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INTELLECTUAL PROPERTY

LAW

Jason Heist Steven Wangerow

ME 481 Presentation Michigan State University

September 26, 2011

WHO WE ARE

Jason Heist: BS Chemistry ’99, JD ’06

Steven Wangerow: BS Mech. Eng. ‘03, JD ’09

Harness Dickey: founded in 1921; exclusively IP law; offices in Troy, MI; St. Louis, MO; Reston, VA; Portland, OR

national and international client base

What is a patent?

A U.S. Patent is a contract between the inventor and the US government:   you teach your idea   preserved forever in

the US Patent Office   government grants a

monopoly for a limited number of years

What rights does a patent give?

The right to exclude others from:   Making   Using   Selling   Offering to sell   Importing

Patent rights are national:   a U.S. Patent covers

the entire United States

What a patent does not do...

Owning a patent does not give you the right to make, use, sell, or import your invention.

Someone else’s patent claim may read as follows:

A light bulb comprising: a glass housing; a filament member disposed in said glass housing; wherein said filament member glows when provided with electricity.

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Your patent claim to an improvement may read as follows:

A light bulb comprising: a glass housing;

a threaded base connected to said glass housing; a filament member disposed in said glass housing; wherein said filament member glows when provided with electricity.

How you can get a patent

  Prepare invention disclosure   dated and witnessed

  Search prior art   Prepare application

  after application is filed with U.S. Patent Office = patent pending

  Prosecute application   amend as required by Patent

Office   persuade U.S. Patent

Examiner to allow claims and issue patent

Patent Requirements:

Idea must be:   Patentable subject

matter (35 USC § 101);

  Novel (35 USC § 102); and

  Non-obvious (35 USC § 103)

No Patent For You ….

  if before your Invention Date:

  Your invention was already known or used in the United States

  Your invention was patented or described in a printed publication anywhere in the world

No Patent For You …

  if more than one year before your Application Filing Date:

  Your invention was in public use or on sale in the United States

  Your invention was patented or described in a printed publication anywhere in the world

What to watch out for...

Events that may start the clock running:   published papers   presentations   federal grant

awards   purchase orders   price quotes

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But…

  The Leahy-Smith America Invents Act ("Patent Reform Act of 2011 was signed into law by President Obama on Sept. 16, 2011

  The new law changes 35 U.S.C. 102 (novelty) requirements

  Essentially, it provides a transition from a "first to invent" to a "first to file" system.

  New novelty requirements go into effect in March 2013

Careers in Patent Law   Patent Agents:

  Technical education requirement (e.g., Engineering, Chemistry, Biology, Physics, etc.)

  Must pass the patent bar examination

  Patent Lawyers:   Patent agent requirements   Must also have a law degree   Must pass a state bar examination

  Patent Examiners:

  Technical education requirement   Review patent applications to determine if patentable   If you work as an Examiner long enough, the USPTO will issue you a

registration number (get’s you out of taking the patent bar examination)   Plans for Regional Patent Office to open in Detroit

  Patent Bar Examination:

  Tests knowledge of patent examining procedures   Online examination at designated test sites   approximately a 30-45% pass rate

What do Patent Agents and Attorneys do?

Patent Agents prepare and prosecute patent applications

Patent Attorneys wear many hats

Work with interesting cutting edge technologies

  Mechanical   Structures   Controls   Thermodynamics   Heat Transfer   Dynamics

  Electrical   Computer   Chemical   Biotechnology   Design

Patentability and Infringement Investigations

  Working with the inventors to understand the invention

  Searching (prior art) to determine what has been done previously and monitor competitor patents

  Defining the invention over known prior designs

  Recommending design changes to avoid infringement of others’ patents

Preparing Patent Applications

  Writing a detailed description of the invention using statutory guidelines

  Preparing claims for the invention taking into consideration case law and statutory requirements

  Preparing drawings illustrating the claimed invention

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Prosecuting Patent Applications   Requires knowledge

of the statutes, rules and procedures of patent practice

  Negotiation with examiners

  In depth understanding of technical details and the prior art

Intellectual Property Litigation

  Asserting a client’s patent rights against an infringer

  Defending a client against infringement claims

Licensing Negotiations

  Negotiations can involve millions of dollars and can be highly complex

  Breadth of knowledge

  legal (IP, contract)   business practices   industry details

COPYRIGHTS

Protects original works of authorship

Expressions, not ideas

Copyrights-Literature Copyrights - Music

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Copyrights- Movies Copyrights- Art

Trademarks

  Used to designate the

source of goods or services

  Primarily product/service names and slogans

  Registration lasts as long as Mark is used

Trademarks -Services

Quiz

  What is oldest Trademark Registered in United Kingdom (1876)?

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Trademarks- Logos Trademarks- Sparty

Questions Thank you!