Intellectual Property Triage

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Realistically, innovators must work within a budget to protect IP. This presentation explores IP basics and considerations when determining whether and how to allocate limited funds for maximum IP protection.


<ul><li> 1. 2012 E.H.SchiermanELIZABETH HERBST SCHIERMANUS Patent Attorney Based on Presentations for Idaho Technology Council and Univ. Idaho College of Law, Business Law Assn</li></ul> <p> 2. Widget 2.0: Inventors have developed a new andimproved widget Started a partnership No employees Hired designers for: Logo Website Product packaging Expecting big salesInstructions:in U.S. and overseesLots and lots and lots of fine printThe hypothetical is meant to be purely fictitious.Any similarity to real inventions, businesses, etc. is unintended 3. Inventions Article of Manufacture Process Machine Composition of matter Ornamental design forarticle of manufacture Plants In Widget 2.0 World: Patent Types, e.g.:(1) Article the widget Utility(2) Process method of making (3) Composition polymer from Designwhich widget is made Plant 4. Symbols indicating source, origin, sponsorship, or endorsementof 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 atrademarkIn Widget 2.0 World: (1) Plain word mark: WIDGET 2.0 (2) Stylized mark: Note: www.widget.*** - not a trademark 5. Work of original authorship fixed intangible form E.g.: packaging, website design, source code,photographs, advertisements In Widget 2.0 World:(1) Product packaging design(2) Website design(3) Logo design Instructions: Lots and lots and lots of fine print 6. U.S. Patents: Invent File Patent Application w/ U.S.P.T.O. wait years (~3 yrs, avg.)CREATION OF Receive issued U.S. patentPATENT RIGHTS (Pay maintenance fees) This is the ONLY path to establishing patent rights for an invention 7. Trademarks:POTENTIAL Use in commerce in distinctiveCREATION OFmannerCOMMON LAWOptionallyTRADEMARK RIGHTS File Trademark Application (before or after starting use) w/ State CREATION OF REGISTERED w/ U.S.P.T.O. TRADEMARK wait months (~11 mos., avg.) RIGHTS Receive Trademark Registration (Renew Registration every 5-10 years) 8. Copyrights: Fix creative work in tangible form File Copyright Applicationw/ U.S. Copyright Office CREATION OF COPYRIGHT RIGHTS wait a few months(2.5 6.5 mos., avg.) CREATION OF Receive Registration Certificate ABILITY TO SUE FOR COPYRIGHT INFRINGEMENT Note: Registration is not a prerequisite to having copyright rights, but it is prerequisite to take legal action against an infringer. 9. (Utility) Patents: Rights: Exclusive right, in the U.S. to: Make, Use, Sell, Offer to sell, and Importthe patented invention as claimed Duration: 20 years from earliest filing date (except provisionalfiling date) 10. (Utility) Patents: Value of Formal Protection: ONLY means to acquire patent rights &amp; 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 11. Trademarks: Rights: Exclusive right, within area*,to stop junior users from adopting or using marks likely to causeconfusion 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) 12. 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? 13. 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 afterpublication Values: Can stop copyright infringers 14. Copyrights: Values: Statutory damages ($750-$150,000) if copyright registered w/i 3 mos. of publication or beforeinfringement begins Required before lawsuit to stop copyright infringer Clarifies ownership In Widget 2.0 World: Something to license/assign Important because thehired designers (independent Eases licensing?contractors) may own thecopyright rights absent anassignment to the business. 15. 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) 16. Utility Patent Avg. Complexity Start with Nonprovisional$12,000Nonp. Prep$10,000&amp; FilingLarge EntitySmall EntityCost Incurred$8,000 Maintenance Fees$6,000 Totals over 20 year period: Prosecution to~ $27,000 large entity$4,000 Allowance ~ $17,000 small entity$2,000$002 4 68 1012 14 16 18 20 Time (years) 17. Utility Patent Avg. ComplexityStart with Provisional$12,000Prov. App. Prep &amp; Filing$10,000Nonprov. App. Prep &amp; FilingCost Incurred$8,000Large EntityMaintenance FeesSmall Entity$6,000Totals over 21 year period:Prosecution to~ $30,000 large entity$4,000 Allowance~ $18,000 small entity$2,000$-0 24 6810 12 14 16 18 20 Time (years) 18. Trademarks: Common Law: Free State Registration: ID Secy 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 19. Copyrights Initial Creation: Free Registration: Application Fees: $35-$65 Maintenance: $0 20. To File Patent Application: U.S. Patent Protection: 1 year from1st public disclosure* not extendable *may include sales, offers for sale, publicuse, publications, presentations, non-confidentialdiscussions, 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 21. To File Trademark Application: None as long as trademark is in use 22. 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 yrsafter publication However, to get statutory damages 3 months from publication or before infringement begins 23. Considerations: Does businesss 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 assetsfor funding? 24. Prioritize Patent Protection as High if: Unique product (or method/composition/etc.)is an important asset Someone with skill in the field of art couldcopy the product (or method/composition) Competition likely to grow or copy upon examining the product (ormethod/composition) There is even a slight possibility that the business may want patentprotection (Because patent rights may be forever lost if the business/inventor waits too long to file a patent application) 25. 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 trademarkafter business adopted its trademark 26. 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 fromcopying the code Business knows of copying of its creative work by another and thecopying is hurting the business 27. Instructions:Lots and lots and lots of fine print Widget 2.0 Hypothetical: With $15,000 budget:1) Patent search online - $02) Nonprov. Patent App. Prep w/ Search - $10,000-Widget article; Method of making; &amp; 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&amp; register copyrights - $600TOTAL: $12,880 Start saving for prosecution of trademark application in ~6 mos. &amp;patent application in ~2+ yrs 28. Instructions: Lots and lots and lots of fine print 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, andproduct packaging assigned from designers - $200TOTAL: $5,000 Start saving for nonprov. patent app. costs w/i 6 mos.-1 yr. &amp; forfiling federal trademark application 29. Instructions: Lots and lots and lots of fine print 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, andproduct packaging assigned from designers - $200TOTAL: $325 Start saving for nonprov. patent app. costs w/i 6 mos.-1 yr. &amp; forfiling federal trademark application 30. Instructions: Lots and lots and lots of fine print Find reliable guidance early! Dont 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 businesss time and effort can save it money if it: Trains employees/contractors to keep good records Provides its IP atty 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 meanpermanent loss of rights 31. Find me on: LinkedIn:Twitter: Herbst SchiermanUS Patent AttorneyThe information in this presentation is of a general nature. It is not directed to any specific circumstanceand should not be taken as legal advice. 2012 E.H.Schierman </p>


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