Download - Intellectual Property Triage

Based on Presentations for Idaho Technology Counciland Univ. Idaho College of Law, Business Law Ass’n

SEPTEMBER 2012

INTELLECTUAL PROPERTY TRIAGEALLOCATING LIMITED RESOURCES FOR MAXIMUM IP PROTECTION

ELIZABETH HERBST SCHIERMANUS Patent Attorney

© 2012 E.H.Schierman

HYPOTHETICAL

Widget 2.0: Inventors have developed a new and

improved widget Started a partnership No employees Hired designers for:

Logo Website Product packaging

Expecting big salesin U.S. and oversees

Instructions:Lots and lots and lots of fine print

The hypothetical is meant to be purely fictitious. Any similarity to real inventions, businesses, etc. is unintended

IP 101 - PATENTS

Inventions Article of Manufacture Process Machine Composition of matter Ornamental design for

article of manufacture Plants

Patent Types, e.g.: Utility Design Plant

In Widget 2.0 World:(1)Article – the widget(2)Process – method of making(3)Composition – polymer from which widget is made

IP 101 - TRADEMARKS

Symbols indicating source, origin, sponsorship, or endorsement of goods or services

E.g.: Product name, business name, logo Note: Trademarks often used in domain names

(www.trademark.***), but the domain name is not necessarily a trademark In Widget 2.0 World:

(1)Plain word mark: WIDGET 2.0(2)Stylized mark:

Note: www.widget.*** - not a trademark

IP 101 - COPYRIGHTS

Work of original authorship fixed intangible form

E.g.: packaging, website design, source code,photographs, advertisementsIn Widget 2.0 World:

(1)Product packaging design(2)Website design(3)Logo design


PATHS TO ENFORCEABLEPROTECTION U.S. Patents:

Invent File Patent Application w/ U.S.P.T.O. …wait years (~3 yrs, avg.)… Receive issued U.S. patent (Pay maintenance fees)

This is the ONLY path to establishing patent rights for an invention

CREATION OF PATENT RIGHTS

PATHS TO ENFORCEABLE PROTECTION Trademarks:

Use in commerce in distinctivemanner

Optionally… File Trademark Application (before or after starting

use) w/ State w/ U.S.P.T.O.

…wait months (~11 mos., avg.)… Receive Trademark Registration (Renew Registration every 5-10 years)

POTENTIALCREATION OF COMMON LAWTRADEMARK RIGHTS

CREATION OF REGISTERED TRADEMARK RIGHTS

PATHS TO ENFORCEABLEPROTECTION Copyrights:

Fix creative work in tangible form File Copyright Application

w/ U.S. Copyright Office …wait a few months

(2.5 – 6.5 mos., avg.) Receive Registration Certificate

Note: Registration is not a prerequisite to having copyright rights, but it is prerequisite to take legal action against an infringer.

CREATION OF COPYRIGHT RIGHTS

CREATION OFABILITY TO SUE FORCOPYRIGHT INFRINGEMENT

PROTECTION BENEFITS

(Utility) Patents: Rights: Exclusive right, in the U.S. to:

Make, Use, Sell, Offer to sell, and Import the patented invention as claimed

Duration: 20 years from earliest filing date (except provisional filing date)

PROTECTION BENEFITS

(Utility) Patents: Value of Formal Protection:

ONLY means to acquire patent rights & stop others from making/using/ selling/importing the patented invention

Can stop patent infringement Something to license – get royalties? Something to assign – sell business? Collateral for loans/investments – build business? Clarify ownership

PROTECTION BENEFITS

Trademarks: Rights: Exclusive right, within area*,

to stop junior users from adopting or using marks likely to cause confusion Common law: *area = area of actual use State Registration: *area = all of State Federal Registration: *area = all of U.S.

Duration – For as long as it is used (registrations maintained)

PROTECTION BENEFITS

Trademarks: Values of Formal Protection:

Expands constructive area of use – broader trademark rights

Avoids conflict? – easier for others to discover your rights

Something to license – start franchises? Something to assign – sell business? Clarifies ownership Easier to stop cyber squatters?

PROTECTION BENEFITS

Copyrights: Rights: Sole right to

Reproduce; Adapt to create derivative works; Distribute copies by sale, rental, lease, lending; Perform/display publicly

Duration: Generally: Life of author + 70 years Work Made for Hire: Earlier of 120 yrs after creation or

95 yrs after publication Values:

Can stop copyright infringers

PROTECTION BENEFITS

Copyrights: Values:

Statutory damages ($750-$150,000)… if copyright registered w/i 3 mos. of publication or before infringement begins

Required before lawsuit to stop copyright infringer Clarifies ownership Something to license/assign Eases licensing?

In Widget 2.0 World:Important – because the hired designers (independentcontractors) may own the copyright rights absent anassignment to the business.

