Law: Bill Loginov

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Information about Law: Bill Loginov

Published on February 11, 2009

Author: lpnoonan

Source: slideshare.net

Introduction to Intellectual Property Law and Protection Presented by: William A. Loginov Principal Attorney Loginov & Associates, PLLC 10 Water Street Concord, NH 03301 [email_address]

Intellectual property Ideas and their expression can be valuable assets! But only if you protect your ownership of them!

Ideas and their expression can be valuable assets!

But only if you protect your ownership of them!

Intellectual Property 4 kinds of legally protectable assets: patent trademark copyright trade secret

4 kinds of legally protectable assets:

patent

trademark

copyright

trade secret

Patents an “exclusive right” granted by the federal government entitling the owner to prevent another from making, using, selling (or offering to sell) the patented product or process issued by the US Patent and Trademark Office term of 20 years from “utility” patent application filing (14 years from issuance for design filings)

an “exclusive right” granted by the federal government entitling the owner to prevent another from making, using, selling (or offering to sell) the patented product or process

issued by the US Patent and Trademark Office

term of 20 years from “utility” patent application filing (14 years from issuance for design filings)

Patents limited to country issuing the right must be: useful new non-obvious “ enabling” to those of ordinary skill Remember: It’s a “right to exclude ,” not an affirmative right to practice the invention No patents on “illegal/immoral” subject matter; and

limited to country issuing the right

must be:

useful

new

non-obvious

“ enabling” to those of ordinary skill

Remember: It’s a “right to exclude ,” not an affirmative right to practice the invention

No patents on “illegal/immoral” subject matter; and

No nukes!

No nukes!

Utility patents can be: a machine or device an article of manufacture a process or method for producing a useful, concrete and tangible result a composition of matter

a machine or device

an article of manufacture

a process or method for producing a useful, concrete and tangible result

a composition of matter

Utility Patents on Software Software is generally patentable examples: application programs – process or machine controls microcode in a ROM that embodies the entire innovative notion of a new tachometer internal or operations programs that direct the handling of date in the computer’s own operations Amazon’s “One-Click” patent (successfully litigated against Barnes & Noble in 1999)—After BILSKI??? what’s needed – a process depiction (e.g. flow chart) and a written description

Software is generally patentable

examples:

application programs – process or machine controls

microcode in a ROM that embodies the entire innovative notion of a new tachometer

internal or operations programs that direct the handling of date in the computer’s own operations

Amazon’s “One-Click” patent (successfully litigated against Barnes & Noble in 1999)—After BILSKI???

what’s needed – a process depiction (e.g. flow chart) and a written description

Not Patentable: “ raw” software code (but it’s copyrightable) natural phenomena (e.g. photosynthesis); However gene sequences are usually patentable (require “human ingenuity” to isolate) abstract ideas (e.g. mathematical algorithms) not applied to any useful purpose (a 2 + b 2 = c 2 ) laws of nature (e.g. E=mc 2 ) “ raw” business methods and processes not “tied to a device” BILSKI!!!!

“ raw” software code (but it’s copyrightable)

natural phenomena (e.g. photosynthesis); However gene sequences are usually patentable (require “human ingenuity” to isolate)

abstract ideas (e.g. mathematical algorithms) not applied to any useful purpose (a 2 + b 2 = c 2 )

laws of nature (e.g. E=mc 2 )

“ raw” business methods and processes not “tied to a device” BILSKI!!!!

