1. 1. INTELLECTUAL PROPERTY 101 Sponsored by SmartUp Presented By Yuri L. Eliezer, Esq. Intellectual Property Attorney
2. 2. About Me Georgia Tech Electrical Engineer Georgia State Lawyer Registered Patent Attorney Entrepreneur: In Practice since 2005 Co-Founded SmartUp Partner at FOUNDERS LEGAL (Bekiares Eliezer LLP)
3. 3. How This Presentation May Help You You Have Rights! Use them or lose them! In todays economy, intangible assets constitute nearly 80% of corporate value. Investors look for Intellectual Property Competitors look for Intellectual Property Your Goal: Identify how your assets can be secured Leverage Intellectual Property Law to secure those assets Think BIG! May not seem important to you today, but you need to take the right steps today!
4. 4. Overview of Two-Day Workshop IP 101: Patents Trademarks Copyrights - Trade Secrets Software What Protection is available? Steps to take in order to Secure Your IP Timing Deadlines - Formalities Sharing your IP Rights Partners - Joint-Ownership Licensing NDAs
5. 5. FEDERAL LAW (MORE PROTECTION THAN STATE LAW) 1. PATENT LAW Protection for your Innovation 2. TRADEMARK LAW Protection for your Brand and Reputation 3. COPYRIGHT LAW Protection of your Artistic Works and Authorship 4. TRADE SECRET LAW Protection for your Secrets
6. 6. The Fruits of Your Genius Breaking it down into Categories Ideas and Inventions (Patents) Artistic Works (Copyrights) Brand and Reputation (Trademarks) Confidential Information (Trade Secrets)
7. 7. What Type of IP Protection?
8. 8. Trademark Basics Add: Class Distinction
9. 9. What Is A Trademark? A source identifier that indicates that this product was made by you. Anything a businesses uses to distinguish its goods from those of another: Name / Logo / Slogan Packaging Design Sound Scent Consumers use trade symbols to identify goods and services and the attributes that go along with them.
10. 10. Why do we have Trademark Law? 1. Quality Control 2. Protection from Consumer Confusion 3. Protection from Unfair Competition
11. 11. Trademark Basics The more distinctive a mark, the greater protection provided under the law. Fandango Marks that must acquire secondary meaning: Descriptive marks PIZZA RESTAURANT Geographic marks NEW YORK PIZZA Generic marks Not protectable under trademark law they describe the basic nature of the good or service, e.g. Apple Co. for a company selling apples.
12. 12. Trademark Basics Trademarks last the lifetime of the product/service ...But Trademarks can be lost If not enforced Government Gives you a Badge, Use it or Lose it! If they become generic by improper use A [your trademark here] brand [product or service] Famous Generic Trademarks Allen wrench, aspirin, bikini, formica, frisbie, cola, granola, hoagie, dry ice, windsurfer, windbreaker, rollerblades (almost), white-out, Zamboni, zipper. Find more Generics at www.answers.com/topic/genericized-trademark.
13. 13. Typical Trademark Mistakes Picking a bad mark and sticking with it Searches should always be done prior to selecting a mark. Your trademark need not, and probably should not, be your business name. Domain name issues! Waiting to File Federal Registration Loss of rights if someone files before you Waiting to Enforce your TM rights Fast enforcement saves money (infringer has less money invested so more likely to adopt different mark) and prevents loss of rights from non-enforcement Can put Rights on Hold 1(B) Filing
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15. 15. Patent Basics
16. 16. Types of Patents Utility Patents Process A method of making plastic comprising... Composition of Matter A plastic having the formula... Machine A display device comprising a screen and knobs,... Manufacture A tire comprising a steel belt encased in... Design Patents Covers ornamental features on an article of manufacture Substantial overlap with copyright (sculpture), trademark (e.g., logos in soles of shoes) and trade dress (e.g., Coca-Cola fluted bottle) 14 year term Plant Patents Genetically Modified Healthy Vegetables
17. 17. Requirements for Patentability To be patentable, an invention must be: 1) Useful (35 U.S.C. 101) 2) New (35 U.S.C. 102) 3) Non-Obvious (35 U.S.C. 103) Must be the First to File!
18. 18. Utility Patents What is Patentable? Any new and useful: process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. 20 Year Term! Gives you a long time to enforce! Put Competitors on Notice, Enforce when you have the money!
19. 19. Design Patents What is Patentable? Covers ornamental features on an article of manufacture Substantial overlap with copyright (sculpture), trademark (e.g., logos in soles of shoes) and trade dress (e.g., Coca-Cola fluted bottle) 14 year term
20. 20. What is Not Patentable? 1. Abstract Ideas/Mathematical Algorithms in and of themselves, not a thing 2. Natural Occurring Phenomena 3. Laws of Nature 4. You must know how to MAKE and USE your invention, even if its only a conceptual understanding.
