately $1900

• *Does not include the search fee or examination fee.• Utility Examination Fee $100• Utility Search Fee $250.00

Home

Previous

Next

Help

Statistics

• 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.

Home

Previous

Next

Help

Statistics

Year Utility Design Plant Reissue Total

2001 324,211 18,636   914   956 344,717

2002 331,580 19,706 1,134   974 353,394

2003 331,729 21,966   785   938 355,418

2004 353,319 23,457 1,212   996 378,984

2005 381,797 25,304 1,288 1,143 409,532

2006 415,551 25,833 1,095 1,173 443,652

1: FY 2006 data are preliminary and will be finalized in the FY 2007 PAR. (back to text)

TABLE 2: PATENT APPLICATIONS FILED

(FY 1986 - FY 2006)PRELIMINARY FOR FY 2006

Notes:

Home

Previous

Next

Help

TABLE 5: SUMMARY OF TOTAL PENDING PATENT APPLICATIONS

(FY 2006)Utility, plant and Design Total patent

reissue applications applications applications

Pending patent applications, total 1,036,588 40,454 1,077,042

In preexamination processing, total    94,270  3,453    97,723

Under examination, total   878,317 27,552   905,869

Undocketed   204,182  3,585   207,767

Awaiting first action by examiner   375,881 19,776   395,657

Rejected, awaiting response by applicant   205,084  3,387   208,471

Amended, awaiting action by examiner    72,744    726    73,470

In interference       364      0       364

On appeal, and other 1    20,062     78    20,140

In postexamination processing, total    64,001  9,449    73,450

Awaiting issue fee    42,358  4,959    47,317

Awaiting printing2    18,564  4,489    23,053

D-10s (secret cases in condition for allowance)     3,079      1     3,080

Notes:1: Includes cases on appeal and undergoing petitions.(back to text)2: Includes withdrawn cases. (back to text)

Stage of processing

Home

Previous

Next

Help

Statistics

TABLE 28: END OF YEAR PERSONNEL(FY 2002 - FY 2006)

ACTIVITY 2002 2003 2004 2005 2006

Business

Patent Business Line 6,045 5,990 6,060 6,494 7,283

Trademark Business Line   894   733   756   869   906

Total USPTO 6,939 6,723 6,816 7,363 8,189

Examination Staff

Patent Examiners

UPR Examiners (Utility, Plant and Reisue) 3,538 3,579 3,681 4,177 4,779

Design Examiners    58    58    72    81   104

Total UPR and Design Examiners 3,596 3,637 3,753 4,258 4,883

Trademark Examining Attorneys   258   256   286   357   413

Home

Previous

Next

Help

Copyright

• The U.S. Copyright Act, 17 U.S.C. §§ 101 - 810 is Federal legislation that protects the writings of authors.

• While governments had previously granted monopoly rights to publishers to sell printed works, the modern concept of copyright originated in 1710 with the British Statute of Anne. This statute first accorded exclusive rights to authors rather than publishers.– It is named for Queen Anne, during whose reign it was

enacted.

– http://en.wikipedia.org/wiki/Copyright

• Copyrights are registered by the Copyright Office of the Library of Congress.

Home

Previous

Next

Help

What works are protected?

• 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

Home

Previous

Next

Help

The exclusive rights of the copyright holder

• Several exclusive rights typically attach to the holder of a copyright:– to produce copies or reproductions of the work and

to sell those copies (including, typically, electronic copies)

– to import or export the work

– to create derivative works (works that adapt the original work)

– to perform or display the work publicly

– to sell or assign these rights to others

• http://en.wikipedia.org/wiki/Copyright

Home

Previous

Next

Help

What Works Are not Protected?

• Works that have not been fixed in a tangible form of expression (for example, choreographic works that have not been notated or recorded, or improvisational speeches or performances that have not been written or recorded)

• 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

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

Home

Previous

Next

Help

How to Secure a Copyright

• 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.

Home

Previous

Next

Help

Fair Use

“Fair Use” is not an infringement of copyright. Use for

purposes such as: – Criticism,

– Comment,

– News reporting,

– Teaching,

– Scholarship, or

– Research.

•Sections 107 through 118 of the Copyright Act (title 17, U. S. Code)

•You need to quote the work in question appropiately that includes any graph or pictures taken from the protected work

Home

Previous

Next

Help

Duration Copyright

• 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 works made for hire, copyright lasts for 95 years

from the date of first publication, or 120 years from the date of creation, whichever comes first.

• For works published between 1923 and 1963, initial term of 28 years, with a renewal term of 67 years

• For works published between 1964 and 1977, initial term of 28 years, with automatic renewal term of 67 years

• Works published before 1923 are in the public domain

Home

Previous

Next

Help

Trademarks and Service marks

• 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.

Home

Previous

Next

Help

Trademarks and Service marks

Home

Previous

Next

Help

Letters and words:

• A word or other groupings of letters is the most common type of mark. Examples include:

• APPLE

• SILICON GRAPHICS

• NETSCAPE

• IBM

• NBC – http://www.bitlaw.com/trademark/devices.html

Home

Previous

Next

Help

Logos:

• 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/

trademark/devices.html

Home

Previous

Next

Help

Pictures or drawings

• Pictures or drawings of a character or scene are often used as trademarks or service marks. – http://

www.bitlaw.com/trademark/devices.html

Home

Previous

Next

Help

Combination:

• Or a trademark might be a combination of letters and a design, such as:– http://

www.bitlaw.com/trademark/devices.html

Home

Previous

Next

Help

Slogans:

• 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

Home

Previous

Next

Help

Is registration of my mark required?

• 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

Home

Previous

Next

Help

Non-conventional trademarks

• Colour trademarks

• Hologram trademarks

• Motion trademarks

• Shape trademarks

• Smell trademarks

• Sound trademarks – http://en.wikipedia.org/wiki/Trademark

Home

Previous

Next

Help

Things that cannot be TM’d

• Generic marks

• Scandalous or immoral marks

• Deceptive marks

• Merely descriptive marks (no secondary meaning)

• Primarily geographically descriptive

• Primarily surname marks

Home

Previous

Next

Help

Maintaining a federal trademark registration

• 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

Home

Previous

Next

Help

Overview

• Intellectual Property

• Patents– What Can Be Patented?

– Utility Patents

• Copyright– What works are protected?

– Duration Copyright

• Trademarks and Service marks

Home

Previous

Next

Help &&QuestionsQuestions

AnswersAnswers