INTELLECTUAL PROPERTY - Charlotte · United States Patent And Trademark Office • Grants patents...

INTELLECTUAL PROPERTY

Patents • Trademarks • Copyrights • Trade Secrets

13850 Ballantyne Corporate Place • Suite 500 • Post Office Box 78320 • Charlotte, NC 28271 • (704) 887-5288 • www.wigginsvandegarde.com © 2014 Wiggins & Vande Garde, PLLC

WIGGINS & VANDE GARDE, PLLC

Intellectual Property Law

Types of Intellectual Property

• Patents

• Trademarks

• Service Marks

• Copyrights

• Trade secrets



© 2014 Wiggins & Vande Garde, PLLC

United States Patent And Trademark Office

• Grants patents

• Registers trademarks

• Advises governmental agencies in matters re domestic & global aspects of “intellectual property”




Library Of Congress

• Copyrights are registered in Copyright Office of the Library of Congress




What Is A Patent

• US Constitution empowers Congress to enact laws relating to patents, in Article I, section 8: “Congress shall have 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.”




What Is A Patent (continued)

Pursuant to the statute any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,” subject to the conditions and requirements of the law. (35 U.S.C §101)

• “process” is defined by law as a process, act or method, and primarily includes industrial or technical processes.

• “machine” used in the statute needs no explanation. • “manufacture” refers to articles that are made, and includes all

manufactured articles. • “composition of matter” relates to chemical compositions and may

include mixtures of ingredients as well as new chemical compounds.




Patent law specifies that the subject matter must be “useful.” • the subject matter must have a useful purpose • includes operativeness - a machine must operate to perform its

intended purpose






Subject matter that cannot be patented: • The laws of nature • physical phenomena, and • abstract ideas.

A patent cannot be obtained upon a mere idea or suggestion. • The patent is granted upon the new machine, manufacture, etc.,

as has been said, and not upon the idea or suggestion of the new machine.





Diamond v. Chakrabarty, 1980 Supreme Court approved a grant of patent for a micro-organism. The patent claim was not to an unknown natural phenomenon, but to a non-naturally occurring manufacture or composition of matter – a product of human ingenuity having a distinctive name, character and use. Inventor produced a new bacterium with markedly different characteristics from any found in nature and one having the potential for significant utility. Patentable subject matter within 35 U.S.C §101.




35 U.S.C §101. Inventions patentable.

• Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.




Novelty & Non-Obviousness Conditions For Obtaining a Patent

(March 16, 2013)

35 U.S.C. 102 Conditions for patentability; novelty: • (a) NOVELTY; PRIOR ART. A person shall be entitled to a patent unless:

• (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

• (2) the claimed invention was described in a patent issued under section 151, or in an

application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

• (b) EXCEPTIONS: Continued on next slide….





(March 16, 2013)

35 U.S.C. 102 Conditions for patentability; novelty: • (b) EXCEPTIONS:

• (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION. A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) IF:

• (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; OR

• (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

• (2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS. A disclosure shall not

be prior art to a claimed invention under subsection (a)(2) IF: • (A), (B), (C)





(March 16, 2013)

35 U.S.C. 102 Conditions for patentability; novelty: • (c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS. Subject matter

disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if:

• (1) the subject matter disclosed was developed and the claimed invention was made by, or on

behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;

• (2) the claimed invention was made as a result of activities undertaken within the scope of the

joint research agreement; and • (3) the application for patent for the claimed invention discloses or is amended to disclose the

names of the parties to the joint research agreement.





(March 16, 2013)

35 U.S.C. 102 Conditions for patentability; novelty: • (d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART. For purposes

of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application:

• (1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application

for patent; or • (2) if the patent or application for patent is entitled to claim a right of priority under section

119, 365(a), or 365(b), or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.





(March 16, 2013)

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

• A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.




35 U.S.C. §112. Specification. (September 16, 2012)

• (a) IN GENERAL. The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

• (b) CONCLUSION. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.

• (c) FORM. A claim may be written in independent or, if the nature of the case admits, in dependent

or multiple dependent form.

• (d) REFERENCE IN DEPENDENT FORMS. Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

• (e) REFERENCE IN MULTIPLE DEPENDENT FORM. A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and . . .

• (f) ELEMENT IN CLAIM FOR A COMBINATION. An element in a claim for a combination may

be expressed as a means or step for performing a specified function


Intellectual Property Law © 2014 Wiggins & Vande Garde, PLLC

The Issuance of a Patent is the Grant of a Property Right

• “the right to exclude others from making, using, offering for sale, or selling” the invention in the U.S. or “importing” the invention into the U.S.




3 Kinds of Patents

• Utility patent - anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;

• Design patents - may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and

• Plant patents - may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.




