TAKE YOUR
TECHNOLOGY
TO THE
LIMIT!
2014 Technology Entrepreneurship Boot
Camp – Intellectual Property
Sponsored by Jackson Walker
UTSA Colleges of
Business and Engineering
October 5, 2013
William R. Borchers
• Partner: Intellectual Property
The University of Texas at Austin
B.S. in Aerospace Engineering
University of Virginia
Juris Doctorate
Objectives
• Define the term “intellectual property” and
describe its importance
• Understand and distinguish the major forms of
intellectual property protection
• Develop an understanding of how to determine
whether a particular piece of intellectual property
is worth the time and expense of protecting
What is Intellectual
Property ?
• Intellectual property is created by the mind
–
–
–
–
–
Inventions
Accumulations of pertinent data
Writings
Compositions
Drawings
• Four major forms of intellectual property protection
–
–
–
–
Patents
Trade Secrets
Trademarks
Copyrights
Why should you protect
your IP ?
• Protect your innovations/proprietary data from
competitors
• Investors will want an IP protection plan
• Protect and build your good name
• Add value to company if ever want to sell
• IP assets can evaporate if they are not protected
• Cost of IP protection is small compared to potential value
Soft Assets
ASSETS
• Employee, Customer
and Supplier
Goodwill
• Common Law
Trademark and Trade
Secret protection
Hard Assets
• Building, Equipment,
Inventory
Extra Assets
• Registered - Trademarks,
Trade Dress, Copyrights
• Patents – Utility, Design,
Plant
• IP assignments and
noncompetes - employees
and contractors
• Formal Trade Secret
Protection
• Form contracts - suppliers
and customers
ASSETS
Common Mistakes With
IP
Not properly identifying
all of the
intellectual property
Not fully recognizing
the value of the
intellectual property
Not legally protecting
the intellectual property
that needs protecting
Not using the
intellectual property as
part of the overall
plan for success
Types of Intellectual
Property Protection
• Patents -- gives right to exclude others from
making, using, selling, or importing the invention
• Trade Secrets/Know How – protects ideas/data
if kept secret
• Trademarks/Service Marks -- identifies a
unique source of goods or services
• Copyrights -- protects from copying of original
works (music, books, drawings, software, databases)
PATENTS
Patents
• Definition: A patent is a grant from the U.S. government
allowing its owner to exclude others from making, using,
offering to sell, selling, or importing his invention
• No right to practice
• There are three types of patents:
– Utility patents - protect useful inventions
– Design patents - protect ornamental designs
– Plant patents – protect asexual plant varieties
• Utility patents are the most common
What’s Patentable?
• Any new and useful
–
–
–
–
Process
Machine
Article of manufacture
Composition of matter
• Improvements on existing things
• Other areas (in flux)
– Software
– Methods of doing business
Three Basic Requirements
For Utility Patents
How long do
patents last ?
• Generally 20 years from earliest U.S. filing date
– Can be extended for delays in USPTO and FDA
– 15 year for designs
• Outside of U.S. – generally 20 years from
earliest filing data
• Maintenance fees must be paid to keep patents
in force
When can you
patent ?
• When it is clear the invention will work
• Conception
– When inventor has completely performed the mental part of
the invention ― every feature claimed in the patent
application
• Reduction to Practice
– Invention built and sufficiently tested to demonstrate that it
will work for its intended purpose
• Reduction to practice not necessary if it is clear from
drawings and description that the invention will work
When should you
apply for a patent ?
