GEARHART LAW
INTELLECTUAL PROPERTY
OVERVIEW
NATIONAL SOCIETY OF
INVENTORS
David Postolski
June 10, 2014
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WHAT IS INTELLECTUAL
PROPERTY?
U.S. Constitution- IP
“Congress has the 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”
Art. 1, Sec. 8, Cl. 8
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• Commerce Clause- Article I, Section 8
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Definition:
•
•
•
Intellectual property (IP) is any work or invention
that is the result of creativity and can be protected by
statute or legislation, the physical embodiment of
intellectual efforts
Includes inventions, discoveries, know-how,
show-how, processes, unique materials, original
data, and other creative or artistic works.
Property = The Right to Exclude
Purpose:
•
•
•
encourage innovation that benefits the public
allow the public to use the information
protect the rights of authors, inventors and businesses
Foundation:
•
•
Owners are granted certain exclusive rights to a variety of intangible assets
Promote Creative Solutions
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Ideas are not protectable
• IDEA is the first critical step, but without some identifiable
embodiment of the idea there can be no intellectual property
protection obtained.
• Patent- a set of exclusive rights granted by a sovereign state to an
inventor or their assignee for a limited period of time (monopoly) in
exchange for the public disclosure of the invention.
• Trademark- exclusive rights in a distinctive sign or symbols used in
commerce to identify product or service source. Protection of your
brand.
• Copyright- bundle of exclusive rights to copy, distribute, adapt,
perform, display expressive work for a limited time
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OVERVIEW- TYPES OF IP
• Patents & Trade Secrets: inventions (machines,
methods, ornamental designs, plants)
• Trademarks: a recognizable word, sign, design, logo,
or other item which identifies the source of products
or services and distinguished from others
• Copyrights: expressive works including literary (novels,
poems and plays), audiovisual (films, music); visual
(drawings, paintings, photographs, sculptures, and
architectural designs)
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Patents
(and Trade Secrets)
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TRADE SECRET
• Formula, practice, recipes, process, design, instrument, pattern, or
compilation of information which is not generally known or reasonably
ascertainable, by which a business can obtain an economic advantage
over competitors or customers.
• Secret Sauce; Confidential information, Classified information
Advantages:
• not limited in time- Patent is limited to 20 years
• continues indefinitely as long as the secret is not revealed – Must
disclose everything in a Patent
to the public
• No registration costs
• Immediate effect- no formalities
IT’S YOUR CHOICE!
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• No patent for its formula
• Has protection for many more years than 20
• Refused to reveal its trade secret
under at least two judges' orders
• No Protection if reverse engineered
• FDA will keep your Trade Secret!
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TYPES OF PATENTS
Latin patere, which means "to lay open" (i.e., to make available for public inspection)
Provisional Patent
Utility Patent (non provisional)- Issued for the invention of
a new and useful process, machine, manufacture,
or composition of matter, or a new and useful improvement,
90% of Patents Filed
Design Patent
• Granted on the ornamental design of an
article of Manufacture
• Ornamental designs of jewelry, furniture,
beverage containers, computer icons, and
other items
• While a utility patent protects what the
invention does, a design Patent protects what it looks like
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Plant Patent Act of 1930-distinct and new variety of plant
Protection for asexually propagated plants-reproduced by means other than
from seeds, such as by the rooting of cuttings, by layering, budding,
grafting.
• Plant can be discovered in a cultivated area
only!
• No Protection for Tuber-propagated plantsshort, thickened portion of an underground
branch, e.g. Irish potato and the Jerusalem
artichoke.
• Algae and Fungi are plants.
• Bacteria is not.
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• IT’S AN ASSET THAT CAN BE SOLD OR ASSIGNED
• IT’S OFTEN THE GREATEST VALUE BEHIND YOUR
COMPANY!
