Protecting the Intellectual Property of Your Business the Intellectual Property of Your Business...

Protecting theIntellectual Property of Your

Business

Peter D. Sabido

Intellectual Property AttorneyKolisch Hartwell, P.C.

Lunch n’ LearnTualatin Chamber of Commerce

April 7, 2009

© Kolisch Hartwell 2009All Rights Reserved

Overview

Basics of the primary areas of intellectualproperty law: Patents

Trademarks

Copyrights

Trade Secrets

General considerations for each of those areas


US Patent No: 6,970,105Passenger Control System During a Plane Flying

"The system is designed in a mannerthat the emotional conditions of thepassengers are detected and, in caseof change of such conditions, theplane personnel is informed so as tointervene promptly on the relatedpassenger... the system referred tocan deliver to the evil minded persona substance like a narcotic or astrong tranquilizer adapted toneutralize the offensive capabilitythereof”


PATENTS


Our inventions mirror our secret wishes.- Lawrence George Durrell

What is a Patent?

Grants the right to exclude others from making,using, selling, offering to sell, or importing intothe United States a “patented invention” for afixed period of time.


What can be Patented?- Devices

- Compositions of Matter

- Processes

- Articles of Manufacturing

- Methods of Use

- Software

- Business Methods

- Genetically Engineered Organisms


If You Build a Better Mousetrap…

U.S. Patent No. 5,706,601 to Dail et al. for TRAPAND METHOD FOR TRAPPING A MOUSEOR OTHER RODENT © Kolisch Hartwell 2009

All Rights Reserved

…You Will Catch Better Mice

U.S. Patent No. 4,736,866 to Leder et al. forTRANSGENIC NON-HUMAN MAMMALS


What Cannot be Patented?

Principles

Laws of Nature

Mental Processes

Intellectual Concepts

Ideas

Natural Phenomena

MathematicalFormulae

Fundamental Truths

Original Causes

Motives


Types of Patents

Utility Patents

Protects how an invention works

Design Patents

Protects how an invention looks

Plant Patents

Protects new varieties of plants


Requirements for PatentsIt must be:

Useful

Novel (New)

Nonobvious

Invented by you


Patent Considerations

Conduct a patent search before filing a patentapplication

File the patent application before disclosure orcommercialization

- One year grace period in North America

- No grace period in many countries


TRADEMARKS


What is a Trademark?

Protects an exclusive “sign” or “mark” that isused to distinguish products or services.

Grants the right to exclude others from using aconfusingly similar mark for similar products orservices

For famous marks, grants the right to excludeothers from using a confusingly similar mark forany products or services


Examples of Trademarks

Word

Word and Symbol

Stylized Word© Kolisch Hartwell 2009All Rights Reserved


Symbol Device



Slogan Sound

Color


Types of Trademarks

Common law

Automatic but rights exist only where mark used

Burden on owner to prove rights

State registered

Rights exist only where mark used + zone of expansion

Federally registered

Nationwide rights, regardless of where mark used

May be obtained before use begins


How to Select a Mark

Two main considerations:

A distinctive element

Cannot cause confusion with existing marks


Can “Cake” be a Trademark?

No Common commercial name

for the goods

Does not distinguish goodsfrom others in marketplace

Yes Identifies goods

Distinguishes goodsfrom others inmarketplace


Trademark Considerations

Conduct a trademark search early

File an application or use the trademark early

Present the mark as a mark

- Set marks apart from regular text

- Follow marks with a trademark symbol (TM, ®)

- Marks are always adjectives, never nouns


US Patent No: 5,509,859Leash With Sound

"A novelty item for creating theillusion of an imaginary petincluding a hollow, elongatedleash with a handle at one endand a collar and harness adjacentthe other end. Housed within thehandle, which is hollow, is abattery power source and anintegrated circuit for producing aplurality of animal sounds.”


COPYRIGHTS


What is a Copyright?

Grants the right for a fixed period of time toexclude others from:

copying, distributing, and performing ordisplaying publicly an original work ofauthorship, and

preparing derivative works based on theoriginal work of authorship


What are “Original Works ofAuthorship”?

Literary works

Pictorial, graphic, and sculptural works

Audiovisual works

Musical works

Dramatic works

Sound recordings

Architectural works

Choreographic works


Examples of Copyrights

Harry Potter – Book

(Literary Work)

Harry Potter – Movie

(Motion Picture)© Kolisch Hartwell 2009All Rights Reserved

Examples of Copyrights

Harry Potter – Soundtrack

(Sound Recording)

Harry Potter – Movie Poster

(Pictorial Work)© Kolisch Hartwell 2009All Rights Reserved

What are not “Original Works ofAuthorship”?

Ideas

Procedures

Processes

Systems

Titles

Short Phrases

Methods ofOperations

Concepts

Principles

Discoveries

Useful Articles


Types of Copyrights

Automatic Rights

Original work of authorship

Fixed on a tangible medium

Registered Rights

Registered with the U.S. Copyright Office

Life of author plus 70 years

Statutory damages


Copyright Considerations

Owner must provide notice

Owner must register to enforce

Independent contractors own the copyrights intheir work unless you have an agreement tothe contrary


US Patent No: 7,062,320Device for the Treatment of Hiccups

"A device for curing hiccups,comprising: a metallic cup-likevessel being a first electrode forproducing electricity adapted tobe applied to the lip of the user;and a second electrodeelectrically insulated from saidfirst electrode being affixed tosaid vessel and extending from apoint substantially within saidvessel to a point substantiallyabove a rim of the vessel.”


TRADE SECRETS


What is a Trade Secret?

Protects against acquisition or disclosure by“improper means”

- Theft

- Bribery

- Misrepresentation

- Breach of a duty to maintain secrecy

- Espionage


Examples of Trade Secrets

Drawings

Cost Data

Customer Lists

Compositions

Patterns

Compilations

Programs

Devices

Techniques

Processes

Methods of Assembly

Other Methods


Requirements for Trade Secrets

Independent economic value from being notgenerally known

Reasonable efforts to maintain its secrecy


Trade Secrets Considerations

May last forever but all value may be lost atany time

Reverse engineering

Accidental disclosure

Independent development

If others patent what you have as a secret,they could prevent you from using your“secret”


US Patent No: 5,996,127Wearable device for feeding and observing birds

"A device for feeding and observingflying animals comprising:

a hat, the hat including a frontportion and a rear portion;

a first support mounted on the hatand extending forward of the frontportion of the hat; and a feederconfigured to contain food for flyinganimals mounted on the firstsupport, wherein the flying animalscan be observed while they feed.”


Peter D. Sabido

Intellectual Property Attorney

Kolisch Hartwell, P.C.

520 SW Yamhill Street, Suite 200

Portland, Oregon 97204

(503) 224–6655

[email protected]


Protecting the Intellectual Property of Your Business the Intellectual Property of Your Business...

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