You’ve Built a Better Mousetrap . . .Now what?

How to Protect Your Intellectual Property Using Patents and Trademarks

Elizabeth DoughertyActing Deputy DirectorOffice of Patent Legal Administration

International Home and Housewares Show

Chicago 2012

U.S. Patent 102,133

Goals of Presentation

• Provide an understanding of what Intellectual Property (IP) is with a focus on patents and trademarks

• Educate stakeholders as to why they should considering protecting their IP through the use of patents and trademarks

• De-mystify the process of obtaining patents and registering trademarks through the U.S. Patent and Trademark Office (USPTO)

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USPTO - Mission

To foster innovation and competitiveness by: Providing high quality and timely examination of patent and trademark applications, guiding domestic and international intellectual property policy, and delivering intellectual property information and education worldwide.

Patent and Trademark Fundamentals

What is a Patent?

• A grant by the U.S. Government conferring to an inventor the right to exclude others from the: • manufacture• sale or offering for sale• use• or importation of

her/his invention

in/into the U.S. Letters Letters PatentPatent

Patent Fundamentals

U.S. system is a quid pro quo

The inventor discloses the invention to the government in specific terms

The government grants exclusive rights to the inventor

Types of Patents

Utility

New and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof

Design

Any new, original and ornamental design

Plant

Whoever invents or discovers and asexually produces any distinct and new variety of plant

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.

U.S. PatentNo. 2,026,082

Monopoly

Utility Patent Applications

U.S. Patent No. 821,393 Flying Machine

Design Patent Applications

Utility Patent Applications

Design Patent Applications

• Design patents protect the way an object appears

Thomas EdisonDesign PatentD12,631

Design Patent Applications

Plant Patent Applications

• Plant patents protects asexually produced plant varieties

What is a Trademark?

Any word, name, symbol, device (or any combination thereof) used to identify and distinguish goods or services and to indicate their source

Trademarks

Trademarks - symbols or slogans that represent goods or services - can last indefinitely as long as they are not allowed to become generic

Term – 10-year term with 10-year renewal terms

Do I need a patent or trademark? Why?

What is the Value of a Patent?What is the Value of a Patent?

• Incentive to Invent • Security for Investment• New Technology Resources• Ensure that Investment of Time and Money is

Rewarded to Continue Future Incentive Stimulation – Accelerates Development – Strengthens National Economy

• Creation of Assets (To Sell or License, Collateral for Financing)

• Building Block for Future Inventions

• Source of Historical Information

• Contribution to Society

What is the Value of a Patent?What is the Value of a Patent?

The Monster Under My BedDe-Mystifying the Patent and Trademark Process

Interacting with the U.S. Patent and Trademark Office

Profile of Patent OperationsFY2011 Accomplishments and Current Landscape

Agency Profile

– Over 8,500 patent examiners and related technical specialists, organized into 9 Technology Centers

– One location in Alexandria Virginia, with a future satellite office in Detroit Michigan (Opening July 2012). Nationwide Workforce.

Production and Efficiency

– 537,128K UPRD filings in fiscal year 2011

– 244,430 UPRD patents issued in fiscal year 2011.

– Current backlog of 660,270 unexamined applications

– Average time to examine an application is 33.8 months

• Goal of total pendency 20 months, first actin pendency 1 months

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USPTO Organization Structure

Office of the Commissioner for Patents

• Office of the Deputy Commissioner• Office of Patent Examination Policy• Office of Patent Resources and Planning• Office of Patent Information Management• Office of Innovation Development

United States Patent and Trademark Office Technology Centers

The Deputy Commissioner for Patents oversees all patent examining functions in the nine Patent Technology Centers. Patent Operations provides administrative oversight to and coordinates the activities of Technology Centers 1600, 1700, 2100, 2400, 2600, 2800, 2900, 3600, and 3700.

United States Patent and Trademark Office Technology Centers

• Technology Center 1600: Biotechnology and Organic Chemistry.

• Technology Center 1700: Chemical and Materials Engineering.

• Technology Center 2100: Computer Architecture Software and Information Security.

• Technology Center 2400: Computer Networks, Multiplex, Cable and Cryptography/Security.

• Technology Center 2600: Communications.

• Technology Center 2800: Semiconductors, Electrical and Optical Systems and Components.

• Technology Center 2900: Designs.

• Technology Center 3600: Transportation, Electronic Commerce, Construction, Agriculture, Licensing and Review.

• Technology Center 3700: Mechanical Engineering, Manufacturing and Products.

Patent Examination

•READ AND UNDERSTAND SPECIFICATION•DETERMINE WHETHER SPECIFICATION IS ADEQUATE•DETERMINE SCOPE OF THE CLAIMS•SEARCH EXISTING TECHNOLOGY FOR CLAIMED INVENTION•DETERMINE PATENTABILITY•WRITE/MAIL A LEGAL OFFICE ACTION ON THE PATENTABILITY•RESPOND TO APPLICANTS RESPONSE•ISSUE PATENT OR ABANDONMENT

AllowanceFirst Examination

FirstFirstExaminationExamination

Notice Notice of of

AllowanceAllowance

Second Examination

Amendment

SecondSecondExaminationExamination

Appeal Process

Appeal BriefAppealProcess

Rejection

Examination Process

Overview of Process for Obtaining a Utility Patent

Trademark Operations Organizational Chart

Overview of TM Examination Process: Use-based application

New Trademark Initiatives

• Trademarks Next Generation– Information technology initiative, e.g., virtualization and cloud

computing– Email: tmideas@uspto.gov

• Trademark Consistency Initiative– Quality initiative, centralized process by which applicants can

Request Consistency Review of the Office’s treatment of their pending applications and recent registrations

– Email: tmconsistency@uspto.gov

• Trademark User Feedback– Complaints, compliments, or other feedback (not an “official filing”)– Email: tmfeedback@uspto.gov

www.uspto.gov

Features of the Website

• Apply Online for a Patent • Obtain Status of a Patent Application• Search US Patent Database• Search Patent Classification Manual• Download Forms and Fee Schedules• Patent Help Resources• Access Details of All Currently Pending Published

Patent Applications (Public PAIR)

Overview of Website - Inventors

Click on

“Inventors”

• Helpful links for inventors - General Information

- Introductory Guides

- FAQs

- Upcoming Events

- Registered Attorneys & Complaints Against

- Inventors Assistance Center

- and much more…

Overview of Website - Patents

Overview of Website - Careers

IP Awareness Assessment

IP Awareness Assessment

IP Awareness Assessment

Other Forms of Intellectual Property

COPYRIGHT - Library of Congress

– Protects “original works of authorship” including literary, dramatic, musical, artistic and certain other intellectual works.

– Term - Author’s life + 70 years

Copyright

Trade Secrets

• How is this different from Patents, Trademarks and Copyrights?

• What constitutes a trade secret?• How can we determine a trade

secret?

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Trade Secrets

• Trade secrets - based on contracts - may offer protection indefinitely

• Is it better to patent or keep a trade secret?

Coca Cola; KFC

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

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

• 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

Trade SecretsTrade Secrets

Thank You

Elizabeth.dougherty@uspto.gov