Intellectual Property
(IP) and Designs
Joe Barich
Adjunct Professor of Law
Shareholder - McAndrews, Held & Malloy
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What is a Intellectual Property (IP)?
– Copyrights, Trademarks, Utility Patents,
Design Patents and Provisional Patent
Applications
Comparison of IP Rights
• Design Patents In More Detail
• The Patent Clinic
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What is IP?
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“Intellectual Property” is a generic category for
several rights created by statute including:
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Copyrights
Trademarks
Utility Patents
Design Patents
Note: there are a number of other IP rights
– Trade Dress
– Trade Secret
– Maskworks, etc.
What is IP?
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Typically a right to exclude or prevent someone from
doing something.
Typically involves government registration
Typically a civil right – you go to court to enforce
Each of the IP rights directed to something different
– Copyright – how it looks or sounds (expression)
– Trademarks – who sold it
– Utility Patent – how it works (functionality)
– Design Patent – ornamental appearance of
industrial article
What Is A Copyright?
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Exclusive right to a work of expression, such as a
written story, a painting, or a song.
The subject of the copyright must NOT be
functional – if functional, look to utility patents
Lasts for a LONG time – life +70 or 95 years is
common
Copyrights provide exclusive rights with regard to
appearance or expression, but may be curtailed in
certain situations such as fair use or parody, for
example.
How Do I Get A Copyright?
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Copyright “subsumes” in the work at the moment
of the work’s creation – you make it, you have a
copyright.
Must register your copyright with copyright office
to sue
If unregistered at time of infringement, you must
prove damages
If registered, then higher statutory damages
– RIAA - $0.23/song vs. $5000 per song
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Mark your work to provide notice
– © 2010 Joe Barich OR Copyright Joe Barich, 2010
What Is A Trademark?
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A mark that identifies the origin of goods or
services in trade
Protect consumer from counterfeit products
Can last forever – as long as you use it
Standard for infringement is “consumer
confusion”– if a consumer would think that
goods from a second company actually originated
from the company owning the trademark, then
there may be infringement.
Same mark may be used in different fields
without confusion
How Do I Get A Trademark?
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Start selling goods with a mark on them.
Common Law Trademark Rights – arise when
you sell your first products
– limited geographic scope
– must prove damages
– may not be able to expand
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Use of “PizzaTM” – provides notice that you are
claiming Pizza as a trademark, but you may not
be legally entitled to it. No examination – sue.
How Do I Get A ® Trademark?
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Register your trademark with the Patent and
Trademark Office (PTO)
– Mark is examined
– Mark is published for opposition
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Federally Registered Trademark ®
– Geographic scope of the entire US
– Statutory Damages
– May become incontestable
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Mark your product to provide notice
– Only registered products can use ®
What is a Patent? (Utility & Design)
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Legal right to exclude others from practicing your
invention
– Not a right to use or make
– Not a right to sell
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Does not guarantee that you are not infringing
other patents
A sword, not a shield - does not “protect”, except
as deterrent
In the Constitution itself – Art 1, Sec. 8, Clause 8
www.USPTO.gov
What Is A Utility Patent?
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Functionality - How something works. Not
expression – see Copyright
Lasts for 20 years from its date of priority
(typically its date of filing).
But! takes 3-5 years to issue as a patent right
thus providing an enforceable term of
approximately 15-17 years.
How Do I Get A Utility Patent?
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Draft patent application and submit to PTO
– Patent application is a long technical document
– Best to seek legal assistance
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Patent application includes:
– Specification describing the invention
– Claims – what you can exclude others from doing.
– Claims are the only legal right you can use to sue
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PTO rejects your claims and you negotiate, argue,
and amend
How Do I Get A Utility Patent?
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To get a patent, claims must recite: 1) statutory
subject matter that is 2) novel and 3) nonobvious.
– Statutory subject matter - fit within the statutory
classes of patentable subject matter.
– Novel - no one single piece of prior art teaches all
of the limitations in your claim.
– Non-obvious - seven PTO tests based on prior art.
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Note: Claims may be narrower than you suspectmay be possible to “design around”
What Is A Design Patent?
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Ornamental Appearance of an Industrial Article
– Not functionality like Utility Patent
Lasts for 14 years from its date of issuance
Design Patents differ from copyrights
– Different standard for grant and a different
infringement standard from copyrights
– Must be novel and non-obvious
– Presumption of validity
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In a nutshell, design patents have a shorter term,
but are a “tougher” IP right than copyrights
How Do I Get A Design Patent?