Design Patents

The patent laws provide for the granting of design patents to any person who has invented any new and non-obvious ornamental design for an article of manufacture. • protects only the appearance of an article • a term of 14 years from grant • no fees are necessary to maintain a design patent • specification is short • only one claim is permitted that refers to the drawing(s)

• Design patent applications can have one and only one patent claim. The claim

is made using strict formalistic language format (e.g., "The ornamental design for ________ as shown."




Plant Patents

• To anyone who has invented or discovered and asexually reproduced any distinct and new variety of plant – excluding a tuber-propagated plant or a plant found in an uncultivated state.

• Asexually propagated - reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, etc.

• Term of a plant patent is 20 years from the date on which the application for the patent was filed in the United States




Non-Provisional Application for a Patent

A non-provisional application for a patent includes: • A written document which comprises a specification (description and

claims), and an oath or declaration;

• A drawing in those cases in which a drawing is necessary; and

• Filing, search, and examination fees (small / micro entity fee may apply).




Provisional Patent Application

Attributes of a provisional patent application: • Lower costs • Claims and oath or declaration are NOT required • NOT examined on its merits • Provides the means to establish an early effective filing date • “Patent Pending” may be used • Up to 12 months to file a “properly supported” non-provisional application • May become abandoned 12 months after its filing date • Does not affect the 20-year term of a subsequently filed non-provisional

application • May NOT be filed for design inventions




Patent Ownership Issues

Ownership Follows Inventorship • Only the inventors (or those who derive title from the inventors)

can own a patent Joint Inventors Are Joint Owners • Each joint inventor or owner may make use or sell the invention

• w/o the consent of the other inventors • w/o accounting to the other joint inventors or owners • regardless of the inventive contribution made

Joint owners must join in • prosecuting an application for patent, and • suing for infringement




Who Can Be An Owner / Apply for a Patent

• Any person, corporation or partnership, U.S. or foreign, can own a patent • Exception – PTO employee, prohibition continues for one year

after termination

• Foreign inventor must sign oath or declaration (not always required by other countries)

• Dead inventor - application may be made by his executor, administrator, etc.

• Mental disability - application may be made by legal representative (guardian).




Patent Ownership May Be Transferred

• By express agreement to assign (i.e., employment contract)

• By implied agreement (i.e., employee hired to invent and the invention reasonably relates to his/her employment)

• State laws govern




Employer - Employee Inventor

Employed inventors are in a different situation.

• If "hired to invent" specifically for the purpose of inventing, then the invention ordinarily will belong entirely to the employer

• Inventor not hired to invent but uses the employer's time and materials to invent, the resulting invention will ordinarily belong to the inventor, BUT employer has a "shop right" to use the invention, without paying the inventor

• Employers often use employment contracts and invention assignment agreements (governed by state law)




Enforcement Of Patent Rights

• Right to prevent others from making, using, or selling invention in the US

• Infringers subject to harsh penalties for willful violations of patent rights

• Federal courts enforce patent rights

• Infringers can be sued without knowledge of the patented product or process

• Infringer may be ordered to stop making or using




Enforcement Of Patent Rights (continuned)

Damages to patent owner

• lost sales of owner

• money saved by infringer

• may accrue from date of patent issuance or date of notice

• trebled in appropriate cases

• attorneys' fees




Leahy-Smith America Invents Act of 2011 (AIA)

The AIA implements biggest changes to the U.S. patent law since the 1952 Patent Act. • Implementation from September 16, 2011 thru September 16, 2020 • First to File system replaces first-to-invent system March 16, 2013 • Best Mode Requirement • Pre-issuance Submissions by 3rd Parties • Patent Office Funding • Post-Grant Proceedings

• Post Grant Review • Inter Partes Review • Supplemental Examination

• Novelty & Obviousness (35 U.S.C. § 102 and 35 U.S.C. § 103) • Etc.




Treaties and Foreign Patents

• U.S. patent rights only valid in the United States

• Must apply for patent protection in foreign countries

• Other countries have their own patent laws

• In most foreign countries publication of invention before filing will bar the right to a patent

• May have to manufacture the invention in the foreign country




Paris Convention Treaty

• Guarantees citizens of member countries the same patent and trademark rights as its own citizens

• 168 countries, including the U.S.