Other Types of Patents design patents – cover the industrial design of an object: its ornamental appearance-not its function-invention is claimed by its drawings (less detail the better) plant patents – inventions or discoveries involving asexual reproduction of distinct and new varieties of plants

design patents – cover the industrial design of an object: its ornamental appearance-not its function-invention is claimed by its drawings (less detail the better)

plant patents – inventions or discoveries involving asexual reproduction of distinct and new varieties of plants

A Design Patent

Prior Art Limits Patents absence of novelty or non-obviousness in light of “prior art” is grounds for denial of an application prior art = any disclosure of information regarding – or use of the contents of a claim – prior to the filing of patent application (and date of invention) any information in the entire body of human knowledge can be prior art: publications by others a prior, issued patent prior public use of the invention by others prior public disclosure or use by the inventor(s)

absence of novelty or non-obviousness in light of “prior art” is grounds for denial of an application

prior art = any disclosure of information regarding – or use of the contents of a claim – prior to the filing of patent application (and date of invention)

any information in the entire body of human knowledge can be prior art:

publications by others

a prior, issued patent

prior public use of the invention by others

prior public disclosure or use by the inventor(s)

Statutory Bars to Patenting Cannot file more than one year after “public disclosure” or other barring events, including : publication anywhere or public presentation in the US– written or oral sale, or “offer for sale” (“containing the invention”), including products of the invention in the US exhibitions use by the owner, in some cases (example, a product sold using a secret machine prevents patenting machine later) limited exception for public use for experimental purposes beta testing by a potential customer–circumstances determine. Must have no payments/profit! no grace period in most other countries with significant markets ―must file somewhere before a public “divulgation”

Cannot file more than one year after “public disclosure” or other barring events, including :

publication anywhere or public presentation in the US– written or oral

sale, or “offer for sale” (“containing the invention”), including products of the invention in the US

exhibitions

use by the owner, in some cases (example, a product sold using a secret machine prevents patenting machine later)

limited exception for public use for experimental purposes

beta testing by a potential customer–circumstances determine. Must have no payments/profit!

no grace period in most other countries with significant markets ―must file somewhere before a public “divulgation”

Parts of a Patent Three basic parts: drawings showing an embodiment written description claims Contents: Title Cross Reference to Related Applications Field of the Invention Background Summary of the Invention Brief Description of the Drawings Detailed Description Claims Abstract Drawings At least one named inventor needed

Three basic parts:

drawings showing an embodiment

written description

claims

Contents:

Title

Cross Reference to Related Applications

Field of the Invention

Background

Summary of the Invention

Brief Description of the Drawings

Detailed Description

Claims

Abstract

Drawings

At least one named inventor needed

A Typical Issued Utility Patent

Deferral Strategy - Provisional Patents A US application for a patent without formal claims, oaths/declarations, or information disclosure (prior art) statement Allows use of the term “patent pending” Is not examined Must file a non-provisional (“full”) application referencing the provisional within 12 months – no extensions ! No amendments allowed, but further provisionals can be filed within initial 12-month period Used to claim priority of the filing date in the utility patent application Must be “enabling” of the inventive concept

A US application for a patent without formal claims, oaths/declarations, or information disclosure (prior art) statement

Allows use of the term “patent pending”

Is not examined

Must file a non-provisional (“full”) application referencing the provisional within 12 months – no extensions !

No amendments allowed, but further provisionals can be filed within initial 12-month period

Used to claim priority of the filing date in the utility patent application

Must be “enabling” of the inventive concept

Deferral Strategy - Provisional Patents Must contain: Complying (enabling) written description complying drawings, if necessary Filing fee - $110 for small entities Cover sheet identifying: application is a provisional application names of all inventors inventors’ residences title of invention name and registration of attorney or agent and docket number correspondence addresses any US Government agency that has a property interest Cover sheet available online at www.uspto.gov/web/forms/sb0016.pdf See www.uspto.gov/web/offices/pac/provapp.htm Fees – see http://www.uspto.gov/web/offices/ac/qs/ope/fee2004dec08.htm#patapp

Must contain:

Complying (enabling) written description

complying drawings, if necessary

Filing fee - $110 for small entities

Cover sheet identifying:

application is a provisional application

names of all inventors

inventors’ residences

title of invention

name and registration of attorney or agent and docket number

correspondence addresses

any US Government agency that has a property interest

Cover sheet available online at www.uspto.gov/web/forms/sb0016.pdf

See www.uspto.gov/web/offices/pac/provapp.htm

Fees – see http://www.uspto.gov/web/offices/ac/qs/ope/fee2004dec08.htm#patapp

What about foreign patents? Under treaties, you have a one year grace period to file foreign patents based on your U.S. patent PCT application is good option to keep cost reasonable Eventual Cost: HOW MUCH DO YOU HAVE?

