All You Need to Know About Patents, Trademarks and Copyrights Chip Hood and Bill Needle Charleston,...

All You Need to Know About Patents, Trademarks and

Copyrights

Chip Hood and Bill Needle

Charleston, S.C.Atlanta, Ga.

www.needlerosenberg.com

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Web Sites for Patents, Trademarks and Copyrights

www.uspto.gov(Patents and Trademarks)

www.loc.gov/copyright(Copyrights)

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Patents

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What is Patentable?

The Supreme Court has said that patents cover “anything under the sun that is made by man.”

Diamond v. Chakrabarty, 447 U.S. 303 (1980) (genetically-engineered bacteria that broke down crude oil)

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Examples of Patentable Subject Matter

Methods of doing business (e.g., Amazon.com’s “1-click” patent; Priceline.com’s “reverse-auction” patent).

Software Vaccines, diagnostic tests

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Life of a Patent

• 20 years from the filing date of a utility application(no rights during pendency- “Patent Pending”).

• 14 years from issuance for a design patent

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Patent Theory

Patents grant their owner the right to “exclude others from”:

• Making the invention;

• Using the invention;

• Selling the invention;

• Offering the invention for sale;

• Importing the invention.

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Patent Theory

U.S. patent covers only the United States.

Separate patent necessary in each country – no one patent covers the world.

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Patent ApplicationsFiled and Issued

Patents Issued

0

50,000

100,000

150,000

200,000

250,000

300,000

350,000

1790 1850 1900 1950 1990 2001

Patent Applications

Patents Issued

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Patent Office Statistics

Patents Issued:

66,000 in 1980.

176,000 in 2000.

168,000 in 2002.Source U.S.P.T.O.Numbers rounded to nearest 1000.

0

20000

40000

60000

80000

100000

120000

140000

160000

180000

200000

Patents Issued

1980

2000

2002

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1998:240,090 applications filed

2002:335,418 applications filed

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Biotechnology patent applications increased to 47,473 in 2002 from 18,695 in 1996 (a 154% increase).

In contrast, over the same period, there

was only a 12% increase in the number of patent examiners.

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“I have this invention. I know it’s worth millions. What can I do to protect myself?”

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Invention Development Companies

NO! NO! NO! NEVER!

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WARNING:

The One-Year Statutory Bar Rule

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One-Year Rule for Patents

An inventor has one year from the date of the first public disclosure of the invention to file a patent application in the U.S. Patent Office.

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Public Use/Offer for Sale/Sale Before U.S. Application Filed


one year

Public Use/Sale File in U.S.

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But, if the application is filed after the disclosure, the inventor is not able to file for patent protection in most foreign countries.

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So, what do you do?

Answer: File first and then disclose.

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U.S. Application Filed Before Public Use/Offer for Sale/Sale – Foreign Filings Preserved

one year

File in U.S. File ForeignPublic Use/Sale

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You may forfeit your right to patent an invention if there is a public disclosure of your invention more than one (1) year prior to filing a patent application.

Therefore, you should not do any of the following without determining whether patent protection should be sought for the technology:

– Do Not – Do Any of the Following

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Display or discuss the invention at a seminar, lecture, workshop, or trade show open to the public, or

Disclose the invention without a signed Confidential Disclosure (or Non-Disclosure) Agreement, or


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Disclose the invention on inventor’s or company’s web site, or

Submit an article to a journal for publication, or

Offer for sale or sell the invention, or


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Distribute samples of the product to customers, or

Consumer or market test a new product (“Carpet Fresh”), or


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Distribute advertising brochures about the invention, or

Demonstrate a prototype to a public group.

The goal: to prevent unnecessary loss of patent rights due to premature use, sale or publication of patentable technology.


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Patentability

Is the invention patentable? You can do patentability searches on Patent Office website or pay someone to perform search in Patent Office records.

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Infringement

Does the invention infringe someone’s patent? Infringement search and analysis should be performed by a patent attorney.

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Infringement

You receive a cease and desist letter of infringement – the perils of ignoring it:• Willful infringement.• Treble damages and attorney’s

fees.

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Marking

Marking of the product with the patent number starts the infringement damages clock.