• Guarantees priority rights for all countries • when filed w/n 12 months for utility patents • when filed w/n 6 months for designs and trademarks




Patent Cooperation Treaty (PCT)

• Effective January 24, 1978

• An international treaty administered by the World Intellectual Property Organization (WIPO)

• 148 countries, including the United States

• Centralized filing procedures and standardized application format • Permits simultaneous patent protection in numerous foreign

countries by filing a single “international” patent application




Non-Provisional Utility Patent: Normal Small Micro Fee Entity Entity Basic (Electronic) Filing Fee: $280.00 $70.00 $70.00 Utility Search Fee: $600.00 $300.00 $150.00 Utility Examination Fee: $720.00 $360.00 $180.00 Utility Issue Fee: $960.00 $480.00 $240.00 (due when patent is granted) Maintenance Fees (After Patent Issues) Due at 3.5 years: $1,600.00 $800.00 $400.00 Due at 7.5 years: $3,600.00 $1,800.00 $900.00 Due at 11.5 years: $7,400.00 $3,700.00 $1,850.00

Provisional Application Filing Fee: $260.00 $130.00 $65.00



Patent Application Fees (as of October 31, 2014)

TRADEMARKS

Registered in the U.S. Patent and Trademark Office • can also have state registration

A trademark can be a word, name, numbers, slogan, combination of words / numbers, symbol, sound, smell, architectural design, or device used in trade to indicate the source of the goods and to distinguish them from the goods of others • distinctive • unique

A service mark identifies and distinguishes the source of a service




TRADEMARKS (continued)

Prevents others from using a confusingly similar mark • but not from making or selling the same goods or services under a

clearly different mark Advantages of Federal registration • constructive notice to public re mark’s ownership • a legal presumption of ownership and exclusive right to use the mark • ability to bring an action concerning the mark in Federal Court • a basis to obtain registration in foreign countries • U.S. Customs Service to prevent import of infringing goods Registration not required for common law rights only • must have legitimate use of the mark





“TM” or “SM” gives public notice of claim • USPTO registration not required

“®” only after mark is registered (not pending) with USPTO

Do not have to be a U.S. citizen to apply for TM • non U.S. resident in the United States must appoint a "domestic

representative”





USPTO examining attorney searches USPTO records for conflict • a likelihood of confusion b/n applicant and another registered mark

Factors in determining conflict • the similarity of the marks • the commercial relationship between the goods and/or services • marks or goods or services do not have to be identical or the same,

just need to be similar.

Other factors for refusal • primarily descriptive or misdescriptive • primarily geographically descriptive or primarily geographically

deceptive • primarily a surname • ornamental • etc.




Publication for opposition Term of trademark registration • Federal TM registrations - 10 years • renewal for additional 10 years as long as mark is being

used in commerce • Affidavit of Use between 5th and 6th years during the

first term • State terms differ from state to state and from Federal




Enforcement - lawsuits in state or Federal court

Proof of TM infringement • infringer was the second user of the mark • mark is substantially similar to senior party’s mark • actual confusion not necessary • goods or services relating to the mark are competitive or closely related

If can show likelihood of prevailing before the trial judge can order goods withdrawn or seizure of counterfeit goods

Money damages available - senior party’s losses or infringer’s profits

Willful infringement – possible treble damages and attorney fees Criminal charges re counterfeit goods - money and/or prison terms




INTERNATIONAL TRADEMARK FILING SYSTEM

The Madrid Protocol - the protocol relating to the Madrid Agreement Concerning the International Registration of Marks • international treaty allowing registration in any of the countries that have

joined the Madrid Protocol • filing a single application - the international application • went into effect in the United States on November 2, 2003 • 80+ countries have joined the Madrid Protocol

The "international registration" is a means for seeking protection in member countries • each member country applies its own rules and laws re TM protection • neither the Madrid Protocol nor the Madrid Agreement provide for

registration of an "internationally effective" trademark




COPYRIGHTS

Protection provided to the authors of “original works of authorship” • including literary, dramatic, musical, artistic, and certain other intellectual works • published and unpublished

The 1976 Copyright Act Gives the owner of copyright the exclusive right: • to reproduce the copyrighted work • to prepare derivative works • to distribute copies or phonorecords of the copyrighted work • to perform the copyrighted work publicly, or • to display the copyrighted work publicly

Protects the form of expression rather than the subject matter of the writing




COPYRIGHTS (continued)

Right of an author to prevent others from copying his creative work

Protects the form in which a creative idea is expressed - not the underlying idea

Does not prevent others from creating their own, differently expressed works using similar ideas

Does not prevent virtually identical works from being created and exploited, if they were created independently





The copyright owner has the exclusive right to do and to authorize others to: • reproduce the work by any means, including paper copies, recordings, or

otherwise

• prepare derivative works based on the original creative work

• distribute copies or recordings of the work to the public by any means

• perform the work publicly

• display the work publicly





Copyright also protects typical business documents • sales and training manuals • advertising • etc.