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Draft patent application and submit to PTO
– Mostly formal drawings from all angles
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About 75% of design patents are issued without
rejection
Average time to issuance is about 15 months.
Can still be a functional article, but Design Patent
coverage is directed to the ornamental aspects of
the functional article
What Is A Provisional App.?
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A Provisional Patent Application is a cheap,
informal filing at the PTO that can reserve a
priority date to allow you to file a utility
application up to a year later
Often a “kitchen-sink” filing with photos,
drawings, brochures, e-mails, short description
Only reserves date for what is actually disclosed
Can save priority date for later foreign filing
Often used to “shop invention around” for year
How Do I Get A Provisional?
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Gather all disclosure
– Make sure you gather or create disclosure of
everything that you want to reserve
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File disclosure with cover sheet at PTO
Not Examined by PTO – just sits in a room for a
year
Reserves date for Utility Patent only – not Design
Patent
Patent Terminology Note
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Filing =“Patent Pending”
Someone who has filed a patent application with
the PTO is said to be “prosecuting a patent” and
the process is often called “patent prosecution.”
No rights to enforce patent until issuance
“Patent Pending” has even less of a right than
“TM”
Warning! - BAR DATES!
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U.S. has One Year Grace Period from date of first
disclosure/commercialization – file or lose it
Foreign = No Grace Period – disclose/commercialize
before filing and you blew it
Foreign rights can be preserved by filing an
application in the U.S. before disclosure and then
later filing foreign app claiming priority to U.S. app
Disclosures in confidence (to attorney, under
agreement of confidentiality), without
commercialization, are typically OK
Computer Software
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May be able to obtain both copyright and patent
for computer software
Software written on paper is considered a nonfunctional literary work, therefore copyrightable
Software executing on a computer is considered
functional. If it is statutory subject matter, novel
and non-obvious, it may be patentable.
IP Right Comparison
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Copyright – rights at creation, registration
increases rights
Trademark – rights at first use, registration
increases rights
Utility Patent – no rights at creation. Patent
rights must be applied for at the Patent and
Trademark Office (PTO) and issued by PTO.
Design Patent – same as Utility Patent
Provisional Patent Application – no rights, but
works as a placeholder for later Utility Patent
More On Design Patents - 1
First design patent issued in 1842 for a font
• Copyright did not cover industrial articles at
the time, therefore new form of IP was
desired
• As of Nov 2, 2010 •
– 625,000 issued US design patents
– 7,825,000 issued US utility patents
More On Design Patents - 2
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“Ornamental Appearance”
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Shape
Surface Ornamentation
Color
Combination of all three
Does the patented design include design choices
or is the appearance dictated solely by function?
(Rosco, Inc. V. Mirror Lite Co., 304 F.3d 1373,
1378 (Fed. Cir. 2002)
DP Infringement – Ordinary Observer
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Egyptian Goddess, Inc. v. Swisa, Inc. (2008)
“There is infringement if, in the eye of the
ordinary observer, the accused design is closer to
the patented design than it is to the prior art.”
Thus, if someone would confuse your product for
the patented product, you are in trouble.
Result – Increased the scope and enforceability
of design patents
Only solid (not dotted) lines are part of claim
Can Still Be A Functional Article
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D440,149
“Nut”
Only needs
some
ornamental
appearance
As long as
appearance is
not dictated by
function or
there is a choice
DPs Are Widely Sought
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US D599,372
Google Home
Page Design
Issued
Sep 1, 2009
What is the Patent Clinic?
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Have a great invention? Want a patent?
TEC/College of Law Joint Effort
Draft a Utility patent application for
selected Cozad/Lemelson participants
for free (typical cost 10K-12K)
Participants file themselves (we show
how) and pay their own PTO fee
Who Writes The Patent Applications?
Law students in their 3L (final) year
• Have taken Patent Law and Patent
Prosecution and earned a B+ or better (tough
professor – Me!)
• Most have law firm experience
• Will be expected to draft patent applications
professionally in the fall, typically without
additional instruction
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Who will be supervising the law students?
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Joe Barich
Adjunct Professor, CoL, 6th year teaching
About 12 years experience at a large patent
specialty law firm, now a Shareholder
Involved in the prosecution of more than 800
utility patents in the US and abroad
2008, 2009, 2010 Illinois Rising Star on the
Super Lawyers list
How Does the Patent Clinic Work?
Patent Clinic works with inventor to draft
their utility patent application
• Inventor must be available and help out
• Patent Clinic Drafts patent application
• Inventor gets rights clearance from OTM and
files patent application
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Thanks!
Questions?