What is Intellectual What is Intellectual Property Law ?Property Law ?

“Intellectual property (IP) refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce.” –WIPO

“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…”

–US Constitution Article 1 Section 8

Why is it Important to Why is it Important to Protect your Intellectual Protect your Intellectual

Property ?Property ? Ability to protect core ideas

Limited term monopoly

Provides a protected competitive advantage

Opportunity to recoup costs on necessary R&D

Defend one’s ideas from infringement

Commercialize your invention successfully no more “Grant Proposals”!

Types of IPTypes of IP

Trade Secret “Secret Sauce”

Copyright “Artistic expression in the way something looks or

sounds”

Patent “Protects the embodiment or method of an idea”

Trademark “Branding”

DO NOT USE THESE TERMS INTERCHANGEABLY!

Trade SecretTrade Secret

Industrial and/or Commercial secrets

Confidentiality agreements and Legal recourse

May impact future employment opportunities

Classic examples: Coca Cola or KFC Spice Blend

Uniform Trade Secrets Act

Economic Espionage Act of 1996

CopyrightCopyright

A legal term of for the exclusive rights of a creator’s literary or artistic works

Protection duration is lifetime of Author plus 70 years

Types of works: books, film, music, software algorithms, plays, etc…

Tangibility of expression is key distinction between a copyright and a patent

Registration is not required but it helps

Fair Use Doctrine

Digital Millennium Copyright Act

TrademarkTrademark

A distinctive sign associated with goods or services Distinctiveness needs to be maintained (e.g.

Xerox)

Registration is not required but it helps

Duration is indefinite as long as it is in use and renewed every 10 years (First renewal must occur in between the 5th and 6th year time frame) (Find a better way of stating this point)

PatentPatent

Exclusive limited term monopoly for a novel, useful, unobvious, invention (20 Yrs from Date of Filing)

3 US types: Utility, Design, and Plant

Patents are examined for viability thus full disclosure is required

International Patent protection requires extensive planning

First to Invent to now become First Inventor to File (AIA)

Flow Diagram from the USPTO on the Process

First Inventor to FileFirst Inventor to File

US will be switching from First to Invent to a First Inventor to File System on 3/16/2013 Syncing with the rest of the world’s IP Filing

Systems

Grandfathered into the First to Invent Category til 3/16/2013

Prior Art & International Prior Art & International ProtectionProtection

People will forever keep on “reinventing the wheel”

Know your technology’s competitive landscape

Just because you have a patent does not mean your IP is protected

Make sure the claims match up with the actual product

US Patent is good only in the US

PCT Applications provide an opportunity to file your patent protection globally with other country’s IP offices

Hard to enforce adequate protection overseas without procuring Patents in foreign countries. Unless you are a MNC or buddies with the USTR Rep

Provisional and Non-Provisional and Non-Provisional ApplicationsProvisional Applications Provisional Application

Secures your spot in line as a filer 1 year to take your idea and RTP towards POC Cheap and effective

Non-Provisional Application Convert Provisional to a NP or file a NP on its own Actual Patent Application (Title,Abstract, Spec,

Claims, Drawings, etc…) Backlog of initial review is on avg between 2-3

years Patent Agent/Attorney represents your case to the

USPTO where a Patent Examiner makes a legal, science, and technical determination on your case

Typical Patent Typical Patent Application ProcessApplication Process

Provisional

Non-Provisional-Examiner Reviews Case

Non-Final Rejection

Claim Amendment by Filer

Allowance or Final Rejection

If Allowed-Done but if FR then an After-Final Typically Occurs

If AF-Rejected then RCE, Abandonment, or Appeal to BPAI

If case goes BPAI route can eventually go CAFC and then SCOTUS

Bayh-Dole ActBayh-Dole Act

Applicable to Universities, Small Businesses, and Non-Profits ONLY!

Designation and Ownership of IP rights becomes crucial during Bayh-Dole Implications (Major Points) Re-assigning of rights is generally prohibited Deferred IP assignment in lieu of License-free

arrangement for federally-sponsored research Report each disclosed invention to the funding

agency File for Patent Protection Must try to commercialize the invention Share royalties with inventor Use leftover funding for R&D and Education

How we protect against How we protect against copy-cat competitors?copy-cat competitors?

Trade Secrets For many companies the greatest value are unique un-definable

processes and system designs, not specific easily ascertainable aspects.

This type of competitive info is best kept confidential.

Do it best. Sounds trivial, but if the best user experience is provided,

including cost, to customers, it will be extremely difficult or intimidating for other companies to enter the market.

Capital intensiveness of the industry matters.

Know Your Options in Know Your Options in Legal FirmsLegal Firms

Technical Competency is crucial Patent Agent might be suffice for USPTO

purposes Patent Attorney makes more sense if litigation

is part of the formula

Lower Registration Number generally means more experienced practitioner General Exception to the rule: A former patent

examiner with 3+ years of experience

Handle the initial documentation and prep-work yourself Let the $500/hr attorney do the high level work

Refresher: Why you Refresher: Why you Should keep IP Rights Should keep IP Rights

in Mind?in Mind? Defense: Future: defense against Patent Trolls or competitors who may

come after you due to significant revenue creation Current: defense against competitors who want to slow the

process down

Education: Learn what’s been patented already & who’s competing

Revenue: Patents may enable us to increase revenue by licensing our

technology to others, without starting additional businesses

Valuation: Financial capital is required to build your business The above points add value & confidence in your business model

Thank YouThank You

Now switching topics for a second to make a brief announcement about the recently launched Patents for Humanity program!

OverviewOverview

For over two centuries, strong patents have provided business incentives that encourage technological progress to build our modern world. As we struggle against humanitarian issues plaguing many of the world's poor, patents play an essential role in creating lasting solutions.

The USPTO Patents for Humanity program creates business incentives for patent holders to engage in humanitarian issues. After consulting with industry, universities, and non-profits, the USPTO has developed this 12-month voluntary pilot program to recognize patent owners and licensees who apply their technology to pressing global challenges.

Program StructureProgram Structure

Awards competition

Applicants describe how they have used patented technology or products to address humanitarian needs

Up to 50 winners

CategoriesCategories

Applicants confront global challenges in:

Medical Technology

Food & Nutrition

Clean Technology

Information Technology

AwardsAwards

Certificate for expedited USPTO processing:

appeal to internal Board of Appeals (BPAI)

ex parte reexamination, including 1st appeal

examination of a patent application, including 1st appeal

USPTO plaque at an awards ceremony

Public recognition

Selection CriteriaSelection Criteria

Two sets of criteria: use and research

It’s about distribution (of benefits)

Focus on real-world results

(C) Anna Ridout/Oxfam 2011

Humanitarian UseHumanitarian Use

i. Subject Matter – patented tech. effectively addresses a recognized humanitarian issue;

ii. Target Population – the actions target an impoverished population; and

iii. Demonstrated Impact – the actions have significantly increased application of the technology to address the humanitarian issue

More infoMore info

Program info and materials: http://www.uspto.gov/patentsforhumanity

Apply or view submissions: http://patentsforhumanity.challenge.gov/

Complete program rules in the Federal Register Notice at USPTO website

Email patentsforhumanity@uspto.gov