Outline of Intellectual Property Concepts
Southern Illinois University – Edwardsville Intellectual Property Workshop
April 8, 2013
I.
How do I best protect my invention?
A.
Is my invention potentially suitable for utility patent protection?
1.
B.
C.
2840330.1
Would a patent be in line with my business goals and would the
potential claim coverage provide my business with an advantage
over the competition?
a.
Product claims – valuable for protecting a product as a
whole or inventive portions of a product
b.
Method claims – valuable for protecting methods of
manufacturing a product or methods of using a product
c.
Composition claims – valuable for protecting materials that
make up a product, including new combinations of materials
that provide advantages over the prior art
2.
Presentation of our mock invention – “Face-Warming Eyeglasses”
3.
Discussion of potential points of novelty – in the attached
worksheet, please indicate what you feel to be the potential points
of novelty in the space provided
3.
Analysis of mock invention and prior art - in the attached
worksheet, please indicate what you think the prior art teaches
Would my invention be better protected by trade secret protection?
1.
Is my invention amenable to reverse engineering by a third party?
2.
Can I use trade secret protection as a backup or supplement to
patent protection?
3.
Is our mock invention suitable for reverse engineering?
Is my invention potentially suitable for design patent protection?
1.
Difference in utility patents v. design patents
2.
Are there any non-utility, ornamental aspects of my invention that
are novel that may be worth protecting?
3.
D.
Are any aspects of my invention and related materials suitable for
copyright protection?
1.
E.
II.
Are there any aspects of our mock invention that are amenable to
design patent protection? – in the attached worksheet, please
indicate what you believe to be potential aspects of our invention
that may be aspects protectable by design patents
Copyright registrations afford owners protections over original
works of expression fixed in a tangible medium, which can include:
a.
Instruction manuals
b.
Marketing materials
c.
Pictures
d.
Catalogues
e.
Source code
2.
Does my invention include any software that may be protected by a
copyright registration?
3.
Will my invention be sent to retailers or customers with a set of
instructions? If so, the instructions (and any other related
materials) can be copyright protected.
4.
What materials related to our invention may be copyrightable? in
the attached worksheet, please indicate some aspects that you
believe may be protected by one or more copyright registration
What aspects of my invention should be protected by one or more
trademarks?
1.
Name of product
2.
Marketing slogan
3.
Design of product
4.
Trademark searching
How do I develop a brand strategy to protect my product?
A.
Choosing the best trademark
1.
The trademark spectrum – Generic v. Descriptive v. Fanciful v.
Arbitrary marks – weakest to strongest protection
2
2840330.1
III.
IV.
2.
Selecting the best product name / trademark for our mock
inventions
3.
Example marks:
a.
“Heated Glasses”
b.
“Warm Face”
c.
“Ari Specs”
d.
“Apple Eyes”
e.
“HeGa Frames” (“HeGa” being truncated version of “Heated
Glasses”)
4.
How strong are the proposed marks?
5.
Creating a marketing slogan and potentially useful product design
for our invention - in the attached worksheet, please indicate some
potential slogans / taglines and product designs that could be
potentially useful as trademarks for our invention
6.
Word marks v. word and design marks v. design marks
Ownership
1.
Will I own this invention or will I assign it to my company?
2.
If I had help in developing my invention, should those individuals be
named as inventors?
3.
Does my employer have any rights to this invention (if applicable)?
Questions
3
2840330.1