Transcript Fundamentals of Intellectual Property Presenter Jeffrey Siew United States Patent and Trademark Office Objectives This module presents the fundamentals of intellectual property, including the following topics: (1)

Fundamentals of
Intellectual Property
Presenter
Jeffrey Siew
United States Patent and Trademark Office
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Objectives
This module presents the fundamentals of
intellectual property, including the following topics:
(1) Definition of Different Types of Intellectual
Property (IP)
(2) Strategic Application of IP
(3) Rights reserved to the rightful IP owner
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Patented Products
Can you identify a patented product on this desk?
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Intellectual Property Identified
LCD monitor
LCD stand
Printer
PC speaker
Phone
Staple remover
Stapler
Post-it Notes
2 hole punch
iPhone
Binder clip
Computer mouse pad
Ergonomic keyboard
Keyboard support
Computer mouse
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Types of Property
Real property
Intellectual property
®
Personal property
®
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What is Intellectual Property
4 types of intellectual property:
(1)Copyright
(2)Trademark
(3)Trade Secrets
(4)Patent
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Copyright
Definition:
A form of protection provided to the authors of
“original works of authorship”
Protects:
Literary, dramatic, musical, artistic, and certain
other intellectual works
Duration:
In general, author’s life + 70 years
For more information on copyright,
visit the U.S. Copyright Office website at
http://www.copyright.gov
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Trademark
Definition:
Any word, name, symbol, or device, or any
combination, used, or intended to be used, in
commerce to identify and distinguish the
goods or services
Protects:
All of the above & logo, banner, sound, smell, etc.
Duration:
10-year terms with 10-year renewal terms
®
®
®
®
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Trademark Registration #: GE: 3386370, Kellogg’s : 3445274, LG: 3250589, FedEx: 3413407, Starbucks: 3428128, IBM: 3002164
Trade Secrets
Definition:
Any information that provides economic value
that is not in the public domain and that has
been reasonably kept secret
Protects:
Formulas, patterns, compilations, programs,
devices, methods, techniques or processes
Duration:
As long as they remain secret
Trademark Registration #: Coca Cola: 3252896, KFC: 2800403
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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
Patent
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Patent Fundamentals
U.S. patent system is a quid pro quo
The inventor discloses the
invention to the public in
specific terms
The government grants
exclusive rights to the inventor
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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
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Design Patent
Applications
• Design patents protect the
way an object appears,
ornamental features of
invention
• No provisional application
• 15 year term, from issue
• No maintenance fees
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Designs
Design may consist in configuration or ornamentation or both.
In re Schnell, 8 USPQ 19 (CCPA 1931)
(1)
Surface ornamentation
applied to
an article
(2)
Configuration
embodied in an article
(3)
Configuration
and Surface
ornamentation for an
article
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Design vs. Utility
• A design patent protects the way an article
looks;
• A utility patent protects the way an article is
used or works
• Both design and utility patents may be
obtained for the same article.
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Filing for a Patent – Why bother?
• Creation of Assets (To Sell or License,
Collateral for Financing)
• Building Block for Future Inventions
• Source of Historical Information
• Contribution to Society
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Who Enforces Patents?
Infringement: Violation of any of the patent
rights – unauthorized use, sale, offer for
sale, or importation into the U.S. of the
invention
Enforcement: Private right enforced by
Patent Owner, not the government. U.S.
Patent enforceable only in U.S.
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Overlapping IP Protection
• These IP rights are often confused.
– There are some similarities, but these IP rights are
different and serve different purposes.
• But they need not be mutually exclusive.
– For any one product, more than one form of IP protection
may apply, as long as it meets the requirements of the
laws that govern that form of protection.
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Overlapping IP Protection
For a CLASSIC example of
overlapping IP protection….
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Overlapping IP Protection:
The Coca-Cola Contour Bottle
In 1915, the Root Glass
Company won a Coca-Cola
Company contest for a bottle
design that would be
recognizable to everyone,
even by touch in the dark.
The first design patent on the
“hobble skirt” contour bottle
was granted on Dec. 25, 1923,
to the bottle manufacturer
(known as “the Christmas
bottles”).
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Overlapping IP Protection:
The Coca-Cola Contour Bottle
The second design
patent for the contour
bottle was granted to the
Coca-Cola Company on
August 3, 1937,
preventing imitation of the
bottle for another 14
years.
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Overlapping IP Protection:
The Coca-Cola Contour Bottle
• The bottle shape became so well known that it
became synonymous with the Coca-Cola product.
• The Coca-Cola Company sought and obtained a
federal trademark registration for its contour bottle
shape on April 12, 1960, enabling the company to
safeguard the bottle design indefinitely.
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Overlapping IP Protection:
The Coca-Cola Contour Bottle
•Trademark: COCA-COLA, COKE, shape of bottle
•Copyright: Advertising and Promotion
•Trade Secret: The formula (SHHH! It’s a secret!)
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Utility Patent Applications
Provisional:
• One year period
• Filed for filing date priority
• No claims required
• Not examined, so no patent
Non-Provisional:
• 20-year patent protection
from filing date
• Examined for patentability
• Claims required
• Not allowed for design
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#1 Problem – Territoriality
• Failure to understand that almost all countries of the
world require trademark registration to have effective
trademark protection AND failure to understand that a
patent is required in any country where a company
wants to enforce its patent rights.
– Use of a trademark on goods or services without
registration does not provide effective trademark
protection, except in a handful of countries (like the U.S.).
– The concept of “prior art” may not protect a patent holder
against issuance of an infringing patent; the patent holder
must have a patent in that country to enforce against
infringers.
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Protection Outside the U.S.
Using a U.S. patent application for priority
elsewhere:
Paris Convention:
Filing individual patent applications in the US and each other
country where protection is desired, based upon Paris
Convention priority (Must file all applications within 12months of filing the U.S. patent application)
Instead of, or in addition to claiming priority, may file under
the:
Patent Cooperation Treaty:
Filing a single application designating all the countries which
are part of the treaty
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Who is entitled to a patent?
Throughout the world
The first (inventor) to file a complete application is entitled to
a patent, provided the invention was not copied from
another
In some countries
Grace Period
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Overview of Website
Helpful links for independent inventors
Click on
“Inventors”
-
General Information
Introductory Guides
FAQs
Upcoming Events
Registered Attorneys & Complaints Against
Inventors Assistance Center
and much more…
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Inventor Resources
• Wide variety of
resources to help the
independent inventor
• FAQs, Online Chat
Transcripts, events,
and more
•
www.uspto.gov/inventors
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Inventors Eye
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Contacts For Direct Help
• Inventor Assistance Center (IAC) for general
questions about the application process
• Telephone: (571) 272-1000 or (800) 786-9199,
8:30 a.m. - 5:00 p.m., eastern time M-F
• Office of Innovation Development:
• (571) 272-8877
• [email protected]
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Ideas for Your Ideas
Collegiate Inventors Competition
http://www.invent.org/collegiate/
National Collegiate Inventors
and Innovators Alliance
http://nciia.org/competitions
The Lemelson-MIT Awards for
Invention and Innovation
http://web.mit.edu/invent/a-main.html
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Questions
Jeffrey Siew
[email protected]
USPTO Website:
www.uspto.gov
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