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Joint Inventors

Absent agreement to the contrary, a co-inventor is a co-owner who may use or license or assign the patented invention without being held accountable to the other owner(s). 35 U.S.C. § 262

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Trade Secret Protection

Trade secrets:• are not generally known to the

public, • are protectable as long as the

information remains secret, and • have been the subject of

reasonable efforts to maintain confidentiality.

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Trade Secret Protection

Confidentiality measures must be reasonable under the circumstances:• Non-disclosure or confidentiality

agreements• Advising employees that information

is trade secret• Marking documents “confidential”• Employment agreements

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Copyrights ©

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What is copyright?

A form of protection for original works of expression fixed in a tangible form, including

literary, musical,

pictorial,graphic,sculptural,

audiovisual works.

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Copyrights

Examples of Copyrightable Subject Matter:

Songs

Movies (but not their titles)

Games

Jewelry

Software (sequence of coded instructions which direct the process steps)

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Copyrights

CABBAGE PATCH KIDS babies

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Copyrights

“Original works of expression”

Originality ≠ Novelty

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Idea vs. Expression of Idea

“Original works of expression”

Copyright does not protect an idea, only the expression of the idea.

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A copyright owner has no right to prevent the independent creation of the same expression of an idea.

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Rights of Copyright Owner

Copyright owner has the exclusive right:

1. To reproduce the work,2. To perform the work publicly,3. To distribute copies of the

work,4. To display the work publicly,

and

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Rights of Copyright Owner

5. To make derivative works based upon the

original work.

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Copyright Protection

Arises automatically with fixation of the work in a tangible medium.

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Don’t have to register the copyright.

Only need to register if suing for infringement.

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Recommended to seek registration within 3 months from first publication to collect statutory damages (up to $100,000/infringement) and attorney’s fees.

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How to Register a Copyright?

Download the appropriate form at the Copyright Office website:

www.loc.gov/copyright

and follow the simple directions.

http://www.loc.gov/copyright

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Copyright Notice

© [year date of creation] [owner]

or

Copyright [year date of creation] [owner]

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Who Owns the Copyright?

You hire a programmer who creates software for your business.

Who owns the copyright in the software?

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Work for Hire

A work prepared by anemployee within the scope ofhis/her employment (i.e., it was part of the job duties ofthe creator to create the work).

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Work for Hire

Anything else, get a written agreement from the author where he assigns his copyrightable interests in the work to you.

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Duration of Copyright

Life of the author plus 70 years.

If work for hire: shorter of 95 years from publication or 100 years from creation.

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Patent vs. Copyright

Inventions vs. Works of art Idea vs. Expression of idea Upon issuance vs. Upon

creation Expensive vs. No cost 20 Years from filing vs. Life of

author plus 70 years

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Trademarks

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A trademark or “brand name”comprises “anything” that identifies the source of goods or services from those of another when used in commerce.

What is a Trademark?

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A Trademark Can Be:A Word or Group of Words

COKE

CABBAGE PATCH KIDS

DON’T LEAVE HOME WITHOUT IT

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A Trademark Can Be:A Symbol, Pictorial

Representation or Design

NIKE “Swoosh”

LACOSTE Alligator

Five interlocking Olympic rings

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A Trademark Can Be: A Combination of Word(s) Plus

Symbol, Pictorial Representation or Design

NESTEA

CHURCH’S

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A Trademark Can Be:Numeral(s), Letter(s) or Combinations Thereof

501 Jeans

IBM computers

LOTUS 1-2-3

V-8 Juice

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A Trademark Can Be:A Shape of a Container or

Packaging COKE bottle

Conical top of CROSS pen

TOBLERONE chocolate packaging

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A Trademark Can Be: A Color

Orange for THE HOME DEPOT stores

Pink for Owens-Corning’s insulation

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A Trademark Can Be:A Sound

Chimes for NBC

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Lion roar for MGM

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The mark consists of the exhaust sound of applicant’s motorcycles, produced by V-Twin, common crankpin motorcycle engines when the goods are in use.

(Application Serial No. 74/485,223)


HARLEY DAVIDSON

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A Trademark Can Be:A Scent

“The mark consists of a high impact, fresh flower fragrance reminiscent of Plumeria blossoms” • U.S. Reg. No. 1,639,128

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Trademarks vs. Service Marks

Trademarks identify products or goods.

