Intellectual Propertyan Introductory Primer

United States Patent and Trademark Office

Ideas!

• The way to have a good idea is to have lots of ideas and throw the bad ones away

– Linus Pauling, 20th Century chemist

• Invention isn’t some impenetrable brand of magic, anyone can have a go

– Trevor Baylis, inventor, wind-up radio

• A good idea is never lost. Even though it’s originator or possessor may die without publicizing it, it will someday be reborn in the mind of another

– Thomas A. Edison, inventor

Inventors Genius

• “Genius is one percent inspiration and ninety-nine percent perspiration.

Accordingly, a genius is often merely a talented person who has done his or her homework.”

- Thomas Edison

• Like genius, inventors need to do homework to make the most from their inventions and IP protection

Inventors, Inventions & Patents – Their Influence on our Lives

• Howe – Sewing machine – 1846• Bradley – Game board – 1866• Davis – Blue jeans – 1873• Glidden – Barbed wire – 1874• Otto – Gas engine – 1876• Cochran – Dishwasher – 1886• Benz – Automobile – 1886• Tesla – Electric motor – 1888• Painter – Bottle cap – 1892• Kellogg – Cereal – 1896• Gillette – Safety Razor – 1904• Carrier – Air-conditioner – 1906• Birdseye – Refrigerator – 1927• Baird, Zworykin, Farnsworth –

Television – 1920s,1930,1938

• Drew – Adhesive tape – 1928• Darrow – Monopoly – 1935• Carlson – Photocopier – 1940• Plunket – Teflon® – 1946*• Spencer – Microwave – 1950 • Woodland et al. – Bar codes – 1952• Bohlin – Seat belt – 1962 • Eckert, Jr. et al. – Computer – 1964 • Kilby – Microchip – 1964• Mestral – Velcro® – 1960s • Engelbart – Mouse – 1970 • Weber – Snow board – 1975• Dyson – Bagless vacuum – 1980s• Who and what is next??

Small Business/Entrepreneur/Inventor

• So where is the intellectual property?

Creativity Protection

• Homework– Notebook

• Type

• Importance

• Patentability– Search

• Marketability

Important Steps

• Filing of application before disclosure– US importance

– Foreign rights

• Types of Utility Applications– Provisional

• one year period, no claims required, written disclosure must meet same requirements as non-provisional, not allowed for design.

– Non-provisional• claims required, written disclosure must meet requirements of 35 USC

112 1st paragraph. Examined for patentability, can result in a patent.

America Invents Act

• First Inventor to File– Derivation

• Micro Entity Status– 75% reduction on most fees

• Pro bono programs

• Electronic filing incentive

Paper filing adds $200, no discount for micro-entity* New fees will apply after 3/16/2013

Fees

• Reduction of 75% from large entity feesUtility Design

Basic filing 70 45

Search 150 400 30 190

Examination 180 115

Issue 445 255

Maintenance 3.5 400

7.5 900

11.5 1850

Track 1 1000

Design Application

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• Ornamental design of invention– No provisional applications

• Lower fees than Utility

• Shorter wait for examination that utility

• 15 year term from issue

• No maintenance fees

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Foreign Filing

• Country by country

• PCT– PCT is a filing system, it does not grant a patent

– Allows entry of designated country national stage application process

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Trademark Protection

• Product identification– Word, phrase, symbol/design or combination that identifies source

of goods– Service mark is same as Trademark for identification of source of

service

• Is registration required?– Use of TM or SM– Registration provides

• Constructive notice• Legal presumption• Ability to bring action in federal court, • and others

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Trademark Application?

• Requirements for registration– Use of mark in commerce; and– File an Allegation of Use

• Sworn statement, $100 fee & specimen showing use in commerce

• Term– Ten years original; ten years for renewal

• Madrid protocol– “International registration” – Allows member countries to apply own laws

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Copyright Protection

• Original work of authorship– Protected at creation– For published and unpublished work– Registration provides legal presumption

• Term and cost– Authors life + 70 years or 95 year from

publication/120 years from creation for anonymous works

– Basic fee - Currently $45 ($35 electronic submission)

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Trade Secret

• Any information that derives economic value from not being generally known or readily ascertainable

• Can be formulas, patterns, compilations, programs, devices, methods, techniques or processes

• No fees or term limits

• Are covered under contract law

• Protection stems from common law dating to the 1800’s

• All states have some sort of trade secret protection

• Most laws based on the Uniform Trade Secrets Act

Contact Information

• John Calvert

• Senior Advisor Office of Innovation Development

United States Patent and Trademark Office

Department of Commerce

Alexandria, VA

john.calvert@uspto.gov