Basics of Intellectual Property

Jim Stefansic, PhD MBADirector of Commercialization

(some slides courtesy of Baker Donelson)

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Types of Intellectual Property

• (Trade Secrets)• Copyrights• Trademarks• Patents

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Trade secrets

Information that… • is secret • has economic value • is not readily ascertainable by proper means • is subject to reasonable efforts to protect

Trade Secrets have…• no filings • no expiration date • have to control access • risk of independent discovery

(reverse engineering)

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Copyrights

What is a copyright? A bundle of rights protecting an original work of authorship fixed in any tangible medium of expression

U.S. Constitution, Art. 1, Sec. 8, Cl. 8 17 U.S.C. § 101 et seq.

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What is copyrightable?

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What is NOT copyrightable?

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Copyrighting software

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Protecting a copyright

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Protecting a copyright

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Copyrights & works for hire

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Trademarks

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Different levels of trademarking

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Different levels of trademarking

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Different levels of trademarking

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Different levels of trademarking

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Different levels of trademarking

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Different levels of trademarking

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How does one get a trademark?

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“Pull My Finger Fred”

Copyright / trademark infringement

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What is a patent?

• Set of exclusive rights granted to an inventor for a fixed period of time in exchange for the regulated, public disclosure of the invention

U.S. Const. Article I, Section 8, Cl. 835 U.S.C. § 1 et seq.

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Types of patents & infringement

All patents include the right to exclude others from practicing an invention

Types of patents Utility patent: a thing or process (“method of...”) Plant patent: a new variety of plant (not found in nature) Design patent: an ornamental (non-functional) design

Commercial use defense in cases of innocent infringement. Protects companies from infringement claims if they innocently use an infringing

process, or make and sell an infringing product that is used in a commercial process, without knowledge of the claimed patent.

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More on commercial use defense

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How long do patents last?

• Utility and plant patents are granted for a term which begins with the date of the grant and usually ends 20 years from the date you first applied for the patent

• Design patents last 14 years from the date you are granted the patent.

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• Right to exclude others from making, using, selling, offering to sell the invention within the US, or importing into the US • Does not give inventor the right to make, use, sell, or offer to sell

Rights of patent holder

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Patent ownership

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Types of utility patents

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Patent subject matter

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Limitations of patent subject matter

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What must a patent demonstrate?

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Patent timing issues & filing

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Public use or disclosure

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Provisional patent

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Patent filing stages

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Patent history timeline

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Parts of a patent

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Provisional claims

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Patent reform: first to file

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Patent strategy

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Patent strategy

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They patented that!?

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They patented that!?

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They patented that!?

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They patented that!?

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They patented that!?

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They patented that!?