intellectual property what is it and why should an ...moreno/senior design 2016 2017/class... ·...

IP 101:

What Every Engineer Needs to Know Before Entering the Workplace

presented to

University of Connecticut

Alex Tsarouhas

Assistant Intellectual Property Counsel

Pratt & Whitney

March 6, 2017

Intellectual Property

What Is It And Why Should An Engineer Care?

1

This document contains no technical data subject to the EAR or the ITAR.

Agenda

• Background

• What is Intellectual Property (“IP”)?

• Patents

• Trade Secrets

• Trademarks

• Copyrights

• Why Does IP Matter?

• Employee IP Agreements 2

This page contains no technical data subject to the EAR or the ITAR.

Background

• Background


• Patents

• Trade Secrets

• Trademarks

• Copyrights




Background

The Pennsylvania State University (‘98) – BS Mechanical Engineering

GE - Transportations Systems, Erie, PA (’99-’02) – Diesel Engine Design Engineer, TLP

The John Marshall Law School, Chicago (‘05) – Licensed to practice CT (AHC), OH, and U.S. PTO

Fay Sharpe LLP, Cleveland, OH (’05-’11) – Associate IP Attorney

UTC: UTC Aerospace Systems (‘11) / Pratt & Whitney (’16) – Assistant IP Counsel, Fan/Compressor tech, M&A

4


Agenda

• Background


• Patents

• Trade Secrets

• Trademarks

• Copyrights




What is Intellectual Property (“IP”)

•Patents

•Trade Secrets

•Trademarks

•Copyrights

6


Patents: what is a patent?

• A patent is a 20-year legal

monopoly that is granted in

exchange for the inventor’s

disclosure of the invention,

including the best known way

to achieve the invention.

7


Art. 1, § 8

“The Congress shall have

power … to promote the

progress of science and

useful arts, by securing for

limited times to authors

and inventors the

exclusive right to their

writings and discoveries”

Patents: what is patentable?

• Patentable Subject Matter includes:

• “Any new and useful:

– process,

– machine,

– manufacture,

– composition of matter, or

– improvement thereof”

8


Patents: what is patentable?

• As a general rule

– If you hear, “Hey, that’s a good idea.”

• Then there may be a patentable invention

– although it could already be patented by another

• Does not need to be legendary

– Very simple ideas can be worthy of patents

9


Patents: what rights to they provide?

Patentee has the right

to exclude others

from:

• Making

• Using

• Selling

• Offering for

sale

• Importing

that which is covered by

the patent claims.

10


Patents

The right to “exclude others” does not mean that a patentee can:

• Use;

• Make;

• Sell;

• Offer for sale; or

• Import/export

the patented invention!!!

By “practicing” the patented invention a patentee

could:

• Break the law or violate other regulations

(e.g., food and drugs, firearms, etc.)

• Infringe the IP rights of another

(e.g., a patent owned by another that is directed to an underlying

aspect of the patentee’s invention) 11


Patentability v. Infringement

Company X

Patented “a foldable knife”

Company Y

Patented “a multi-purpose,

foldable knife”

Y’s knife is patentably distinct from X’s (it’s a foldable knife + other features),

but still infringes X’s patent 12


Patent infringement

• How do you avoid infringing a

known patent?

• Design around √

– Engineering + Legal

• Use “old” technology √

– e.g., from expired patents

• License ?

• Invalidate ?

13


When should I file for a patent?

• ASAP – it’s now a “first to file” world.

• File before any use, sale, or disclosure to any third party

– outside the U.S., filing after any public disclosure may be

impossible;

– United States: must file within 1 year of use, sale, or

disclosure.

14


Typical patent filing process

1. Submit Invention Disclosure

• Encourage submission - inventor recognition (cash award, plaque, luncheons)

• Who is an inventor?

– Inventor must make a substantial contribution to the conception or

reduction to practice (more than merely carrying out direction of others

or applying level of skill in the art) of at least one claim in a patent

– Not typically an inventor if only contribution is:

• Identifying a problem to be solved

• Suggesting the end result

• Reducing the invention to practice using the ordinary level of

skill in the art (e.g., drafting, assembly, manufacturing)

• Managing the inventors, program, etc.

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• What should the invention disclosure contain?

– Prior art/past practices

– Problems encountered and/or to be solved

– Solution/differences over prior art

– Benefits of the invention

– Describe invention in text and drawings – informal disclosure

2. Review by Patent Committee

• Committees review invention disclosures

– Decide whether to file application

• Based on various factors – cost, make, sell,

competitors, license

– Weigh required disclosure for application against ability to

detect infringement, balance may weigh in favor of keeping

invention secret


16


3. Preparation of Patent Application

Attorneys/Agents work with inventors to prepare and file application

• Patent Application Requirements

– “Shall contain

• a written description of the invention …

• in such … terms as to enable any person skilled in

the art … to make and use the same,

• and shall set forth the best mode contemplated by

the inventor of carrying out his invention.”

– “Each individual … has a duty of candor and good faith …

to disclose to the Office all information known … to be

material to patentability.”


17


4. File Patent Application

• As soon as is practical

• Before statutory bars

5. Review by Patent Office

6. Attorneys/Agents then argue with Patent Office for allowance (this stage is

known as “prosecution”)

7. Grant by Patent Office (or continued prosecution, appeal, or abandonment

by applicant)

• Most patent applications take >3 years from filing to allowance!!!


18


Trade Secrets

Subject Matter

• “Information which is used in one’s business, and which gives an opportunity to obtain an advantage over competitors who do not know or use it”

19


Trade Secrets

Protecting trade secrets

1. Affix an appropriate marking (“Document Proprietary Rights Notice”):

“This document is the property of United Technologies Corporation

(UTC). You may not possess, use, copy or disclose this document

or any information in it, for any purpose, including without limitation

to design, manufacture or repair parts, or obtain FAA or other

government approval to do so, without UTC’s express written

permission. Neither receipt nor possession of this document alone,

from any source, constitutes such permission. Possession, use,

copying or disclosure by anyone without UTC’s express written

permission is not authorized and may result in criminal and/ or civil

liability.”

