Intellectual
Property
Patents, Trademarks and
Copyrights
1
Types of Property
 Real

Land
 Personal

Cars, jewelry, clothing
 Easements

Non-corporal interest in real property
• Railroads, utilities
 Intellectual

Patents, copyrights and trademarks
2
Patents

Grant of a property right to the inventor
 Issued by the Patent and Trademark
Office
 Term of a new patent is 20 years from the
date on which the application for the patent
was filed in the United States
 US patent grants are effective only within
the US, US territories, and US possessions.
3
Patents
 The
right to exclude others from making,
using, offering for sale, or selling” the
invention in the United States or
“importing” the invention into the United
States
 Not the right to make, use, offer for sale,
sell or import, but the right to exclude
others from making, using, offering for
sale, selling or importing the invention
4
5
Patent Laws
 Constitution
of the United States gives
Congress the power to enact laws
relating to patents, in Article I, section 8,
which reads
“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"
6
Patent Laws
 Specifies
the subject matter for which a
patent may be obtained and the conditions
for patentability
 Establishes the Patent and Trademark
Office (PTO) to administer the law relating
to the granting of patents, and contains
various other provisions relating to
patents.
7
Patentability
(What may be patented?)
 Statute
says, "any person who
invents any new and useful
process, machine, manufacture,
or composition of matter, or any
new and useful improvement
thereof"
8
Patentability

Process:


Machine:


Self explanatory
Manufacture:


Process, act or method, and primarily includes
industrial or technical processes
Articles which are made, including all manufactured
articles
Composition of Matter

chemical compositions and may include mixtures of
ingredients as well as new chemical compound
9
Conditions of Patentability
 Utility


subject matter has a useful purpose and
also includes operativeness
Invention must "work" to be useful
 Novelty


Must not be known or used by others in this
country
Or patented or described in a printed
publication in this or a foreign country
10
Conditions of Patentability
 Non-obviousness

The subject matter sought to be patented
must be sufficiently different from what
has been used or described before that it
may be said to be nonobvious to a
person having ordinary skill in the
area of technology related to the
invention
 Three
leg stool
11
Patent and Trademark Office
(PTO)
 Issue
patents on behalf of the Government
 Headed by Commissioner of Patents and
Trademarks
 Part of Department of Commerce
 Administers the patent laws as they relate
to the granting of patents for inventions
 Examines applications for patents
12
PTO

Publishes issued patents and various
publications concerning patents
 Similar functions are performed with respect to
the registration of trademarks
 No jurisdiction over questions of infringement
and the enforcement of patents
 Divided among a number of examining groups,
each group having jurisdiction over certain
assigned fields of technology
13
Patent Application
 Application
= written document which
comprises a specification (description
and claims), and an oath or declaration
 Drawing or reduction to practice
 Filing fee
 Filing date of an application for patent
determines priority (first to file wins!!)
14
Provisional Patent
Application
 Designed
to provide a lower cost first
patent filing in the United States
 Establish an early effective filing date
in a patent application
 Permits the term “Patent Pending”
 Applicant would then have up to twelve
months to file a non-provisional
application for patent
15
Patentability
 Laws
of nature, physical phenomena
and abstract ideas are not patentable
subject matter
 Cannot obtained a patent for a mere
idea or suggestion
 Reduction to Practice of the actual
machine or other subject matter for
which a patent is sought is required
16
Design Patents

Any new and nonobvious ornamental design
for an article of manufacture
 Protects only the appearance of an article, not
its structural or functional features
 Design patent has a term of 14 years from
grant
 Proceedings relating to granting of design
patents are the same as other patents
17
Plant Patents

Any newly discovered and asexually
reproduced, distinct and new variety of
plant, including cultivated sports, mutants,
hybrids, and newly found seedlings, other
than a tuber-propagated plant or a plant
found in an uncultivated state
 same parts as other applications with the
addition of a plant color coding sheet
18
Patent Infringement