Service marks identify services.

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Service Marks

GOLDEN ARCHES Design

MCDONALD’S

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Trademarks

GOLDEN ARCHES Design

BIG MAC

MCDONALD’S Plus Design

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Certification Marks

Example: VIDALIA for onions (“The certification mark is intended to be

used by persons authorized by certifier, and will certify that the goods in connection with which it is used are yellow Granex type onions and are grown by authorized growers within the Vidalia onion production area in Georgia as defined in the Georgia Vidalia Onion Act of 1986.”)

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Trade Names vs. Trademarks

A trade name is not a trademark: McDonald’s Corporation vs.

McDONALD’S

Trade names are not registrable in the Trademark Office.

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Types of MarksStrength

• Highest

• None

Fanciful

Arbitrary

Suggestive

Merely Descriptive

Generic

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Fanciful

XEROX

KODAK

EXXON

CLOROX

KOTEX

POLAROID

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Arbitrary

COMMAND hair care products

SHELL gasoline

APPLE computers

ICE CREAM chewing gum

GUESS? Jeans

DIE-HARD batteries

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Suggestive

CROSSTALK software

STRONGHOLD nails

7-ELEVEN retail store service

COPPERTONE tanning products

RAPID SHAVE shaving cream

GLEEM toothpaste

ROACH MOTEL roach bait

WOOLITE wool cleaner

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Merely Descriptive

CHAP-STICK chapped lip treatment

SHEAR PLEASURE beauty salon

BEEF AND BREW restaurants

HOUR AFTER HOUR deodorant

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Generic

aspirin cellophane cola cornflakes cube steak dry ice

escalator high octane kerosene lanolin linoleum

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Generic

mimeograph murphy bed nylon raisin bran refrigerator

shredded wheat

thermos trampoline yo-yo zipper

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The Term “Brilliant” would be:

Merely descriptive for diamonds.

Suggestive for furniture polish.

Arbitrary for applesauce.

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Your Client Wants to Adopt a New Mark

Search, Search, Search:

Trademark Office (www.uspto.gov)

Google

Thomson & Thomson (www.thomson-thomson.com)

http://www.uspto.gov/

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Types of Trademark Applications

Actual use of mark in interstate commerce; and

Intent-to-use the mark in interstate commerce.

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No - No’s

Can’t assign an intent-to-use trademark application.

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No - No’s

An assignment of a trademark, absent the “goodwill of the business connected therewith”, is invalid –

“assignment in gross”.

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No - No’s

Licensing of a trademark, without quality control provisions, results in a “naked” license.

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The Care and Feeding of Marks

Always use the mark as a proper adjective which modifies a noun, such as CABBAGE PATCH KIDS dolls, LEVI’S jeans, XEROX copy machines.

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Never use a mark in the possessive form, in the plural form or as a verb.

Avoid prefixes, suffixes, additions or deletions of the mark.


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Distinguish the mark in use from surrounding text: distinctive type face, quotation marks, all capital letters or capitalize the first letter of each word of the mark.

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For Registered Marks: “®” or “Registered in the U.S. Patent

and Trademark Office” or “Reg. U.S. Pat. TM. Off.”

Marking and damages.


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For unregistered marks:

“TM” “SM”

or an asterisk indicating “A trademark/service mark of XYZ Corporation.”

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Benefits of a Federal Registration

Registrant can:

1. Claim constructive date of first use of mark to date of filing of application.

2. Prevent registration of similar or confusing marks.

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3. Secure injunctive relief and damages in federal court.

4. Assert the registration in court as prima facie evidence of ownership, validity and right to exclusive use throughout the United States.

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5. Eliminate defense of innocent adoption of mark by providing nationwide constructive notice of ownership of mark.

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6. Obtain incontestability of the mark after (5) years of use (conclusive proof of registrant’s ownership, exclusive right to use the mark, and the mark’s distinction).

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7. Prevent the importation of goods with infringing marks once the mark is recorded with Customs.

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Thank You!

All You Need to Know About Patents, Trademarks and Copyrights Chip Hood and Bill Needle Charleston,...

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