• CAN BE USED AS COLLATERAL FOR A LOAN
• MAKES YOU MORE ATTRACTIVE TO VENTURE
CAPITALISTS TO RAISE MONEY
• RIGHT TO EXCLUDE SOMEONE ELSE FROM MAKING, USING,
SELLING, OFFERING TO SELL, IMPORTING YOUR
PATENT
• WITHOUT A PATENT ANYONE CAN STEAL AN INVENTION YOU
HAVE DISCLOSED AND YOU WILL HAVE NO WAY TO PREVENT
THEM FROM MAKING MONEY OFF YOUR INVENTION
• PATENT MAY BE BEQUEATHED BY A WILL- PASSED TO HEIRS
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IDEA VS. INVENTION
United States– Previously: FIRST TO INVENT
COUNTRY (since 1790)
America Invents Act- September 16, 2011
• AS OF MARCH 16, 2013, FIRST INVENTOR TO FILEthe patent will go to whoever filed the application (or
published) first.
DO YOU THINK THIS IS FAIR?
• NO MORE INTERFERENCE PROCEEDINGS
•
BUT SMALL INVENTORS HAVE A ONE YEAR
GRACE PERIOD AFTER A PUBLIC DISCLOSURE
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PTO PROCESS
PTO PROCESS
PATENTABILITY REQUIREMENTS:
• Novelty
• Obviousness
• Written Description Requirement
• Enablement Requirement
• Best Mode Requirement
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PTO PROCESS
www.uspto.gov
SPECIFICATION, CLAIMS, ABSTRACT,
DRAWINGS, UTILITY PATENT FILING
FEES: 1600, 800, 400
Why might you need a Patent Attorney?
• PATENT IS A LEGAL DOCUMENT
• REQUIRES A SEARCH
• REQUIRES LEGAL RESEARCH
• FORM
• SCIENTIFIC SKILL TO DRAFT CLAIMS TO OBTAIN
BROAD PROTECTION
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INTERNATIONAL
PATENT COOPERATION TREATY- PCT
• International patent law treaty
• Concluded in 1970
• Provides a unified procedure for filing patent applications
• International application, or PCT application
• Majority of the world's countries are signatories to the PCT,
including all of the major industrialized countries
• Few Exceptions: Argentina, Taiwan and Iran
• As of May 16, 2013, there were 148 contracting states to the PCT.
Iran became the 148th contracting state on October 4, 2013
• Enter NATIONAL/REGIONAL
PHASE AFTER MINIMUM OF
30 MONTHS.
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INFRINGEMENT
• Unauthorized making, using, offering for sale or selling
any patented invention within the United States or
importing into the United States of any patented
invention during the term of the patent
• DEFENDANT CAN RAISE QUESTION OF VALIDITY
• INFRINGING ACTIVITY MUST FALL WITHIN ONE OR
MORE CLAIMS
• KNOWINGLY INDUCING
• CONTRIBUTORY INFRINGEMENT
• LIABLE EVEN IF YOU DIDN’T KNOW
THERE WAS A PATENT BEING
INFRINGED!
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Gray
Areas
SOFTWARE/BUSINESS METHODS
State Street- 1998: pure math algos not patentable
Bilski- 2010: Machine of Transformative Test
CLS Bank v. Alice Corp- 2012:Tracking Life Insurance Policies: If falls under the Abstract
Idea exception then not patentable
Bancorp v. Sun Life- 2 weeks later comments on CLS by stating that If computer does more
efficiently what a person can do then not patentable
CLS Bank Rehearing- June 2014: Awaiting Supreme Court Decision on whether claims
about a computer-implemented, electronic escrow service for facilitating financial transactions
concern abstract ideas ineligible for paten protection
-“This case is the death of hundreds of thousands of
patents, including all business method, financial system, and
software patents as well as many computer implemented and
telecommunications patents.“
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Gray Areas
GENES/DNA
• PTO GRANTED patents to Myriad Genetics control over
the BRCA1 and BRCA2 (the “breast cancer”) genes.
• Gives Myriad exclusive rights to all testing and research
on BRCA genes.
• Prevents anyone else from examining the genes, and
creates barriers to scientific research and medical care
relating to breast and ovarian cancer.
• ACLU is representing the Association for Molecular
Pathology and researchers at Columbia, NYU, Emory, Yale
• Supreme Court- Naturally Occurring Genome DNA that has
been isolated from the body is NOT PATENTABLE while
• Synthetically created cDNA not found in the body is
PATENTABLE
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What is Patent Reform: Aimed at TROLLS (own but don’t use)
Innovation Act (H.R. 3309)- Goodlatte- Passed in House 12/2013. Must identify the real party
in Interest- if a larger company (i.e. Troll) receives profits then they can be brought into suit.
