inventing 101- protecting the rights to your invention
TRANSCRIPT
Inventing 101: The Nuts and Bolts of Developing and Protecting an
Invention Presented by: Crissa Seymour Cook
Friday, March 6, 2015
Inventing 101: The Nuts & Bolts of Developing and Protecting an Invention
Presented ByCrissa A. Seymour CookHovey Williams LLP
Becky HundleyIntellectual Property & Contracts ManagerWSU | Ventures
Friday, March 6, 2015Business Booster Series
© Hovey Williams LLP 2015
Types of Intellectual Property
Patents- Inventions: *Processes/Methods *Machines/Devices
Copyrights- Expressions of Ideas: *Writings *Music *Art Works
Types of Intellectual Property
Trademarks- Source indicators
Trade Secrets- Confidential information that has economic value: *Formulas *Customer lists *Manufacturing processes
Patents: Practical Inventions
Patentable Subject Matter Includes… “Anything under the sun that is made by man”
Exclusions: laws of nature, physical phenomena, abstract ideas
Statutory classes: processes, machines, manufactures, compositions of matter Compositions, devices, techniques, new
combinations, software, new uses of an old thing
Basic Requirements
Novel: loosely means that the invention is new and is non-identical to the previous work of others. (35 USC § 102)
Non-obvious: means that the invention must not be an obvious extension of what has gone before. (35 USC § 103)
- Obviousness is measured by what one of ordinary skill in the subject area of the patent would have known at the time of the invention.
Technology Commercialization Process
Enablement
Demonstration
Development
Pro
babi
lity
of S
ucce
ss
Effort/Time
Idea Prototype IP License
Invention Disclosure
Commercialization Stage
Commercialization Steps
Technology Rights Ownership
By virtue of being the inventor or being the Assignee of the technology
Control of the IP, subject to any encumbrances Can be joint or sole ownership
Joint inventors have an undivided interest in the “whole” invention. Don’t be shy about requiring a written agreement with your co-
inventors
License The right to use the IP (typically granted by contract)
Exclusive License Licensor agrees to not provide licenses to any third party.
Non-Exclusive License Licensor reserves the right to provide licenses to third parties, or
reserves the right to practice the invention itself.
Technology Assessment “Maturity” of technology?
What is the stage of the technology? What additional research or development is necessary to
refine technology? What needs to be done to reach market?
Patentability? Can the technology be protected under IP? Cost/benefit analysis of pursuing IP protection.
Market opportunities? Is there commercial merit to the technology? What is the cost/benefit of pursuing? (cost of goods vs.
return on investment) Is there a buyer for this technology?
Technology Development Document your idea
Write down all of the details about your invention What is it? How does it work? What’s it used for? How will it be made? Have you run any experiments?
Use a journal and have it signed by a confidential witness. Any bound notebook whose pages are numbered
consecutively and can't be removed or reinserted can be used for this purpose.
Date your records and keep them in a confidential place
Technology Development Research your idea
Just because you have never seen your idea in a store doesn’t mean someone else hasn’t already thought of it. Search for your idea
You can perform a rudimentary patent search for free at www.uspto.gov as well as at www.google.com/patents
Don’t forget about general internet searching (“Google” it)
Research your market: costs, logistics, licensees, or potential commercial partners
Consider to what extent you can push development on your own, or if you need to “sell early” to have a larger company further development.
Technology Development “Prototype” It/File for IP Protection
Can work on these simultaneously. Balance IP filing strategy/timing with the “stage” of your
invention. Sketches, computer-generated models, 3-D mock-ups,
working examples/experiments help further your inventive idea, but will also be used in the IP filing process.
Note: You will almost always discover a flaw in your original design or think of a new feature you would like to add. Ideally, you want to work out these kinks before filing the patent application – once the application is filed, it is generally too late to include them.
Technology Development
Market It How will you sell it? To whom will you sell it?
End user/customer Intermediate party
Can you market it on your own? Do you need a larger industry partner? Do you already have contacts in that industry?
Getting Started:The Invention Disclosure
The Invention Disclosure Form Naming Inventors:
Inventors – who else helped you develop the invention?
Inventors must play a role in conception of invention Brief description of invention Prior public disclosures? Known “prior art”? Dates of conception/reduction to practice
(inventor’s journal) Supplemental Materials
The Invention Disclosure
What to disclose? Your disclosure needs to enable and describe the
invention. Identification of full scope of invention Explore metes & bounds; alternative or non-
optimized versions Any proposed presentations should be included
with disclosure form Materials and methods for any working examples
– very important Drawings, flow diagrams, etc.
