Protecting Your Business With Patents, Trademarks, and Copyrights

PROTECTING YOUR BUSINESS WITH PATENTS, TRADEMARKS, AND COPYRIGHTS

Daniel Jon Holmander, Esq.Barlow, Josephs & Holmes, Ltd.

©2012 Barlow, Josephs & Holmes, Ltd.

[email protected]

Introduction to Intellectual Protection for Small Business• IP Law is important because it has been estimated that

45-80% of a company’s value lies in its intangible assets, namely intellectual property rights

• The purpose of this course is discuss the following:• 1. patent law for small business• 2. trademark law for small business • 3. copyright law for small business

©2012 Barlow, Josephs & Holmes Ltd.

What are Some Types of Intellectual Property Rights?1. Patents2. Trademarks3. Copyrights

Types of Intellectual Property Rights1. Copyrights – protects original works of authorship fixed in a tangible medium of expression.

-Literary works, musical works, dramatic works, motion pictures, sound recordings, etc.

2. Trademarks - indicia affixed to goods or used in connection with the sale or advertising of services to identify the source of the goods or services -protects name and/or logo for goods or services

3. Patents- government grant of the right to exclude others from making, using, selling or importing the patented invention. (note, not right to use the invention)


Patents - Overview• What is capable of being patented?

• Any novel and non-obvious invention• In the US this includes business methods

• Rights Awarded• Government grant of the right to exclude others from making,

using, selling or importing the patented invention.

Types of Patents in the U.S.

• Utility Patents• Provisional Applications• Non-Provisional Applications

• Design Patents• Plant Patents


Patentable Subject Matter

• A. Apparatus/Device or Article of Manufacture• B. Composition of Matter• C. Method of Manufacture• D. Method or Process for Using

Apparatus/Device/Article• E. Business Method Patents• F. Software – must be tied to a physical structure


Not Patentable Subject Matter

• A. mathematical formulae• B. algorithms• C. mental processes• D. music• E. basic mathematical and physical relationships• F. phenomena of nature• G. abstract intellectual concepts


Types of Utility Patents in the U.S.

• A. Apparatus/Device or Article of Manufacture• B. Method of Manufacture• C. Method or Process for Using

Apparatus/Device/Article• D. Business Method Patents• E. Software

Benefits of Patents for Small Business

• 1. increase valuation of company

• 2. support higher profit margins by offering exclusive features

• 3. source of income through a licensing program

• 4. defensive measure if accused of violating a patent of competitor

Provisional Patent Application

• Inexpensive filing• Get filing date, Serial No., “patent pending”

• Good for One Year• Must file non-provisional (full) patent application

within one year of filing of provisional application.• Non-provisional gets filing date of provisional application

• Allows time to explore feasibility/marketability of invention over the year


Non-Provisional Patent Applications

• Covers functional/utilitarian aspects of an invention• Claims define the scope of protectionPatentability Requirements:

• Novel• Non-obvious

Term: 20 years (from filing date of application)


Business Method Patents

• Covers new methods of doing business• Claims define the scope of protectionPatentability Requirements:



Amazon 1-Click Patent ClaimU.S. Pat. No. 5,96,411

• 1. A method of placing an order for an item comprising: under control of a client system,displaying information identifying the item; and

in response to only a single action being performed, sending a request to order the item along with an identifier of a purchaser of the item to a server system;

under control of a single-action ordering component of the server system, receiving the request; retrieving additional information previously stored for the

purchaser identified by the identifier in the received request; andgenerating an order to purchase the requested item for thepurchaser identified by the identifier in the receivedrequest using the retrieved additional information; and fulfilling the generated order to complete purchase of theItem whereby the item is ordered.

Software Patents

• patent on any performance of a computer realized by means of a computer program

• Claims define the scope of protectionPatentability Requirements:



Ebay Software Patent ClaimUS Pat. No. 7,702,540

• 1.A computer-implemented method for conducting auctions on the Internet, the method comprising: receiving over a communication network, by a communication handler program executing on a networked market maker computer, information from a remote computer of a first entity corresponding to an item for auction, the information received via the communication network from the remote computer of the first entity including (i) a designation of an item category, selected from a list of item categories presented at the remote computer of the first entity, under which the item for auction is to be listed, and (ii) input relating to scheduling an auction for the item; processing, by a mapping module at the networked market maker computer, at least a portion of the received information from a database format into a world wide web presentation format, the presentation format including an indication of the selected designation of the category of the item for auction; based at least in part on the selected category designation and the auction scheduling information previously received from the remote computer of the first entity, automatically initiating an instance of an ascending-bid auction process to conduct an ascending-bid auction for the item over the Internet from the networked market maker computer; wherein the automatically initiated auction process conducts the auction to completion by performing operations including: presenting a depiction of the item in the presentation format to a plurality of potential buyers; receiving at the networked market maker computer one or more bids on the auctioned item from one or more bidders; and terminating the auction after a predetermined time.