21. 21. A Patent is a Right to Exclude Others!
22. 22. Typical Patent Mistakes Public Disclosure 12 months in US No grace period in many other Countries Waiting to Get Patent Protection Must be the First to File! Up-Hill Battle if you are beat to the patent-filing!
23. 23. What Type of IP Protection?
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26. 26. Copyrights Basics Emphasize non-functional
27. 27. What Qualifies for Copyright Protection? Literature - Musical Compositions Sound Recordings Whats the difference between Recordings and Musical Composition? Pictures / Paintings / Photographs / Sculptures But not the Subject Matter therein, only the artistic rendition Motion Pictures Choreography - Architecture Weird Ones: Vessel Hulls Integrated Circuitry Software Literary Work? Functional? -> Patents!
28. 28. What does Copyright Law Protect Against? A Copyright is a property right in an original work of authorship that is fixed in a tangible medium. Protects you from unauthorized: Reproduction Adaptation Distribution Performance Display
29. 29. COPYRIGHTS A Copyright is a property right in an original work of authorship that is fixed in a tangible medium. Duration: Life of the author plus 70/95/120 years (a rats nest of exceptions) Protect Non-Functional Articles In general, Internationally Recognized Registration can be Retroactive
30. 30. Copyright Considerations Ideas and Concepts are not Copyrightable Fill-in-the-Blank Forms Not Copyrightable Characters, Themes, Plots do qualify Derivative Works require Licensing! Transformative works do not require Licensing. Work-For-Hire -> Rights must still be transferred. Joint Authorship leads to disputes. Transfer rights to a single entity.
31. 31. What Type of IP Protection?
32. 32. Trade Secret Basics
33. 33. What is a Trade Secret? Information, including a formula, pattern, compilation, program, device, method, technique or process that: (1) derives independent economic value, actual or potential, from not being generally known to, and not being easily ascertainable by proper means, by other persons who can obtain economic value from its disclosure or use, and (2) is the subject of efforts that are reasonable under circumstances to maintain its secrecy.
34. 34. Trade Secret Examples A proprietary blend of chemicals, secret ingredient (e.g. formula for Coca- Cola). A manufacturing process or know-how. A customer list. A supplier list. Inside business and financial information - Marketing plan, customer data, budgets, profit margins, forecasts, internal software, etc.
35. 35. Trade Secret Basics Must be treated as a secret. Must be generally unknown to competitors. If stolen, you can sue for damages Difficult cases to win without prior planning A lawsuit cant put the genie back into the bottle
36. 36. LETS TEST YOUR SKILLS Person With Most Correct Answer wins an Arduino
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54. 54. What type of IP Protection? Traffic Monitoring
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56. 56. What type of IP Protection? Automated Vehicle
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59. 59. What type of IP Protection? (TELEPORTATION MACHINE)
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61. 61. What type of IP Protection? Heat-Seeking Missile
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63. 63. What Do All of These Have in Common? ASPRIN ESCALATOR DRY ICE HEROIN VIDEOTAPE TRAMPOLINE
64. 64. The Leahy-Smith America Invents Act Before First Inventor to Invent gets Patent Now First Inventor to File gets Patent Pros: Places laws in conformity with International Standard Cons: No More Poor Mans Patent Race to the Patent Office! Benefits larger Corporations Two Remedies Importance of Provisional Patents Micro-entity Status
65. 65. Provisional Patent Saves Your Spot in Line for a Period of 1 Year Lets you claim Patent-Pending Must be followed with a non-provisional patent application within 1 year
66. 66. Joint Inventorship / Joint Authorship Each Inventor/Author owns 100% of the rights! Prone to disputes! Solution: Form an entity with your partners Assign the IP rights to the entity Rights governed by the entity, not individuals Partnership Agreement should account for IP rights upon dissolution
67. 67. Common Misconceptions of IP Law Youre Automatically Protected Securing your IP requires affirmative action and is time sensitive. You Exclusively Own the IP Rights to Employee and Sub-Contractor Projects IP rights must be transferred, in writing, to the Company. IP = Easy Money Properly managing your IP Portfolio is essential. Cyber Squatters
68. 68. My Contact Info Yuri Eliezer, Esq. Yuri@SmartupLegal.com 404.537.3669 @Smartup_ ATLANTA TECH VILLAGE Suite 555 3423 Piedmont Road, NE Atlanta, GA 30305 To schedule a consultation with me please visit SmartupLegal.com and click consult!