The Invention Disclosure
Major requirements: Written Description Enablement Best Mode Definiteness
Inverse relationship to the level of “predictability” of the field of the invention and amount of information necessary for full disclosure
The Invention Disclosure
Written Description Description of invention that demonstrates possession
of invention as of filing date Enablement
Describe how to make and use invention Working examples, Prophetic examples Figures
Some experimentation permitted…must not be undue Best mode of carrying out the invention Definiteness: clarity and precision in terminology
Disclosure considerations
Patent application disclosure must enable one skilled in the art to practice the invention without undue additional experimentation “show your work” Use drawings where helpful or essential (picture worth a
thousand words) Best mode must be disclosed
Patent application must adequately describe the invention (sufficient species to claim a genus)
Important that disclosure/application is as comprehensive as possible.
Disclosure considerations
Once the application is filed there is virtually no possibility to add to it or update it*
* Added material is considered “new matter” and gets a new filing date.
Patent application will and should be more comprehensive than a manuscript (the patent attorney will help with this)
Patent application should be submitted BEFORE public presentations, disclosures, meetings, etc.
The Drawings
Drawings helpful to understanding the invention
Process flows, machinery schematics, blue prints, etc.
How/when to disclose?
Begin process somewhere between idea stage and “prototype” stage.
Consider any impending public disclosures you plan to make.
WSU has specific protocols and an invention disclosure form that can be used.
Process OverviewConsider this timeline in planning when to file a provisional, when to submit a manuscript, etc.
Estimated time when proof of concept may be close to finished (major questions answered)
Work backwards so that provisional filing isn’t premature
Examination process
Patent examiner will do a search based upon the application claims to see if there is any “prior art” related to the invention Claims describe the metes and bounds of protection “A method of…” “A composition comprising…” Claimed invention must be: new, non-obvious as compared to
one or more prior art references located by Examiner. Examiner issues an “Office Action” – patent attorney will have
a back and forth exchange with the Examiner regarding the prior art and the claims. Inventor input can be helpful – “person skilled in the art” Often Examiner is misinterpreting the claims, the prior art, or both
America Invents Act
Went into effect March 16, 2013 The AIA significantly encourages early
(and often) filing of patent applications U.S. patent laws are now based on “first-
inventor-to-file” rather than “first-to-invent”
America Invents Act
File patent applications before any public disclosure, use, presentation, commercial activity, sale, etc. involving the invention Limited “grace period” still available Balance of filing too early vs. waiting too long to
file on invention. Use Non-Disclosure Agreements
consistently, but do not rely on NDAs to fully protect invention
America Invents Act
Invention Disclosure forms and streamlined protocol for submitting and evaluating inventions becomes even more important under the AIA
How long does it take to get a patent?
Technology Dependent Computer/Software/Electronic Business Method
3 - 5 years (typical) Electrical
2 - 4 years (typical) Chemical
1.5 - 3 years (typical) Mechanical
1.5 - 3 years (typical)
What does it cost?
Provisional application ~$1,000-$4,000 Preparation and filing of a non-provisional
application ~ $8,000-$10,000 Examination ~ $5,000-?? – depends on your
examiner! Issuance ~ $1,000-$2,000 fees Maintenance fees are due periodically during
life of patent or it will expire.
What does it cost?
International protection? Depends on the country $2,500-$10,000 just for filing in certain countries
(including translation costs) Prosecution adds another $5,000-??? per country International portfolios cost tens of thousands of
dollars to pursue.
Is getting a patent worth it?
Some Factors to Consider1. Commercial Value
Market size and acceptance Profit margin attributable to exclusivity Likelihood of copying (Barriers to entry: capital,
physical, legal, technical)
2. Patentability Novelty and nonobviousness Breadth of protection available
3. Licensing Possibilities
4. Defensive Use in Litigation and Cross-licensing
Protecting an Invention
Consult with a patent attorney Beware - Invention Promotion Firms:
http://www.uspto.gov/inventors/scam_prevention/index.jsp
www.ftc.gov www.bbb.org
Common Patent Misconceptions
A patent gives you the right to use or make the invention.
Patented products are better than unpatented products.
If I find a new use for an old product, I can get a patent on the product.
Resources:
USPTO website (free) www.uspto.gov Free searching -
http://www.uspto.gov/patents/process/search/ Patent Agent/Attorney search –
https://oedci.uspto.gov/OEDCI/
Google patents (free) www.google.com/patents
“Free Patents Online” website – “pdf” images http://www.freepatentsonline.com/search.html
Trademarks
Trademarks
- Assets of a Business – Both as property and as goodwill
- family of marks
- slogans
- designs/icons
- product configuration Marked item must be used in commerce
Examples
Word: WALL STREET JOURNAL, PEPSI Logo:
Letters: WSJ Symbols:
Sounds: MGM’s Lion Roar, NBC’s chimes
Trademarks
You should always use a TM symbol with all trademarks whenever possible. TM may be used for any mark used in commerce.