Design Patents

• Ornamental design on a functional product (Coke bottle)

• Claims define the scope of protectionPatentability Requirements:


Term: 14 years (from date of grant)

Google HomepageUS Pat. No. D599,372

Plant Patents• Must be invented and discovered• Must be asexually reproduced (grafting)• Must be distinct and new variety of plant• Does not include tuber propogated plant or a plant

found in an uncultivated state

Term: 20 years (from date of filing)


Due Diligence – Patent Searching

• Informal Search• www.uspto.gov• Google® Patents

• Professional Search• Guidance from an Examiner at USPTO• Analysis and patentability opinion

File Patent Applications

• Prepare, file patent application, and prosecute• Caution:

• U.S. - file within one year of first offer for sale, public disclosure to ensure valid patent

• Foreign countries – no grace period

RI State Trademark• Contents – similar to Federal Registration except no

intent-to-use application; must have use • See http://sos.ri.gov/business/trademark/forms/

• Limited Prosecution Phase – granted or refund• Less Expensive Filing - $50 • Protection – extends to the boundaries of the state of

Rhode Island only(also available in MA, CT, etc.)• No connection between Secretary of State

incorporation and RI State Trademark


Federal Trademark Law• Trademarks are indicia affixed to goods or used in

connection with the sale or advertising of services to identify the source of the goods or services

• Many forms• word mark• slogan• logo• musical notes• trade dress• scents


Trademark Rights

• Common Law Trademark Rights TM

• Trademark Rights arise out of usage• Rights accrue in geographic territory

• Federal Registration ®• Nationwide protection• Significant advantages

• Presumption of validity at trial• Incontestability 5-6 years after registration

• Sample Federal Registration

Benefits of Trademarks for Small Business

• 1. maximize product differentiation, advertising and marketing, thus enhancing recognition of your product or service

•

2. increase revenues as consumers pay higher prices for branded goods

• 3. derive loyalty largely due to consumer’s ability to recognize the product and distinguish it from the products of competitors

Types of Trademarks

Arbitrary or Fanciful

Suggestive

Descriptive

Generic

Arbitrary, Fanciful Marks

• Unrelated to the goods or services• Preferred

• easiest to register• strong when connection is made with consumers

• Examples• Nike Swoosh (shoes)• YAHOO! (internet portal)

Suggestive Marks• Implies a characteristic of the product• Requires some imagination to connect mark with the

goods, usually registrable• Examples

• SPARKLE (window cleaner)• PENGUIN (food freezers)• GOBBLE GOBBLE (turkey meat)

Descriptive Marks• Product or its function is set forth in the mark• Not inherently capable of identifying the source of the

goods or services• Registrable if secondary meaning is shown

• Examples• PRE-INKED (stamp pads)• 5 MINUTE (five minute glue)

Generic Marks/Names

• Defines a class of goods• Needed by competitors to adequately identify the

goods• Not registrable• Examples

• PHOTOCOPY MACHINE (copy machines)• COMPUTER (computers)• ASPIRIN (aspirin) - became generic over time

Domain Names and Trademarks

• Picking a Domain name• 1. Pick a domain name that is not the subject of a third

party’s trademark registration or common law right• 2. Pick a domain name that resonates with customers

and is capable of building good will (i.e. not generic or merely descriptive)

• Enforcing a Trademark Against Domain Name Holder• 1. Uniform Administrative Dispute Resolution Policy

Due Diligence -Trademark Search

Informal Search: www.uspto.gov; Google

Professional Search:-Federal trademark registrations -Common Law trademarks-Brand names-Company names-Domain names-State Trademarks-Internet usage

Note: Just because the Secretary of State’s Office says that a name is available for incorporation, doesn’t mean it can used as a trademark

File Registration Application

• File trademark application• Types

• Use (mark already in use in interstate commerce)

• ITU (bona fide intent-to-use)• Office Actions• Responses, Amendments• Publication for Opposition in Official Gazette• Registration Certificate

Trademark RegistrationMaintenance

• Declaration of Continuous Use/Incontestability (between 5 and 6 years from Federal Registration)

• Renewals every 10 years if mark is still in use• 10 year term of registration

Copyright Law• What is copyrightable?