COST FOR PROTECTION

U.S. Utility Patents: Application Preparation:

~$2,000-$15,000+ Filing Fees:

Nonprovisional: $1,260 ($630 s.e.) (or, 1st, Provisional: $250 ($125))

Prosecution: ~ $2,000-$15,000+ Issue Fees: ~$1,770 ($885) Maintenance Fees: ~$1,130 ($565);

~$2,850 ($1,425); ~$4,730 ($2,365) TOTAL – over period of ~ 20 years

~$18,000 ($12,000) – $35,000 ($30,000)

COST TIMELINE:

Utility Patent – Avg. ComplexityStart with Nonprovisional

0 2 4 6 8 10 12 14 16 18 20$0

$2,000

$4,000

$6,000

$8,000

$10,000

$12,000

Large Entity

Small Entity

Nonp. Prep& Filing

Prosecution to Allowance

Maintenance Fees

Time (years)

Cost

In

curr

ed

Totals over 20 year period:~ $27,000 large entity~ $17,000 small entity

COST TIMELINE:

Utility Patent – Avg. ComplexityStart with Provisional

0 2 4 6 8 10 12 14 16 18 20 $-

$2,000

$4,000

$6,000

$8,000

$10,000

$12,000

Large Entity

Small Entity

Nonprov. App. Prep & Filing

Prov. App. Prep & Filing

Prosecution to Allowance

Maintenance Fees

Time (years)

Cost

In

curr

ed

Totals over 21 year period:~ $30,000 large entity~ $18,000 small entity

COST FOR PROTECTION

Trademarks: Common Law: Free State Registration:

ID Sec’y State Fees: $30 Prep. Cost: ~$200-$500 Renewal: $30 every 10 years

Federal Registration: USPTO Fees: $275-$375 Prep. Cost: ~$200-$500 Prosecution: ~$200-$500 Renewal: ~$300-$500 @ 5 years and every 10 years

thereafter

COST FOR PROTECTION

Copyrights Initial Creation: Free Registration:

Application Fees: $35-$65 Maintenance: $0

DEADLINES

To File Patent Application: U.S. Patent Protection: 1 year from

1st public disclosure* – not extendable *may include sales, offers for sale, public use,

publications, presentations, non-confidential discussions, etc.

U.S. Patent System changing in March 2013!! 1st Inventor to File Application No more 1 year grace period on public use, offers

for sale, or otherwise making invention available to public ??

Most other countries: No grace period; Barred from patent if application not filed before public disclosure

DEADLINES

To File Trademark Application: None – as long as trademark is in use

DEADLINES

To File Copyright Application: Generally, none until copyright expires (decades)

Generally - Life of author + 70 years Work Made for Hire: Earlier of 120 yrs after creation

or 95 yrs after publication However, to get statutory damages –

3 months from publication or before infringement begins

PRIORITIZING

Considerations: Does business’s success rely upon any of:

Unique product/services? Good reputation in a highly-competitive market? Selling easily-copied creative work?

Is the IP the business uses owned by someone else (e.g., employees, independent contractors)?

Is the business going to grow into other markets, states, countries?

Will the business be sold or franchised? Does the business want to leverage its assets

for funding?

PRIORITIZING

Prioritize Patent Protection as High if: Unique product (or method/composition/etc.)

is an important asset Someone with skill in the field of art could

copy the product (or method/composition) Competition likely to grow or copy upon examining the

product (or method/composition) There is even a slight possibility that the business may

want patent protection (Because patent rights may be forever lost if the

business/inventor waits too long to file a patent application)

PRIORITIZING

Prioritize Trademark Protection as High if: Reputation is principle selling point Market is highly competitive Trademark (business name, product name, logo, etc.)

may be something that a competitor might think of on its own

Business wants to stop others from registering website addresses (domain names) using the trademark

Business wants to franchise or license others to use the trademark

Business knows of another who started using a similar trademark after business adopted its trademark

PRIORITIZING

Prioritize Copyright Protection as High if: Profits rely upon sales or licensing of creative work Business sells a software product and wants to stop

others from copying the code Business knows of copying of its creative work by

another and the copying is hurting the business

ALLOCATING BUDGET:

Widget 2.0 Hypothetical: With $15,000 budget:

1) Patent search online - $0 2) Nonprov. Patent App. Prep w/ Search - $10,000 -Widget article; Method of making; & Composition3) Nonprov. Filing: - $6304) Trademark Search for WIDGET 2.0 - $8005) File Trademark App. for WIDGET 2.0 - $8506) Get design copyrights assignments from designers & register copyrights - $600TOTAL: $12,880

Start saving for prosecution of trademark application in ~6 mos. & patent application in ~2+ yrs


ALLOCATING BUDGET:

Widget 2.0 Hypothetical: With $5,000 budget:

1) Patent search online - $02) Prov. Patent App. Prep w/ Search - $3,8753) Prov. Filing - $1254) Trademark search for WIDGET 2.0 - $8005) Get copyrights in logo design, website design, and product packaging assigned from designers - $200TOTAL: $5,000

Start saving for nonprov. patent app. costs w/i 6 mos.-1 yr. & for filing federal trademark application


ALLOCATING BUDGET:

Widget 2.0 Hypothetical: With $500 budget:

1) Patent search online - $02) Independent Prov. Filing - $1253) Trademark search online - $04) Get copyrights in logo design, website design, and product packaging assigned from designers - $200TOTAL: $325

Start saving for nonprov. patent app. costs w/i 6 mos.-1 yr. & for filing federal trademark application


TAKE-AWAYS

Find reliable guidance early! Don’t delay in creating an IP Protection Plan There is more than one type of IP protection Budget for an on-going IP protection process A business’s time and effort can save it money if it:

Trains employees/contractors to keep good records Provides its IP att’y with all information without delay Responds on time to the Patent/Trademark/Copyright

Office Quality counts! Get it right the first time!

Mistakes cost money and can mean permanent loss of rights


QUESTIONS ?

Elizabeth Herbst SchiermanUS Patent Attorney

© 2012 E.H.Schierman

Find me on: LinkedIn: Twitter: www.linkedin.com/in/EHSchierman@EHSchierman

The information in this presentation is of a general nature. It is not directed to any specific circumstance and should not be taken as legal advice.

Download - Intellectual Property Triage

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