Discovery- if you ask for it then you pay for it.
Trade Protection Not Troll Protection Act (H.R. 4763)- Cardenas- 5/2014- makes it more
difficult for patent trolls to use the ITC
Demand Letter Transparency Act (H.R. 3540)- Polis- 11/2013- creates a national database of
demand letters that patent trolls must submit their letters
Innovation Protection Act (H.R. 3349)- Conyers- 10/27/2013- end PTO fee diversion
Patent Litigation and Innovation Act (H.R. 2639)- Jeffries- 7/2013- allow a manufacturer to step
in and essentially take over the case
The Saving High-Tech Innovators From Egregious Legal Disputes Act SHIELD Act (H.R. 845)DeFazio- 2/26/2013- force patent trolls to post a bond to cover defendants’ legal fees and costs.
Stopping the Offensive Use of Patents Act (STOP Act) (H.R. 2766)- Issa7/2013- extends Covered Business Methods Program to all industries.
End Anonymous Patents Act (H.R. 2024)- Deutch- 5/15/2013Transparency- Troll must identify themselves.
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Patent Quality Improvement Act (S. 866)- Schumer –Senate Bill 5/2013 extended Covered
Business Methods Patents Review program to all industries. CBM Patent: patent that claims
a method or corresponding apparatus for performing data processing or other operations used in
the practice, administration, or management of a financial product or service, except that the term
does not include patents that solve technical problems with technical solutions (technological
inventions). Prosecution takes 1 year.
Patent Abuse Reduction Act (S. 1013) – Cornyn- Senate Bill 5/2013-would require plaintiffs to
disclose the substance of their claim and reveal their identities when they file their lawsuit; allow
defendants to hale into court interested parties; bring fairness to the discovery process; and shift
responsibility for the cost of litigation to the losing party.”
Patent Litigation Integrity Act (S. 1612)- Hatch- Senate Bill 10/2013- requires the patent owner
to post a bond against fees
Transparency in Assertion of Patents Act (S. 2049)- McCaskill- 2/2014- Action can be taken
against Bad Faith Patent Demand Letters-.
Patent Fee Integrity Act (S. 2146)- Feinstein- 3/2014- PTO fees fund the Patent
Office and are not diverted to other government uses
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DEATH OF PATENT REFORM?
-May 21, 2014- Senator Leahy announces Congress
has removed Patent reform from legislative calendar
“Unfortunately, there has been no agreement on how to
combat the scourge of patent trolls on our economy without
burdening the companies and universities who rely on the
patent system every day to protect their inventions.”
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Copyright, Trademarks &
Related Rights
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Copyrights are:
• Exclusive rights in an expressive work of authorship
– Copy
– Distribute
– Derivative Work / Alteration
– Display
– Perform
• Purpose: Encourage expression, cultural development
• AUTOMATIC BUT Registration is optional, but confers benefits
• Copyright arises when “original” work is “fixed in a tangible
medium”
• © notice is not required, but may support greater damages
• Term is Author’s Life + 70 Years
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•
•
•
•
•
TYPES OF COPYRIGHTS
Literary Work- computer code
Visual Arts
Performing Arts
Sound Recordings
Audio Visual Work- movies
Example: © 2005 John Doe
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•
Idea
/
Expression
Dichotomy
Limits the scope of protection by differentiating an idea from the expression
or manifestation of that idea
• Literary work as a whole, in the particular
story or characters involved, or in any artwork
contained in the book- Not in the idea or genre
of the story
• Facts not protectable, but selection,
arrangement, organization may be
•
Individual words and short phrases not protectable
•
Functionality- Pictorial, Graphical, Sculptural
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Scenes a faire/Merger doctrine
•No/Limited Protection where particular
ideas can only be expressed in a limited
number of ways:
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•Generic information such as facts, numbers and ideas.
