intellectual property protecting your ideas susan ochoa spiering ochoa & associates, pc /...

Intellectual PropertyProtecting Your Ideas

Susan Ochoa Spiering

Ochoa & Associates, PC / Ferrells PLLC

Corpus Christi, Texas

June 11, 2014

Ochoa & Associates, PC Staff Susan Ochoa Spiering, Attorney

Kara B. Johnson, Assistant www.ochoapatents.com

2Ochoa & Associates, PC

Ferrells, PLLC

Michael Ferrell

Peter Ferrell

Robert Alexander

Anna Kinney

Carol Madalloni

www.ochoapatents.com

www.ferrellaw.com

Ochoa & Associates, PC

Fairfax, VA Staff

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Objectives – Understanding Intellectual Property Rights


Basic understanding of patents, trademarks and copyrights

Importance for business

Copyright & infringement

Trade Secrets

Fair Use

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What is IP?


Intellectual Property is intangible property of a person or company. That of the intellect/mind.

Made up of patents, copyrights, trademarks, trade names, trade secrets, trade dress. Also, often associated with technology related agreements (e.g. Confidentiality/ Secrecy, licensing, joint development)

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IP: Can be treated like real property

buy, sell, lease/license, pass on by inheritance, etc

patent/ TM/ Copyright Registration = house deed


PATENTSand changes based on America Invents Act (AIA)



Real Property =house

WHAT IS A PATENT?Exclusive right to exclude others from making, selling, offering to sell, or use your claimed invention for 20 years from the date of filing the patent application – basis: US Constitution Art 1, Section 8 Clause 8

• Utility – useful processes, composition of matter, machines, improvements thereof; (prov & non-prov).

• Design – ornamental designs (term – 14 yrs).• Plant – asexually reproduced plant varieties.• Requirements: new, not obvious, useful.

PATENT TYPES:

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Types of Patents


Utility Functional

Design Plant Provisional Non-provisional

non-functional Asexually 1 year Regular, to be

reproduced Not examined examined

2-3 years 3-5 years Not public 3-5 years

*No rights until the patent grants.

Protect the invention; Exclude others from practicing it; Corner the market.

High stakes litigation: high awards or settlements e.g.: Apple (1 bill –touch screen push feature of phone);

Polaroid (873 mil camera); J&J (425 mil pharma); GE (170 mil-wind energy);

No, not to draft or file your invention & application…BUT….rules still need to be followed….

Yes, if have infringement issues. Yes, to advise/counsel.


Why is it important to my business?

Do I need an attorney?

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1903 – Mary Anderson – windshield wipers

1903-Josie Stuart – dandruff shampoo

1914 – Josephine Cochran – dishwasher

1951 – Marion Donovan – disposable diapers

1979 – Rose Totino – dough products for frozen pizza


PATENT EXAMPLES

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Problems which can arise when you do not appreciate your intellectual property rights.

Failure to identify (audit) and analyze importance of IP assets.

Failure to understand that obtaining IP coverage will only apply to the U.S.

Failure to consider that intellectual property rights provide defensive, economic and healthy measures to allow your company to grow.


Problems cont’d

Failure to protect ; Export only mistake – failure to understand,

that you can infringe rights outside the US; Failure to enforce – laches (unclean hands)


Patent Misconceptions

If I keep my invention secret, I can apply for a patent at any time – secret use-maybe.

If I keep my invention secret, no one else can get a patent on it – No

I can file for a “world” patent – No

A patent and a trade secret are the same thing except a TS is cheaper - No


Getting Started on a Patent You have an idea…then what do you do?

Do some of your own searching; consider professional search

Consider other patents in the area Patentability

Infringement

Consider why you want a patent & costs - benefits to your business

Will you manufacture & sell? License? Enforce?


Type of patent application, but is not examined Gets you a filing date and gives you time to market

and consider your invention further Inexpensive One (1) year to consider and convert to actual

patent application Not without risks. (e.g.. Changes upon conversion;

new filing date, intervening art)


Provisional Patent

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In U.S. within one (1) year of using or disclosing your invention (statutory Grace/Bar period)

Preferably before disclosing invention in public setting, or sell to others.

Foreign filing: if consider, many countries do not allow filing once disclose publicly.


When to file Patent

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In the U.S. once you disclose a patent, you only have 1 yr. to patent it.

Don’t blab about your invention, use a NDA or file a provisional patent application first.


Grace Period

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Alexander G. Bell – telegraphy/ telephone Thomas Edison – electric lamp Granville Woods – electric railway Wright Brothers – flying machine Garret Morgan – traffic signals Ysidro Martinez – knee implants prosthesis


Patents that changed the world

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Patents in your business

Consider :

If manufacture or provide a service If want / need to corner market – exclude

others Balance costs to obtain vs. benefits

obtained Infringement & enforcement

What can I do for my business? Stop fakes.gov (USPTO) IP rights tool kit- country specific Non Disclosure Agreements (NDA) File patent application if appropriate Monitor the market


Issue Year Number

1790 1*

1890 418,665

1912 1,013,095

1936 2,026,516

1962 3,015,103

1977 4,000,520

1992 5,077,836

2000 6,009,555

2006 7 million

2012 8 millionth issued


Issue Year & Patent NumberRapidly growing in issuance

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(Approx) Costs & Timelines Search - $800-1500

Provisional App’s:

$4-7K to draft; $130 filing fee; One year, no examination

Non Provisional App’s:

$7-10K or $12K to draft; $600 filing fee; 3-5 years to get thru PTO.