You should always use the registration symbol (®) for registered trademarks. Removes defense of innocent infringement
Trademarks Must be Distinctive Inherently Distinctive Marks
Fanciful: no other meaning than its meaning as a trademark [STARBUCKS, LEGO, VERIZON]
Arbitrary: words with separate meaning, but nothing to do with the associated product/service [CAMEL for cigarettes, APPLE for computers]
Suggestive: suggest a characteristic of a good or service without actually describing that characteristic. [COPPERTONE for sunblock, EARTHLINK for internet service, JETBLUE for airline service]
Picking a “good” trademark
Cannot be merely Descriptive: Merely identifies a characteristic of the article or service
it marks [WORLD WATERPARK ASSOCIATION] A descriptive mark entitled to federal protection only
if it acquires distinctiveness (aka secondary meaning)
Shown through long-term use, advertising expenditures, sales revenue, testimonials, etc.
Cannot be Generic: Never entitled to trademark protection, i.e. “laptop
computer” [ASPIRIN, ELEVATOR, CELLOPHANE, YO-YO, GOOGLE?] Famous marks must ward against genericide
Picking a “good” trademark
Must Not be Confusingly Similar to Other Marks Factors to consider:
Visually, audibly, or phonetically similar? Starbucks Frappuccino coffee Bar in Missouri received letter for selling a stout
beer dubbed a "Frappicino." Are the goods/services related or competing? Trade channels overlap? Sophistication of consumers
Picking a “good” trademark
Trademark not yet used?
What if you’ve picked out a great trademark, but aren’t yet actually using it?
An intent-to-use application may be filed with the USPTO to “reserve” the mark without first making use of the mark
Proof of actual use is required before the registration will be issued
Federal Trademark Protection
Duration – How long does a federally registered TM last?
Potentially forever if:
(a) continuous use exists;
(b) mark does not become a generic description of the product;
(c) maintenance between 5th & 6th year of registration;
(d) renewals are filed every 10 years;
(e) all licensing of the mark is done with quality control; and
(f) there is no acquiescence to infringement.
Copyrights
Copyrights exist upon creation; benefits of federal registrationAnything that contains creative expression, i.e. advertisement, software, website, movies, songsMay immediately use the copyright notice, i.e. © 2015 HOVEY WILLIAMS LLP
REQUIREMENTS FOR COPYRIGHT PROTECTION
Work of original creative authorship Fixed in a tangible form of expression from
which it can be perceived, reproduced, or otherwise communicated, directly or with aid of a device
Copyrights
1. literary works - fiction and nonfiction books, manuscripts, computer programs, manuals
2. musical works (and accompanying words) -- songs, operas, and musical plays
3. dramatic works -- including music - plays and dramatic readings
4. pantomimed and choreographed works
5. pictorial, graphics, and sculptural works – photos, maps, globes, charts, technical drawings, diagrams, and models
6. motion pictures and audiovisual works
7. sound recordings and records – digital recordings, CDs, MP3s, and tapes
EXCLUSIVE RIGHTS IN COPYRIGHTED WORKS
Right to Reproduce or copy Right to Distribute Right to Display Right to Perform Right to Make Derivative Works
Copyright Protection
Unregistered Copyright Author owns immediately upon creation
Registered Copyright
Author or owner may register copyright to avail itself of statutory rights
- Ability to sue for infringement
- Statutory Damages (Requires Timely Registration) Up to $30,000/infringing work Up to $150,000 for willful infringement of work Attorneys’ fees/legal expenses
Why Register?
Proof of ownership If you don’t register within five years of creating
the work, the court doesn’t have to recognize the registration you do file as self evident proof.
Access to courts Statutory damages
Must register within 3 months of publication or before infringement
Otherwise, only an award of actual damages and profits is available to the copyright owner.
WORKS MADE FOR HIRE
Applies only to specific items – not just any creation made by someone you hired!
Works made by an employee within the course of employment; OR
Works specially ordered pursuant to a signed written work for hire agreement AND if the works are in eligible categories
WORKS FOR HIRE CATEGORIES
contribution to a collective work part of a motion picture or other audiovisual work a translation a supplementary work a compilation an instructional text a test or answer material for a test an atlas
WORK FOR HIRE
Does NOT apply to someone you hired to create a website for your business or product.
Web developer needs to have a contract that assigns the rights to your website and domain name to you.