20


Trademarks

Any word, name, symbol, and/or device used:

• to identify and distinguish goods/services from those of others

• to indicate the source of the goods/services

Examples at Pratt & UTC:

• P&W

• PRATT & WHITNEY

• Kidde

• Chubb

Use trademarks as adjectives, NOT nouns

21


Trademarks

• Rights

• To prevent others from using the mark

(or an imitation) in a manner likely:

– to cause confusion

– to cause mistake

– to deceive

• To prevent dilution of a famous mark,

e.g., P&W.

22


Copyrights

Protect original works of authorship fixed in any

tangible medium of expression.

Term - 70 years after the death of author. If a work of

corporate authorship, 95 years from publication or

120 years from creation, whichever expires first.

23


Copyrights

Copyright holder has the rights:

• To reproduce the work

• To prepare a derivative work

• To distribute (i.e. sell, rent, lend) copies

• To perform/display the work publicly

How do we protect P&W copyrights?

• Affix markings: ©2017, United Technologies Corporation

24


Agenda

• Background


• Patents

• Trade Secrets

• Trademarks

• Copyrights




What can we do with IP?

• Force competitors to develop their own IP

– Design around takes $, time, and no

guarantee of success

• Help ensure fair return on investments

• Generate revenue – licensing

26


If you infringe another’s IP…

• JUDGMENTS:

How Much? When Who

$873,000,000 1991 Polaroid Eastman Kodak

$700,000,000 1997 Digital Intel

$500,000,000+ 1990 Texas Instruments Toshiba

$424,000,000+ 2002 Medical Instrument. Elekta

$265,000,000 2002 Cadence Design Systems

Synopsys/Avant

27


If you misappropriate trade secrets…

Pratt & Whitney worker sentenced for selling proprietary information

BRIDGEPORT, Conn. (AP) - A Somers man was sentenced to 16 months in prison Thursday for accessing a protected computer to obtain design drawings to assemble a Pratt & Whitney jet engine, authorities said.

Anthony F. DiLorenzo, 49, was a contract employee at the East-Hartford-based jet engine manufacturer. He admitted in U.S. District Court in Bridgeport that last year he solicited help from a Pratt & Whitney employee to access a computer system and print hundreds of design drawings for a complete set of tools required to assemble and take apart Pratt & Whitney's JT8D engine.

DiLorenzo sold the drawings to an unidentified individual at a Florida aircraft supply company for about $5,000, prosecutors said. The Florida firm sold the drawings to an affiliated company for about $25,000.

The loss to Pratt & Whitney due to the theft was at least $250,000, prosecutors said.

The Pratt & Whitney JT8D engine is no longer in production, but many are in military and commercial use. The market for engine repair and overhaul is lucrative.

DiLorenzo also admitted that to obstruct the investigation, he instructed the Pratt & Whitney employee who printed the drawings at his request to not inform authorities about his request or involvement.

Prosecutors did not identify the employee.

28


Agenda

• Background


• Patents

• Trade Secrets

• Trademarks

• Copyrights




Employee IP Agreements

Typical Terms

• All trade secrets, all inventions, all works of authorship, and all

other business or technical information created or conceived by

employee while employed by the company and: (a) created on

company time; or (b) related to the existing or contemplated

business or research of the company; or (c) created using

company property (e.g., laptop), belong to the company.

• Employees will promptly disclose and assign to the company all

trade secrets, inventions, works of authorship, and information

which belongs to the company.

• Employees will maintain the confidentiality of Employer’s

proprietary information even after termination of employment.

30


(1) For how long is a patent typically enforceable?

a) 10 years

b) 15 years

c) 20 years

d) 25 years

31

Let’s test your knowledge


(1) C

32

Answer


(2) True or false: Getting a patent gives you the

right to practice the invention?

33



(2) False

34

Answer


(3) How long do trade secrets last?

a) 20 years regardless of what measures you take

b) 20 years, but only if you take and maintain confidentiality

measures

c) indefinitely regardless of what measures you take

d) indefinitely, but only if you take and maintain confidentiality

measures

35



(3) D

36

Answer


(4) True or False: You can enforce a United

States patent in Canada.

37



(4) False

38

Answer


(5) Which of the following is NOT a right you

obtain when obtaining a patent?

a) Right to exclude others from making

b) Right to exclude others from importing

c) Right to exclude others from selling

d) Right to exclude others from photographing

39



(5) D

40

Answer


(6) True or false: an invention can be protected at

the same time by both patent and trade secret

protection.

41



(6) False

42

Answer


(7) Which of the following is NOT a term of most

Intellectual Property Agreements between an

employer and an employee?

a) Requirement to assign an invention to the employer

b) Requirement to not work for competitors

c) Requirement to maintain the confidentiality of information

d) Acknowledgment that the company owns any inventions

43



(7) B

44

Answer


(8) What is the primary purpose of a trademark:

a) Identify the source of goods

b) Provide a marketing vehicle

c) Ensure that others cannot copy the product

d) Protect functional aspects of an invention

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(8) A

46

Answer


(9) How long after the first public use of an

invention does a person have to file for a U.S.

patent application?

a) 0 years, you must file before making a public disclosure

b) 6 months

c) 12 months

d) 2 years

47



(9) C

48

Answer


(10) True or false: You must only disclose one

way of practicing the invention and it does not

necessarily have to be the best mode of practicing

the invention.

49



(10) False

50

Answer


51

Questions?


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