Foreign File: $3500 PCT appln + charges to modify appln if needed

Each country: $5K to translate, work with foreign assoc; fees vary per country

Generally: $30-50K/country/patent over 20 year term (all costs); $10K/country to get started.

Costs will vary per area, attorney, and invention.


America Invents ActEff 9/16/11

First major change in 60 years to patent rules. Some changes

First to file prior user rights, including secret use

patent marking – virtual ok now / false marking triggers more damagesre-examination of issued patent (cost greater than $10K)

interparties rules ; exparte rulespost grant reviewinventor oath/declaration


Summary of Patent Info For function features

Exclude others from claimed matter – protects your invention

Term: 20 yrs

Subject matter: machine / widget/ process

First to file country now.


Trademarks™

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What is a Trademark? Protect words, names, symbols, sounds, colors that distinguish

goods & services. Identifies origin or source of product /service.

Ex: Coca Cola, Pepsi, & Clorox (stylized writing), McDonald arches.

TM can incorporate your trade name.

Term: forever if use in commerce; must prove use


Trademarks cont’d

• Cannot confuse public

• Cannot be deceptive

• Cannot protect if descriptive or generic

* Common law rights vs. registration* Record at CBP (Customs and Border Patrol)

-let CBP help protect your rights* Counterfeits

-China, Taiwan, Mexico, India

Problems (Market Place)


Trademark

Consider for your business

Branding & Marketing strategy

Trademark(what can I do?)

Search to ensure freedom to use

Register through state or federal agency.


Registration vs. Common Law Rights

Objective: provide notice to public

Corpus Christi Longhorn Restaurant Case

Internet marketing


Provide choice to consumers vs. confusion (consider proximity, style, context, relatedness of marks and industry)

Overlapping of IP (TMs + Patents) For example:

Coca-Cola has a trademark on its name, and a design patent of the bottle (and their formula is a trade secret.

Coca-Cola also has copyrights on promotions.


TM Enforcement

TM Police does exist Work in conjunction with CBP (if involves crossing US border), FBI, TABC (if alcohol or

tobacco involved), city police departments

Raids – flea markets, homes

Remember Violation terms :

Copyright = pirated

Trademark = counterfeit

State and Federal laws involved.


Trade Secrets


Trade SecretsWhat are they?

any information that derives independent, economic value.

e.g.: recipe; chemical formulation (Coke)

Useful?

very, …..if maintain as TS. Must be able to show protect the secret.

Term:

Pros: Forever, if maintain as TS, and can show efforts towards maintaining as such.

Cons: If an item can be reverse engineered, people can make it.

In the U.S., based on AIA, there is now limited defense to patent infringement based on prior commercial use…but still hard to enforce TS’s….even if enforce, the secret is out.


When decide that instead of patent or trademark protection, will keep as trade secret due to costs.

Problems



Trade Secrets Patenting

Keep secret

Theft can still occur

Difficult to enforce

Must Protect

Obtain government grant – 20 yrs.

Publishing in 18 months

After 20 yrs, anybody can use it (public domain)

Not everything is patentable

VS.

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Example of Enforcement of TS

Ref: CC Caller Times, 8/20/12, Chicago Story.

Hanjuan Jin, employee of Motorola, software engineer caught at

Ohare airport w/ 1000’s of documents of tradesecrets and $31K in cash.

Court found theft of TS, or intent to sell secret, since was flying out to China.

4 yrs prison to serve as example that US enforces IP rights.


Copyright


What is a copyright? Right to exclude others from reproducing / duplicating

literary, audio materials –EX: Journals, books, presentations, videos, software,

music –Rights begin when have tangible expression of idea;

Rights belong to creator, not person who paid (if pay, need release of rights)

–Term: 75 years from death of author Concern: Piracy of copyrights


Copyrights

It is not required to register copyrights to have rights. But in case of infringement, you

need the rights to enforce them and to claim statutory damages as well as attorney

fees.

Registering can mean difference in $100K statutory damages vs. $100 actual damages



www.copyright.gov• Home page has lots of useful information, such as:

FAQ (English & Spanish) Fees Records to Search Related Links

• To Register – Go To: eCo Link – follow instructions $35 application fee Can file electronically or paper copy

VA Visual Arts

TX Literary /Text

PA Performing Arts

SR Sound Recordings

Protecting your website – consider:

Ownership (of material)

Notice (to public)

Registration (of materials/domain)


Ownership

Did you create? If no, do you have agreement giving you all IP rights?

Notice --copyright words Registration – you will need to register your

copyrights within 3 months of first publication or prior to infringement; consider the material you have to register (copyright/TM/patent?).