Under treaties, you have a one year grace period to file foreign patents based on your U.S. patent

PCT application is good option to keep cost reasonable

Eventual Cost:

HOW MUCH DO YOU HAVE?

Importance of Patents Offensive Deter Competitors Marking/marketing Threat of Litigation Defensive Own different technologies Capital Asset Licensing/Cross-licensing A bargaining chip

Offensive

Deter Competitors

Marking/marketing

Threat of Litigation

Defensive

Own different technologies

Capital Asset

Licensing/Cross-licensing

A bargaining chip

Trademarks & Servicemarks trademark - used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others servicemark - identifies and distinguishes the source of a service rather than a product. used to prevent others from using a confusingly similar mark may be registered with the USPTO but also exist under “common law” based upon use and distinctiveness

trademark - used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others

servicemark - identifies and distinguishes the source of a service rather than a product.

used to prevent others from using a confusingly similar mark

may be registered with the USPTO but also exist under “common law” based upon use and distinctiveness

Any identification used to distinguish goods or services Word, phrase or name Slogan Design or symbol Picture Device (Pep Boys Heads, Bob’s Big Boy) Product/Packaging Shape (aka “trade dress”) Sound, musical phrase Color (if highly distinctive: “pink” for insulation) Smell (very rare)

Word, phrase or name

Slogan

Design or symbol

Picture

Device (Pep Boys Heads, Bob’s Big Boy)

Product/Packaging Shape (aka “trade dress”)

Sound, musical phrase

Color (if highly distinctive: “pink” for insulation)

Smell (very rare)

A Federally Registered “Word” Trademark

™ vs. ® Common law : ™ is used in the US to give notice of alleged common law rights (Lanham Act Section 43(a) protects common law marks) First to adopt gets right Limited to the geographical location of the use in commerce Federal Protection : ® is used in the US once a trademark has been federally registered (USPTO) First to file – actual use, or intent to use Can stop anyone in the US from future use of the mark for the goods and services in the manner protected by the Federal Registration For use prior to filing the federal application, can limit future use to the places that someone used the mark in commerce prior to the filing date

Common law :

™ is used in the US to give notice of alleged common law rights (Lanham Act Section 43(a) protects common law marks)

First to adopt gets right

Limited to the geographical location of the use in commerce

Federal Protection :

® is used in the US once a trademark has been federally registered (USPTO)

First to file – actual use, or intent to use

Can stop anyone in the US from future use of the mark for the goods and services in the manner protected by the Federal Registration

For use prior to filing the federal application, can limit future use to the places that someone used the mark in commerce prior to the filing date

Copyrights federal statutory protection provided to authors of “original works of authorship” including: literary and certain other intellectual works, both published and unpublished dramatic and musical works, including pantomimes and choreographic works musical artistic software code pictorial, graphic, and sculptural works motion pictures and other audiovisual works sound recordings architectural works an exclusive right to: reproduce the work prepare derivative works distribute copies or phonorecords of the copyrighted work perform or display the copyrighted work publicly

federal statutory protection

provided to authors of “original works of authorship” including:

literary and certain other intellectual works, both published and unpublished

dramatic and musical works, including pantomimes and choreographic works musical

artistic

software code

pictorial, graphic, and sculptural works

motion pictures and other audiovisual works

sound recordings

architectural works

an exclusive right to:

reproduce the work

prepare derivative works

distribute copies or phonorecords of the copyrighted work

perform or display the copyrighted work publicly

Copyrights as to the work or derivative works, can be used to prevent others from: Using (don’t play it!) Copying (don’t duplicate or download it!) Distributing (don’t give it to your friends!) Performing (don’t play it at parties!) Displaying (don’t put it on a site or poster!) protects form of expression rather than subject matter of the writing (software code not the idea of the program) registered with Library of Congress’ Copyright Office but exists w/o registering

as to the work or derivative works, can be used to prevent others from:

Using (don’t play it!)