Copyright laws also protect: • computer software • ornamental aspects of products (i.e., clothing, vases, figurines, toys) • buildings and building plans maybe covered





Acquisition and Ownership of Copyrights: • Comes into being immediately and automatically on creation • Registration is not required • The individual who created a work is the copyright owner • Joint owners - two or more persons collaborate to produce a work • Usually, each joint owner is entitled to independently exploit the work • "Work for hire" - employer is owner of copyright where the employee

created the work as part of his duties • Exception - independent contractors not normally considered

"employees" • written agreement to transfer ownership to employer

• Most copyright ownership rights may be transferred





The NOTICE OF COPYRIGHT • gives public notice the work is protected • is placed in a reasonably prominent location • identifies the owner • shows the date of first publication

Use of copyright notice not required for works after March 1, 1989 • still highly recommended With a proper notice an infringer cannot claim he did not realize the work was protected





A proper copyright notice has three elements: • the copyright symbol, ©, or the word "copyright" or the abbreviation

"copr.” • the name of the copyright owner, or an abbreviation by which the name

can be recognized or a generally known alternative designation of the owner

• the year of first publication of the work • may be omitted where a pictorial, graphic, or sculptural work, with

accompanying textual matter, if any, is reproduced in or on greeting cards, postcards, stationery, jewelry, dolls, toys, or any useful article

For sound recordings the letter P is used rather than the C US government material must be identified as such - failure to do so results in the invalidation of an otherwise valid copyright claim on the original portions of the work.




Registration Of Copyrights • Usually a pre-requisite for bring suit against copyright infringer • Registration accomplished by

• submitting application for copyright registration • remitting proper fee • copies of the work to the Register of Copyrights

• The work not examined for conflict with another work, but the Copyright

Examiner will review the application and copies of the work re the legal requirements as to copyrightable subject matter.





TERM OF COPYRIGHT PROTECTION • Works first created or first published on or after January 1, 1978 - author's

life, plus 70 years after the author's death

• Jointly authored work- the term measured by the life of the last surviving author

• Works for hire, anonymous or pseudonymous works - the term is 95 years from publication or 120 years from creation, whichever is shorter.

• Prior to January 1, 1978 - a first term of 28 years from the date copyright was secured by publication or by registration, whichever occurred first • Additional details, timelines and renewals





ENFORCING COPYRIGHTS • Bring a civil lawsuit in Federal District Court • Criminal actions can be brought by the U.S. Attorney

• Customs / Postal officials may seize and impound infringing articles

• Court may order forfeiture / destruction of infringing articles and

manufacturing equipment

• If copyright owner can show likelihood of prevailing, court may order seizure and impoundment of infringing articles prior to trial





ENFORCING COPYRIGHTS (continued) • Can recover any provable damages, including lost profits

• Statutory damages available even if no actual damages can be shown

• work was registered before the first act of infringement • proper copyright notices affixed

• minimum damages award is $500 • maximum damages award is $20,000

• may reduce damage award if can show acted innocently • • Willful copyright infringement can be a Federal criminal offense

• a federal misdemeanor - may include a prison sentence • a felony - prison and large money fines





Berne Convention for the Protection of Literary and Artistic Works • International copyright protection

• Works originating in one of the contracting States given same

protection in each of the other contracting States

• Protection must not be conditional upon compliance with any formality

• Protection is independent of the existence of protection in the country of origin of the work

• Protection must include “every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression”




TRADE SECRETS

Historically not protected by any Federal law No examination, approval, or registration A "trade secrets" must be secret States laws addressing trade secrets and legal remedies addressing misappropriation Federal law enacted in 1996 re misappropriation of trade secrets Misappropriation - a person acquires trade secret knowledge through wrongdoing and w/o owner’s authorization




TRADE SECRETS (continued)

States have enacted legislation to define a trade secret and outline the legal remedies for its misappropriation. The common law also recognizes the right of a business to protect its confidential information. In 1996, protection made available under Federal law - misappropriation of T/S can now be prosecuted via Federal criminal statutes (i.e., the Economic Espionage Act of 1996. Provided a business has taken reasonable steps to maintain secrecy, valuable business information will normally be protected.




TRADE SECRETS (continued)

BENEFITS OF TRADE SECRECY • Easy to establish and exist as soon as confidential info is created or developed • Requires no application, examination, or registration • Can last indefinitely DRAWBACKS • No protection against one who acquires the information by honest means

• independent development by another • reverse engineering

• A trade secret can be lost at any time - compare to patents with a defined term MAXIMIZING TRADE SECRET PROTECTION • Maintain and enhance security • "CONFIDENTIAL" stamp • Employees instructed not to discuss confidential information with anyone

except co-workers, and only at their place of employment • Use of confidentiality agreements




THE END



13850 Ballantyne Corporate Place • Suite 500

Post Office Box 78320 • Charlotte, NC 28271

(704) 887-5288

www.wigginsvandegarde.com

INTELLECTUAL PROPERTY - Charlotte · United States Patent And Trademark Office • Grants patents...

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