Unauthorized making, using, offering for sale
or selling any patented invention within the
United States
 Patentee may sue for relief in the appropriate
Federal court where remedies include:



injunction to prevent the continuation of the
infringement
Money damages because of the infringement
Appeal to the Court of Appeals for the Federal
Circuit, then US Supreme Court (writ of
certiorari)
19
Trademarks / Servicemarks
 Word,
name, symbol or device which is
used in trade with goods to indicate the
source of the goods and to distinguish
them from the goods of others
 Servicemark is the same as a trademark
except that it identifies and distinguishes
the source of a service rather than a
product
20
Trademarks
 Used
to prevent others from using a
confusingly similar mark
 Not to prevent others from making the
same goods or from selling the same
goods or services under a clearly
different mark
 May be registered with the Patent and
Trademark Office
21
Trademark Registration
 Trademark


rights established by:
First to use the "mark"
First to file application with PTO
 Federal
registration not required but has
advantages

Registered owner can use mark nationwide
 Registration

granted for 10 years
renewable for another 10
22
Trademark Registration
 PTO
is responsible for the federal
registration of trademarks
 PTO assigns it a serial number and
sends the applicant a receipt about two
months after filing
 Examining attorney at the PTO reviews
the application and determines whether
the mark may be registered
23
Trademark Registration
 Examining
attorney will approve the
mark for publication in the Official
Gazette
 PTO sends Notice of Publication to
the applicant
 Opportunity for public opposition
 Certificate of Registration 12 weeks
after publication
24
"TM", "SM", "®"
 Use
of TM (trademark) or SM (service
mark) designation with the mark to
alert the public to the claim
 Prior registration with PTO not
required
 Registration symbol, ®, may only be
used when the mark is registered in
the PTO
25
Copyrights
 Protects
the form of expression rather
than the subject matter of the writing
 Copyrights are registered by the
Copyright Office of the Library of
Congress
 Duration is life + 70 years
 Title 17 U.S. Code
26
Copyrights
 Form
of protection provided to the
authors of “original works of
authorship"
 Including literary, dramatic, musical,
artistic, and certain other intellectual
works, both published and unpublished
 Gives author and authorized other
exclusive rights
27
Copyright Protection
Author and Agent have exclusive rights
to:
1.
2.
3.
4.
Reproduce the copyrighted work
Prepare derivative works
Distribute copies or phonorecords of
the copyrighted work,
Perform the copyrighted work publicly
1.
5.
Includes digital audio transmission (Napster)
Display the copyrighted work publicly
28
Scope of Copyright Protection
Literary works
 Musical works

Including lyrics




Dramatic works



Including music
Pantomines
 MP-3 Music (Napster)


Choreography
Motion pictures
Pictorial, graphic,
sculptoral works
Sound recordings
Architectural works
29
Scope of Copyright Protection
 Must
be "fixed in a tangible medium of
expression" to be protected.
 Not protected:




Unrecorded choreography
Slogans, short names, titles, familiar symbols
Ideas, procedures, methods, systems,
principles
Information that is "common property"
• Calendars, rulers, tape measures, public lists
30
Copyright Registration

Registration not require to secure copyright
 Since 1978 Copyright protection is obtained
automatically when the work is created,
fixed in tangible medium of expression and
published (distribution in public domain)
 Gives right to defend copyright
 Copyright registration has advantages
31
Copyright Registration

Legal formality intended to make a public
record of the basic facts of a particular copyright
 Not a condition of copyright protection
 Registration establishes a public record of the
copyright claim
 Required before an infringement suit may be
filed in court (Jurisdictional prerequisite)
32
Copyright Notice

Notice of Copyright



Symbol ©
Word "copyright"
Abbreviation "Copr."
 Example:
© 2000 John Doe
 Sound recording require symbol, year
first publication and name of owner
 Example: (P) 2001 A. B. C. Records Inc.
33