June 9, 2011
Grant County Inventors and
Entrepreneurs Club

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What is it?
 Intellectual Property describes various intangible assets that provide valuable competitive advantages for owners of the assets.
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Intellectual Property Includes:
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Trademarks (® or TM)
Trade Secrets (Confidential)
Copyrights (© Murphy Desmond 2008 All Rights Reserved )
Patents (from Patent Pending to U.S. Pat. No. 5,197,891)

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In 2000, intangible assets accounted for 70% of US corporate value, of which 40% was not recognized on the books as assets. That year, IBM made $1.7 Billion solely from Patent Licensing.
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World Intellectual Property Organization Publication No. 888.1

 Information that is:
 Kept secret
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Not generally known to the industry
 Treated as and kept secret
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Only disclosed to those legally obligated to keep secret
 Has economic value because it is secret
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Provides economic value or advantage over competition
 Protects the time and money invested in obtaining information

 Perpetual protection as long as secret
 May be lost
 Independent discovery including reverse engineering
 Unrestricted Disclosure

 Control access to information
 Controls use of information
 Controls disclosure of information
 May sue for misappropriation

 Improper or unauthorized use or disclosure of information
 Does not mean any disclosure, only improper

 Technically, a trademark is:
 A word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.

 Commonly though of as brand names
 Advertising
 Product identification
 Service identification
 Domain names
 Anything that a potential customer can use to pick out your product amid the sea of choices

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 Dial soap, Pepsi, Gymfinity
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Have it your way, Maybe she’s born with it
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NBC chimes, “Hello and welcome to Moviefone”
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 Owens Corning Pink, UPS Brown

 Indicates source or origin of good or service
 Provides association of quality level for good or service
 With proper branding creates and maintains demand for good or service of owner
 Provides stream of revenue when licensed to others

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You are using it, but nothing filed
No evaluation, no presumptions
Common law TM
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You filed with the State in which it is being used
No evaluation, no presumptions
State TM
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You filed with the United States Patent and Trademark
Office (USPTO)
Evaluated, presumptions of ownership and validity
Federal ®

 First come, first serve for right to use
 First to use mark, gets priority
 Tangible goods
 Mark used directly on goods or packaging
 Services
 Mark used on brochures or ads promoting service

 Makes enforcement easier
 Gives favorable presumptions
 May sue in federal court
 May obtain attorneys fees, treble damages, and destruction of infringing goods
 Must be used in commerce
 On goods or promotions of services
 Sold or transferred in commerce

 Infringement
 Must show that mark is:
 Same or similar to trademark
 Used in connection with sale or advertisement of goods or services
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Used in a way likely to be confusingly similar

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Creative expression of ideas or facts
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Independently created
Possesses minimal degree of creativity
Perceived, reproduced, and communicated
Not just thoughts, ideas, facts or data

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In order to get full benefits of protection
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Give Notice
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© symbol or “Copyright”
Year of first publication
Name of owner
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Register with Copyright Office

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File registration with Copyright Office
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Required to file suit
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Helps prove ownership
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Allows recovery of certain damages and attorney’s fees
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Gives protection for life of author plus 70 years or 120 years from date of creation

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Rights of Owners
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Reproduction: Make copies of
Adaptation: Prepare derivative works
Distribution: Distribute copies
Public performance
Public display
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Once a copy is distributed, the copyright owner no longer has control over that copy

 A patent is a contract between an inventor and the
Federal Government
 The inventor tells the world about an invention that is:
 useful,
 new and
 not obvious
 A limited time to prevent unauthorized making, using, selling, importing or offering for sale of the invention.
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 A patent is NOT a license to do anything
 Having a patent will not keep other factors from blocking your ability to commercialize the invention (FDA approval, someone else’s patent)
 A patent is not needed to commercialize the invention
 A patent application is not a patent and is not a fillin-the-blank form.
 Years will pass before an application becomes a patent ... if ever.
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 Provisional (A Date)
 Utility (Useful, working ...)
 Design (Appearance not Function)
 Plant (Asexual Plant, not Tuber)
 PCT (International Rights)
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 Utility patent
 a process
 machine
 manufacture
 composition of matter
 any useful improvement thereof
 Design patent
 an ornamental design
 Plant patent
 certain asexually reproduced plants
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Erin R. Ogden eogden@murphydesmond.com
268-5595