• US underwent major transformation in March 2013
with the America Invents Act (AIA)
• US is now a first-to-file country
• Expands the amount of prior art that can prevent
patenting
– You will now be beaten by someone who
invents later but files before you
• File as early as possible
Absolute Last Dates
to Apply for Patents
• For U.S. patent: application will be barred if not
filed within one year of the first:
– Public use
– Public disclosure (e.g., printed publication)
– Sale/Offer for sale
• For foreign patents: application will be barred if
not filed somewhere before any public disclosure
of the invention anywhere
• Best policy: File prior to any public disclosure
Provisional Patent
Applications
• Viewed as inexpensive and quick way to get
an invention on file
• Can follow up with regular application
within 12 months and maintain priority date
• Expect to see a rise in use with AIA
• Can be a trap because they must enable the
invention to be of effect
Foreign Patents
• Patents are issued on a country-by-country basis
– A U.S. patent will not stop someone in another
country from exploiting the invention
• No “international patent”
– Patent Cooperation Treaty (PCT) only provides
additional time to make decision regarding which
countries to file in
• In general, pursuing foreign patents is quite
expensive, so do so with a clear purpose
Who owns a
patent ?
• Inventor owns patent unless otherwise agreed
• Shop Right
– Company may get if the inventor used company
resources in creating the invention
– Only right to use, not ownership
• Companies should put assignment provisions in
employee agreements
Should you pursue a
patent/product ?
•
Can I get a patent ? (Prior art search)
– Compares your idea against what has been already been disclosed
– Searches can be performed relatively cheaply and quickly
– Provides some comfort that a patent is obtainable
•
Can I practice my invention ? (Freedom to Operate search)
– Compares your proposed product against other patents’ claims
– More comprehensive and time consuming
– Provides comfort that you will not infringe anybody else’s patent
•
Will my patent exclude others from competing designs ?
A Patent May Have Huge
or Little Commercial Value
My Invention
B. Handle
A. Cup
C. Metal
Disc
D. Magnet
PATENTABILITY ANALYSIS
Invention
ABCD
--A
--AB
Patentability
Operation
Novelty
subtraction
Prior art
combinations are not
patentable (§ 102)
Leaves
Combinations novel
to your invention
ABC
ABCD
Your
Description
--ABC
Obviousness
subtraction
ABCD
Leaves
Combinations
obvious “to a person
having ordinary skill
in the art” are not
patentable (§ 103)
Combination that
might be patentable
INFRINGEMENT ANALYSIS
Patent
Claim
1
2
3
Claim’s
Elements
A
AB
ABC
Accused
Devices
Patent
Infringement
A
Yes
AB
Yes
ABC
A
Yes
AB
Yes
ABC
Yes
A
No
AB
No
ABC
Yes
Claim
Value
High value
No
Moderate
value
Low value
ABC … XYZ
ABC … XY
ABC … XYZ
Invention
Prior Art
Patentable
Combination
Everything new is patentable
(almost) – if you add enough
elements to the claim
SCOPE OF CLAIM 1 WITH ELEMENT A
Infringements
A
Boundary
High Value
SCOPE OF CLAIM 2 WITH
ELEMENTS A AND B
A
B
Infringements
A+B
Boundary
Moderate Value
SCOPE OF CLAIM 3 WITH
ELEMENTS A, B AND C
A
B
Infringements
A+B+C
Boundary
Low Value
C
SCOPE OF A CLAIM WITH ELEMENTS A, B, C . . . Z
A
B
..ZZ
C
A+B+C+Z
Boundary
Easy to get / but tiny infringement value.
No competitors’ accused devices or methods
have all elements A,B,C . . . Z
PATENTABILITY VS.
INFRINGEMENT
1. Everything new is patentable
(almost) - if you add enough
elements to the claim.
2. But the more elements needed to
get a patent, the less its value
(maybe zero) - because fewer
accused devices and methods
infringe.