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•
•
•
•
•
PUBLIC DOMAIN
WORKS IN U.S. PRE 1923
GENERIC INFORMATIOIN SUCH AS FACTS,
NUMBERS, IDEAS
PRE 1989 WORKS THAT DON’T HAVE
COPYRIGHT NOTICE
WORKS BY FEDERAL GOV’T
COPYRIGHTS THAT LAPSE
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Registering Copyrights
•
•
•
•
Fairly simple process, often done pro se
Online through copyright.gov or via forms
Deposit Requirement
Inexpensive
– $35 Government Fee
– Preregistration of certain unpublished works: $115
Government Fee
• Benefits
• International Protection through the Berne Convention
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Gray Areas
• Fashion- Patterns on Pocketbooks
• Logos- Copyright? Trademarked?
• Fair Use- Teachers
• Gray Market Goods- Distribution, which, while legal, are
unofficial, unauthorized, or unintended by the original
manufacturer.
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Trademarks are:
• Anything that a company or person
uses to identify its products or services.
• Purpose: Consumer
Protection, Brand Reputation
•
Foundation: U.S. Commerce Clause
•
Types of trademarks:
Word, phrase, symbol, design/shape, sound, color, smell, etc.
•
Rights arise and persist as long as the mark is used.
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Idea (Intent) vs. Use
– 15 U.S.C. (The Lanham Act)
– Use in Commerce
• Transportation/Sale across state or federal borders
– Product tags, labels, packaging, point-of-sale displays
(including ecommerce sites)
– Service advertising or marketing or shown in the
course of providing the services
• Common law (unregistered) trademarks
• State trademark registrations
• Federal trademark registrations
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International Aspects of
Territorial
Trademarks
•
• Foreign countries Rights: from
filing not from use BUT proof of use
is required in disputes
• Treaties:
– Paris Convention to allow priority claims within 6
months
– Madrid System as an alternative means of obtaining
trademark rights abroad
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•
Registering Trademarks with the
USPTO
Filing Bases:
• Intent to Use
• Use
• Foreign/International Application/Registration
• Process
– 3-4 months for initial examination
– Typically 1-2 Years for Allowance/Registration
– Up to 3 Years to Prove Use in Allowed Application (in 6-month
intervals)
• Term is 10 Years, Maintenance in Year 5-6, Renewable
Indefinitely
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A MARK SHOULD NOT CONFLICT WITH
OTHER MARKS
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Less
Distinctive
Generic
A mark should be
DISTINCTIVE
More
Distinctive
Suggestive / Arbitrary / Fanciful
Merely
Descriptive
Registrable
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GENERIC
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DESCRIPTIVE
A MARK DESCRIBES A
CHARACTERISTIC OF
THE GOODS/SERVICES
AQUA:
LEAK:
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SUGGESTIVE
...Is a bus an airplane?
No, but…
AIR:
BUS:
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ARBITRARY
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FANCIFUL
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Spectrum of Distinctiveness
Five categories
Fanciful/Coined
Arbitrary
Suggestive
Descriptive
Generic
Development
Costs
$$$$
Protection/
Enforcement Costs
$
$$$
$$
$$
$$$
$
$$$$
$
$$$$$
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.
A MARK SHOULD NOT HAVE AN UNINTENDED
MEANING
Marks that are innocuous in English
may take on new significance in
other countries
.
NOVA for cars in Spain,
where word could mean
“no go” or “it does not go”
.
Citroen SAXO in Japan,
where word means "turd"
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A MARK SHOULD NOT BE OFFENSIVE
Examples:
• BOOBY TRAP for brassieres
• A BREAST IN THE MOUTH
IS BETTER THAN A LEG IN
THE HAND for a chicken
restaurant
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Trade Dress
Trade Dress
essentially a business total image and overall appearance."
the packaging, the attendant displays, and even the
configuration of the product itself
Hard Rock Cafe restaurant chain.
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Gray Areas
• Social Media Usernames
• Gray market goods
• Color / 3-D marks
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David Postolski is a registered patent attorney and intellectual property
attorney at Gearhart Law. He specializes in assisting inventors, creators,
start ups, entrepreneurs, early stage companies and emerging companies
with their U.S and international intellectual property strategy, protection,
enforcement and monetization. David remains very involved in the
creation of New York State's first federally approved patent pro bono
program in conjunction with Volunteer Lawyers for the Arts. David is a
frequent speaker and author on intellectual property issues surrounding
reward and equity crowd funding.
david@gearhartlaw.com
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