Copying (don’t duplicate or download it!)

Distributing (don’t give it to your friends!)

Performing (don’t play it at parties!)

Displaying (don’t put it on a site or poster!)

protects form of expression rather than subject matter of the writing (software code not the idea of the program)

registered with Library of Congress’ Copyright Office but exists w/o registering

Requirements Originality Requirement Not just copied Must contain a minimal amount of creativity Excluded: words, short phrases, slogans Fixation Requirement Must be fixed in tangible form prior to qualifying for copyright protection (fixed embodiment) Not granted to ideas, procedures, processes, systems, methods of operation, concepts, principles, or discoveries Term-Life of the Author + 70 years or at least 95 years for corporate works (Mickey Mouse!)

Originality Requirement

Not just copied

Must contain a minimal amount of creativity

Excluded: words, short phrases, slogans

Fixation Requirement

Must be fixed in tangible form prior to qualifying for copyright protection (fixed embodiment)

Not granted to ideas, procedures, processes, systems, methods of operation, concepts, principles, or discoveries

Term-Life of the Author + 70 years or at least 95 years for corporate works (Mickey Mouse!)

Trade Secrets confidential information – knowledge, inventions, strategies and processes – held secret and protected if improperly disclosed or illegally acquired by a competitor, the owner has resort to trade secret law eternal – may have no limit on term unless otherwise stated certain protection procedures are required – no protection against discovery by fair means (including independent invention and reverse engineering) use non-disclosure and non-compete agreements to perfect any trade secret rights

confidential information – knowledge, inventions, strategies and processes – held secret and protected

if improperly disclosed or illegally acquired by a competitor, the owner has resort to trade secret law

eternal – may have no limit on term unless otherwise stated

certain protection procedures are required – no protection against discovery by fair means (including independent invention and reverse engineering)

use non-disclosure and non-compete agreements to perfect any trade secret rights

Confidentiality Agreements binding legal agreement – must have statutory elements contains a promise by the receiver of information to: prevent unauthorized use or disclosure – use only as intended limit use and disclosure to parties identified in the agreement, or obtain written permission to disclose (need-to-know basis) Describe/list the information being protected. mark all items disclosed as “confidential.” Number them. should include preservation of intellectual property rights, current and future include a reasonable term and expiration. Avoid ambiguity (e.g. verbal representations).

binding legal agreement – must have statutory elements

contains a promise by the receiver of information to:

prevent unauthorized use or disclosure – use only as intended

limit use and disclosure to parties identified in the agreement, or obtain written permission to disclose (need-to-know basis)

Describe/list the information being protected.

mark all items disclosed as “confidential.” Number them.

should include preservation of intellectual property rights, current and future

include a reasonable term and expiration. Avoid ambiguity (e.g. verbal representations).

Tips for smooth dealings with your patent attorney and a “clean” patent filing

Maintain inventor’s notebook with dates and witness signatures Provide the attorney with a standard invention disclosure form with all important data

Maintain inventor’s notebook with dates and witness signatures

Provide the attorney with a standard invention disclosure form with all important data

Ask for quotes before authorizing work Maintain Communications

Ask for quotes before authorizing work

Maintain Communications

CONCLUSION AND YOUR QUESTIONS

Contact Information William A. Loginov Principal Attorney Loginov & Associates, PLLC 10 Water Street Concord, NH 03301 (603) 369-4146 (direct) (603) 591-6325 (mobile) [email_address] www.loginovlaw.com

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