Invention 2 Venture: Chris Rothe
34
1 INTELLECTUAL PROPERTY October 24, 2009 Christopher A. Rothe RatnerPrestia, PC Information contained in this slide show, and any statements made by the presenter during presentation of this slide show, are provided solely for educational purposes for the NCIIA Invention to Venture Workshop, and do not constitute legal advice. Individuals seeking legal advice about intellectual property should consult with competent legal counsel and explain their specific circumstances. Laws are subject to change. © 2009 RatnerPrestia
-
Upload
penn-state-entrepreneurs-network -
Category
Documents
-
view
636 -
download
4
description
Mr. Rothe is an attorney with RatnerPrestia, PC, a law firm located in Valley Forge, PA. Christopher counsels clients in all areas of intellectual property law, including patents, IP risk management, and IP transactions. Mr. Rothe has expertise in prosecuting domestic and international patent applications. He is currently responsible for managing patent portfolios for a major U.S. manufacturer of surgical implants, and one of the nation's top children's hospitals.Mr. Rothe is accustomed to explaining complex IP issues to individuals with various backgrounds, including general counsels, company presidents, CEOs, technology transfer specialists, marketing directors, engineers, scientists, and beginning entrepreneurs.Mr. Rothe received a law degree from Villanova University School of Law. Before attending law school, Mr. Rothe spent four years working as an engineer in private practice. He received a B.S. in civil engineering from the Pennsylvania State University in 1992.
Transcript of Invention 2 Venture: Chris Rothe
1
INTELLECTUAL PROPERTY
October 24, 2009
Christopher A. Rothe RatnerPrestia, PC
Information contained in this slide show, and any statements made by the presenter during presentation of this slide show, are provided solely for educational purposes for the NCIIA Invention to Venture Workshop, and do not constitute legal advice. Individuals seeking legal advice about intellectual property should consult with competent legal counsel and explain their specific circumstances. Laws are subject to change. © 2009 RatnerPrestia
2
Intellectual Property = “creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce.” - WIPO
• But what makes it property?
What is Intellectual Property?
3
Legal Categories of IP in US:
Copyrights Trademarks Trade Secrets Patents
4
Copyrights
Protect works that are: Original; Creative; and Fixed in a tangible medium of expression
Purpose: protects the expression of an idea, not the idea itself Examples: Paintings, photographs,
sound recordings, source code
5
Copyrights What you get:
Exclusive rights to (and authorize others to) – Reproduce the work – Prepare a derivative work – Distribute copies – Publicly perform or display the work
Fair use exception
6
Copyrights
Copyright term (first published in US):
70 years after the death of author.
7
Trademarks 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.
Examples:
8
Trademarks A service mark is the same as a
trademark, except that it identifies and distinguishes the source of a service rather than a product. Examples:
9
Trademarks Trade dress is any other feature seen in
the presentation of a product or service – Product configuration – Product packaging
10
Trademarks
What you get: a right to exclude others from using a mark in a manner that creates a likelihood of confusion as to source
Purpose: to protect consumers from confusion or deception when purchasing
Term: Indefinite but must renew every 10 years
Use it or lose it
11
Patents
A “deal” with the government:
– A patent grants an inventor 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. - for a limited patent term
– In exchange, the government publishes your invention & public gets to see it
12
Types of U.S. Patents Utility patents Protect processes, machines, articles of
manufacture, compositions of matter, etc. Term: 20 years from date of filing Design patents Protect new, original, and ornamental designs for
articles of manufacture Term:14 years from date of filing Plant patents Protect distinct and new varieties of asexually-
reproduced plants Term: 20 years from date of filing
13
Requirements for Utility Patent
Must be:
Novel over prior art “Non-obvious” over prior art Useful
14
Hypothetical
US Patent issued to Smith Title: A Seating Apparatus
Claim: A seating apparatus comprising four legs and a seat.
Smith
15
Hypothetical
US Patent Appln. filed by Jones Title: Improved Seating Apparatus
Claim: A seating apparatus comprising four legs, a seat and a back rest.
Jones
16
Hypothetical
Assume: Only prior art to Jones:
Smith patent This boulder
17
Hypothetical
1) Is the Jones chair patentable?
Useful?
Novel?
Non-obvious?
18
Hypothetical
2) If Jones gets a US patent, is he free to make, use and sell his chair?
19
Hypothetical
2) If Jones gets a US patent, is he free to make, use and sell his chair?
NO ! Patent provides right to exclude, not to practice
The Jones chair would infringe the claim in Smith’s patent
Smith = dominant patent
20
Hypothetical
3) Can Smith make and sell the Jones chair in view of Smith’s dominant patent?
21
Hypothetical
3) Can Smith make and sell the Jones chair in view of Smith’s dominant patent?
NO !
Smith would be infringing the Jones patent.
22
Patent Novelty & Time Bars
One year grace period in U.S. to file patent application after commercial disclosure:
• Sale or Offer for sale • Public use (“experimental use” exception)
After that, you are barred from obtaining a patent in the U.S.
Most other countries: no grace period
23
Territorial Protection
U.S. patents - enforceable only in U.S. Filing options outside U.S.:
– File in individuals countries; OR
– Patent Cooperation Treaty (PCT)
• one procedure allowing party to apply for patents in multiple countries that are members of the PCT
24
Trade Secrets
Trade Secret - information, including a formula, pattern, compilation, program, device, method, technique, or process that: – provides value because it is not known to others who
could benefit from it; AND – safeguarded by the owner in a way that can reasonably
be expected to prevent others from learning about it
No term limit, so long as the info remains “secret”
25
Patents vs. Trade Secrets
Conditions favoring patents: – the technology is easily discoverable or reverse
engineered – licensing revenues
Conditions favoring trade secrets: – Life cycle is short (e.g. technology is obsolete
in <3 years) – Proving infringement would be difficult – Technology can be easily “designed around”
once it is known
26
What to Do If You Have “Something”
1. Articulate your invention – New Apparatus / System? – New Process / Method? – All of the above? – What exactly is novel? – Explain the invention in one sentence.
27
What to Do If You Have “Something”
2. Is a patent a good idea? – Would a trade secret be better? – Who would infringe the patent? – How would you know about infringement? – Is the prior art “crowded”?
• USPTO search
28
What to Do If You Have “Something”
3. Get the record straight – Keep dated information, preferably in a
permanently bound notebook – Document all contributors, and what they
contributed – If you disclosed it, record disclosure date – Complete an “invention disclosure form”
29
What to Do If You Have “Something”
4. Control your Disclosure – Try to get an NDA – Limit disclosure to general summaries
30
What to Do If You Have “Something”
5. File a patent application before you disclose the invention
Option: “provisional application”
31
Provisional Applications Purpose: Gets you a U.S. filing date (f/d)
Does not get you a patent
Must file a “full-blown” patent application to obtain a patent
Full blown application can claim the provisional’s f/d if it is filed within 1 year of the provisional “full-blown” = U.S. non-provisional or PCT
32
Provisional Applications Benefits: inexpensive buys 1 year of time after f/d to determine
commercial interest & refine invention “patent pending” status But note: Must be detailed and descriptive
33
For More Information…
For general IP questions: www.uspto.gov
34
QUESTIONS ?