TRADE
SECRETS
Trade Secrets
• Definition: A trade secret consists of any information
not generally known to others that gives its owner a
competitive advantage and for which reasonable
steps are taken to maintain its secrecy
• Can be technical or commercial in nature
• Can be useful for data and processes
• Not typically good for products themselves
Patents vs. Trade
Secrets
• Pros:
– Patents protect against independent development and
reverse engineering
– Trade secrets can protect a broad range of information
and can last a long time (e.g., indefinite)
• Cons:
– Patents have a limited life (20 yrs), are more expensive
to obtain, and only protect certain things
– Trade secrets are harder to maintain and cannot
protect against independent development and reverse
engineering
Trade Secret Protection
Methods
• Physical Measures For Protecting Trade Secrets
– Restricting access to confidential material
• Only disclose to need-to-know employees
• Force employees and outsiders to execute
NDAs
– Labeling documents – e.g., proprietary
– Password protecting confidential computer files
– Maintaining log books for visitors
– Maintaining log books for sensitive material
• Maintaining adequate overall security measures
Enforcing Trade
Secrets
YOUR TRADE SECRETS ARE ONLY
PROTECTABLE IF THE JURY FINDS
THAT:
•
The items were relatively secret; and
•
The defendant knew the items were
secret (mark, mark, mark)
TRADEMARKS
Trademarks
• Definition: a trademark is
a word, name, symbol,
device or combination
thereof that identifies and
distinguishes one’s goods
and services from other’s
• Technically, a trademark is used to identify a
good or product and a service mark is used to
identify a service
Example
Name is trademarked
Symbol is trademarked
Slogan is trademarked
What is Protectable?
Words
Fragrances
Numbers and letters
Shapes
Designs or logos
Colors
Sounds
Trade dress
TYPES OF MARKS
• Generic – Unprotectable
(soda for a beverage or TV for a television)
• Descriptive - May be protectable
(such as “Tax Preparation Software” for a software program that
enables users to prepare tax returns)
• Suggestive – Protectable
(such as Greyhound for bus services and Jaguar for
automobiles, with both marks suggesting the speed of their
products; 7-ELEVEN for convenience stores)
• Arbitratory or Fanciful - Very protectable
(such as Kodak, Starbucks, Verizon, Exxon)
Exclusions from
Trademark Protection
• Immoral or scandalous matter
• Deceptive matter
– For example, a food company couldn’t
register the name “Fresh Florida Oranges”
if the oranges weren’t from Florida.
• Surnames
– A trademark consisting primarily of a
surname, such as Anderson or Smith, is
typically not protectable.
The Process of Obtaining
a Trademark
Establishing
Trademark Rights
• Trademarks rights naturally arise through use of a mark
– Simple use of a mark grants rights in the mark against
later uses on similar products in the area of use
– Federal registration, although not required, protects the
mark nationwide against later confusingly similar uses
• Trademarks can be reserved before use if there is a good
faith intent to use
• Trademark rights can last as long as a mark is used
COPYRIGHTS
Copyrights
• Definition: Copyright protects original works of
authorship from being reproduced
• Applies to a wide variety of works, including literary,
musical, dramatic, graphic, sculptural and
architectural works, motion pictures, and sound
recordings
• Not just critically acclaimed works
• Extends to advertising brochures, computer
programs, and databases
What is Protected By a
Copyright?
Literary works
Musical compositions
Computer software
Dramatic works
Pantomimes and
choreographic works
Pictorial, graphic, and
sculptural works
Does not extend to ideas, procedures, processes,
systems, concepts or mere slogans, titles or blank forms
Copyright
Protection
• How copyrights arise:
– Copyright protection exists from the moment a
work is created
– No registration is required (but helps enforce)
• Copyrights last for a long time
– Author’s life plus 70 years
– In the case of works created by employees for
their employers, the shorter of 95 years from
publication or 120 years from creation
Enhancing Copyright
Protection
• The following steps can be taken, however, to
enhance copyright protection
• Copyright protection can be enhanced by
attaching the copyright notice, or “copyright
bug”
to something
• Registering the work with the U.S. Copyright Office
– Statutory damages
– Attorney’s fees
– Cheap and easy
Jackson Walker L.L.P.
www.jw.com
Austin  Dallas  Fort Worth  Houston  San Angelo  San Antonio
PATENTS – Evaluate and file early to protect
TRADE SECRETS – Identify and create good
facts
TRADEMARKS – Use and register
COPYRIGHTS – Register
wborchers@jw.com 210.978.7700