Common copyright issues Theft of copyrighted music, movies (DVD pirating), website

advertising/phone app’s.

Recently held even small amount of use is NOT fair use…(nothing is generally fair use if commercialization involved).


Fair Use


What is fair use?Fair use is copying copyrighted /protected material for limited and transformative purpose.

E.g. CommentCriticizeParodyTeach

Be aware of what kind of software / music / video / etc… you download into your computer that may be violating copyrights or other IP rights.


Fair Use

Caution: can be fine line between infringement & fair use various factors considered Music – rapping or thieving? Is sampling Ok?

Manu Dibango v. Michael Jackson, Rihanna et al (for use of composition: mama say mama sah ma ma coo sah

Andrew Paul Leonard v. Stemtech Health Services copyright lawsuit: Sales company was copying, using and displaying his work on websites and in publications. Leonard was awarded 1.6 million (item not registered therefore award was 3 X’s less.)

Dhillon v. Does - Unauthorized use of photograph: Northern District of California held that the fair use doctrine barred by copyright claims. (publisher did not make money therefore considered fair use and no damages)


Licensing IP License = permission by owner of technology (which

could include patents & copyrights, TM’s, SM’s, TN’s) to make, use, or sell service or product.

Rights can be granted for any terms agreed between the parties.


Market impact of Fakes Terminology / definitions….(again):

counterfeit trademark goods pirated copyright goods


Fakes vs. Authentics

When people buy fake purses/shoes etc, they are encouraging counterfeiting and piracy.

www.myauthentics.com- public awareness site.


http://www.myauthentics.com-/

Financial Impact (1.7 billion in 2013)

Fakes: CDs, DVDs - movie industry vigilant.

Purses, clothes, shoes – TM police.

TM police all around us: Held: Designer Sherri Hill was awarded $5M in damages (NY, 6/18/12) from John Doe aka Wang Qinghe, for Trade dress infringement, false designation of origin, TM dilution, cyber squatting & copyright infringement; also found defendant manipulated Google search results. (TM & copyright issues considered)


Counterfeit (TM principle) There is real impact on you; must be vigilant of health and safety Supply chain integrity issue, especially with drugs

2012 Concern over: Toothpaste Electrical cords #1 counterfeited drug : Viagra Fire extinguishers Lithium batteries Optical media Pharmaceuticals


2013 –Top 10 Counterfeit Goods in USA


Seized Value(millions) Retail Value (millions)

1. Electronics 39 1012. Shoes (red soles) 25 973. Drugs (viagra) 17 254. CD’s / DVD’s 15 355. Clothing 15 1266. Perfume 9 517. Watches 9 1128. Cigarettes 8 109. Computer hard ware 8 2210. Toys/Games 7 27

What you can do to protect and enforce IP…

Conduct an IP audit – identify what is eligible for protection Obtain US rights (at home) and identify any local laws that

could impact the market

Obtain rights in appropriate foreign markets Keep your information as safe as possible Prepare for worst case scenario Monitor markets in case of infringement Prevent infringed goods from coming to US Work with government agencies (FDA, BATF, ITA/TCC, USPTO,

DOJ, etc.)


Some remedies for infringement(not exhaustive list)

TM and/or Patent: File suitGet TRO or preliminary injunctionGet costs & attorney fees in select casesDestruction of property Seizure or impound Forfeiture False Advertisement DamagesProfits



Items that cannot be protected:

Flags

People’s names

Clothes/patterns

Naturally occurring items

Religious Articles

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Search engines USPTO.gov – for patents & TM’s COPYRIGHT.gov TESS database (TM’s) GOOGLE/ GOOGLE Patents Numerous combinations of the relevant key

words are searched; Non-patent databases include: IP.com, Scirus,

Google Scholar, The Wayback Machine


Domain Names

Search/ Check with Whois.com Register through godaddy.com or something

similar


Legal Notices

Patent pendingPatent numberCopyrightTrademark™Registered®Email notices


For Copyrighted websites, use the word “Copyright” and not the symbol “©”

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Emails

Caution what write & who write to; assume can be used in litigation

Careful w/ “reply all” button

Short, factual (do you really need to string all emails together?)

Disclaimer – recommend having on all emails send out


Recommendations Exercise common sense Evaluate risks/needs of business vs. protection vs.

costs Consider consulting with attorney, even short term Audit & Protect IP rights Keep quiet about inventions/secrets


Disclaimer

Information is provided “as is” – no warranties

Use at your own risk Intended to be general


Thank You for Your Attention;Susan’s Information

Susan Ochoa Spiering

Ochoa & Associates, PC / Ferrells’s PLLC

4921 Willliams Drive

Corpus Christi, TX 78411

Ph: 361.806.0070

Email: [email protected]

Website: www.ochoapatents.com

Intellectual property firm serving your IP rights & needs. If you lose me, I can be found on the internet “Corpus Christi Patent Attorney”, or “Susan Patent Attorney Corpus Christi”…or some variation of this.


mailto:[email protected]

Thanks for permission from State Bar of Texas Intellectual Property PR Committee

for some of the slides.

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