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INTELLECTUALPROPERTY
LAW
Jason HeistStephanie Jones
Steven Wangerow
ME 481 PresentationMichigan State University
Feb. 28, 2011
WHO WE ARE
Jason Heist: BS Chem ’99, JD ’06
Stephanie Jones: BS BioChem ’00, JD ‘03
Steven Wangerow: BS Mech. Eng. ‘03, JD ’09
Harness Dickey: founded in 1921; exclusively IPlaw; 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 acontract betweenthe inventor and theUS government: you teach your idea preserved forever in
the US Patent Office government grants a
monopoly for alimited number ofyears
What rights does a patent give?
The right to excludeothers from: Making Using Selling Offering to sell Importing
Patent rights arenational: a U.S. Patent covers
the entire UnitedStates
What a patent does not do...
Owning a patentdoes not give youthe right tomake, use, sell,or import yourinvention.
Someone else’s patent claim mayread as follows:
A light bulb comprising:
a glass housing;
a filament member disposed insaid glass housing;
wherein said filament memberglows when provided withelectricity.
Your patent claim to animprovement may read as follows:
A light bulb comprising:
a glass housing;
a threaded base connected tosaid glass housing;
a filament member disposed insaid glass housing;
wherein said filament memberglows when provided withelectricity.
How you can get a patent
Prepare invention disclosure dated and witnessed
Search prior art Prepare application
after application is filed withU.S. Patent Office = patentpending
Prosecute application amend as required by Patent
Office persuade U.S. Patent
Examiner to allow claims andissue patent
Patent Requirements:
Idea must be: Patentable subject
matter (35 USC §101);
Novel (35 USC §102); and
Non-obvious (35 USC§ 103)
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Statutory time bars begin after twokey events:
(1) Your date of invention:conception + reduction topractice
(2) Your application filing date:patent application is filed inthe U.S. Patent Office
No Patent For You ….
if before your Invention Date:
Your invention was already known orused in the United States
Your invention was patented ordescribed in a printed publicationanywhere in the world
No Patent For You …
if more than one year before yourApplication Filing Date:
Your invention was in public use or onsale in the United States
Your invention was patented ordescribed in a printed publicationanywhere in the world
What to watch out for...
Events that maystart the clockrunning: published papers presentations federal grant
awards purchase orders price quotes
Careers in Patent Law Patent Agents:
Technical education requirement 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) Regional Patent Office opening in Detroit some time in 2011
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 andAttorneys do?
Patent Agentsprepare andprosecute patentapplications
Patent Attorneyswear many hats
Work with interesting cutting edgetechnologies
Mechanical Structures Controls Thermodynamics Heat Transfer Dynamics
Electrical Computer Chemical Biotechnology Design
Patentability and InfringementInvestigations
Working with the inventors tounderstand the invention
Searching (prior art) todetermine what has beendone previously and monitorcompetitor patents
Defining the invention overknown prior designs
Recommending designchanges to avoid infringementof others’ patents
Preparing Patent Applications
Writing a detaileddescription of theinvention usingstatutory guidelines
Preparing claims for theinvention taking intoconsideration case lawand statutoryrequirements
Preparing drawingsillustrating the claimedinvention
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Prosecuting Patent Applications Requires knowledge
of the statutes, rulesand procedures ofpatent practice
Negotiation withexaminers
In depthunderstanding oftechnical details andthe prior art
Intellectual Property Litigation
Asserting a client’spatent rights againstan infringer
Defending a clientagainst infringementclaims
Licensing Negotiations
Negotiations can involve millions ofdollars and can be highly complex
Breadth of knowledge legal (IP, contract) business practices industry details
COPYRIGHTS
Protects original works ofauthorship
Expressions, not ideas
Copyrights-Literature Copyrights - Music
Copyrights- Movies Copyrights- Art Trademarks
Used to designate thesource of goods orservices
Primarilyproduct/servicenames and slogans
Registration lasts aslong as Mark is used
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Trademarks -Services Quiz
What is oldest TrademarkRegistered in United Kingdom(1876)?
Trademarks- Logos Trademarks- Sparty Questions
Thank you!