• Original Works of authorship fixed in a tangible medium of expression – 17 U.S.C.102(a)

• What is NOT copyrightable?• Ideas, facts (unless arranged in unique way), procedure,

process, system, method, concept, principle, discovery

• Examples of copyrightable Works• books• jewelry and sculptures• photos• performance art• website• software


Copyrights – Protection for Small Business

• Is the work protectible?• Original?• Expression of ideas, not the ideas themselves• non-functional

• Types• Textbooks, magazines, newspapers• Sculptures, jewelry designs• Photographs• Music, lyrics• Content on the Internet

Copyright - Limitations• First Sale Doctrine – allows purchaser to transfer

(sell, lend, or give away) a particular lawfully made copy of the copyrighted work without permission once it has been obtained (CD, book, etc).

• Fair Use Doctrine – allows for copying for purposes of criticism, comment, news, reporting, teaching, scholarship, or research.

• Purpose and character of the use• Nature of the work• Amount of the work used in relation to the whole• Effect of the use on the value of the work


Copyright – Exclusive Rights• Copyright is a bundle of exclusive rights:• 1. reproduce the subject work• 2. prepare derivative subject works• 3. distribute copies of the subject work• 4. perform the subject work publicly• 5. display the subject work publicly


Copyright Law – Registration Process

• I. Submit Application, Deposit, and fee to US Copyright Office

• II. Refusal – If the deposit is not acceptable or not copyrightable subject matter, the Copyright Office may refuse registration and provide opportunity to rebut

• III. Issuance – Certificate of Registration if there is no Refusal

• IV. Duration – work created after January 1, 1978- term is from the moment of creation to 70 years after the author’s death – renewal not required (post 1978)


Copyright – Benefits of Registration• Under current law, no registration is needed to preserve

copyright to an original work. Presumption of validity if registered within 5 years of first publication.

• Copyright Registration is prerequisite to filing suit in Federal Court, key to courthouse

• Timing of Copyright Registration• Pre-infringement (or within 3 months of publication) all

remedies available - statutory damages (up to 30k per infringement), attorneys fees

• Post-infringement: Not preferred, remedies such as actual damages of copyright owner and profits -hard to prove and likely less than statutory damages


Copyright – Application Contents

• 1. name/address of copyright claimant • 2. authors and nationality• 3. work for hire statement• 4. If claimant is not author, brief statement of how

claimant obtained ownership of the copyright• 5. year of creation of work• 6. date and nation of first publication• 7. identification of any pre-existing works


Copyright – Application Forms

• Registration with Paper Forms • Form CO (pdf) – fill out online and mail along with $50 and

deposit• Other Forms - $65 fee, deposit, and much slower

processing time

TX – literary works – books, catalogs, software

VA – visual arts – art, photographs, prints, drawings

PA – performing arts – music, motion pictures

See copyright.gov for forms/circulars/brochures

• Online Registration – eCO online system • - lower filing fee - $35; faster time; online tracking; upload

deposits directly


Copyright – Deposit

• Unpublished work – one complete copy• Published work – two complete copies (unless

uploaded electronically)• Special requirements

• Computer Programs – printout of the first 25 and last 25 pages of the source code, or entire program if less than 50 pages

• Databases – first 25, last 25 pages(single file) or 50 data records (for multiple files)

• If trade secrets, then some portions may be blocked out less than 25 first, 25 last


Copyright Marking Issues• Copyright Notice Marking Preferred

• Use ““, Year of first publication, then company/person claiming ownership• 2000 Smith & Co.

• Notice not need to preserve copyrights• Notice Used: Easier to prove willful infringement• No Notice: Innocent infringement

Conclusion

• Identify• Identify property and determine whether it is important to

you and your company

• Research• Take early action to search inventions, clear trademarks

to avoid problems

• Protect• File for appropriate patents, registrations

• Enforce• Police property, pursue infringers

Protecting Your Business With Patents, Trademarks, and Copyrights

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