Intellectual Property

1. Intellectual Property William W. Aylor Registered Patent Attorney

2. Patent Pending Presentation Outline Intellectual Property • Copyrights • Patents • Trademarks • Trade Dress • Trade Secrets

3. U.S. Constitution Addresses Intellectual Property • The Founding Fathers of the U.S. realized the importance of Intellectual Property for the development of our country. • U.S. Constitution Article 1, Section 8, clause 8 states: “The Congress shall have power… to promote the Progress of Science and Useful Arts, by securing for limited times to the authors and inventors the exclusive right to their respective writings and discoveries”

4. What is “Intellectual Property” (IP)? • Property created by intellect, not naturally occurring. • Although intangible, IP is considered property in the sense it can be owned, sold, licensed (rented), willed, etc. • Types of Intellectual Property • Copyrights • Patents • Trademarks • Trade Secrets

5. COPYRIGHTS ©2006 West Virginia University

6. Copyright • An idea is not protected here, but rather the tangible expression of the idea. • Exists immediately whenever an expression is fixed in a tangible medium (paper, electronic media storage, etc.) • Requirements: • The expression must be original • The expression must be creative (minimally) but not simply a compilation of data (e.g. a telephone book). • The expression must be put into a tangible form.

7. Copyright (cont’d) • Rights – excludes others from copying, distributing, displaying publicly or making a derivative from the original work. • Registration with the U.S Copyright Office is not necessary to create right, but is necessary to enforce the right in court for damage remedies. • Life of Copyright - life of the author plus 70 years or, as work for hire - 95 years from publication or 120 years from creation, whichever occurs first.

8. Petition * Abstract * Abandoned * Specification * Claims * Office Action * Amendments * Allowance * Final Rejection * Appeal * Drawings * Anticipated * PATENTS

9. Patents • Temporary monopoly extended to the patent owner by the government. • The monopoly is granted in exchange for full disclosure of new technologies. • Patent rights exclude others from making, using, selling, or importing that which is patented. • Does NOT give the owner the right to make, use, sell, or import that which is patented.

10. Anatomy of a Patent Inventor, Assignee, Attorney/Agent , Filing Date, Priority Date, Issue Date, etc. Administrative Details Prior Art References Patents, publications, web pages, etc. Detailed Disclosure Reveals Best Mode Enables one of ordinary skill in art to make or use invention. All elements in claims should be shown. Detailed Drawing(s) Claims Defines Legal Scope Every word has significant legal meaning.

11. Types of Patents • Utility Patent - Under federal statute, any person who "invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent." • Design Patent - protects the way an article looks but not how it functions. • Plant Patent - may be granted when a new variety of plant is discovered and asexually reproduced.

12. Utility Patents • The idea must have all of attributes of 35 U.S.C. §§ 101, 102, 103 and 112 to be patentable: • Novelty—new. • Non-obviousness—not anticipated by one “skilled in the art” in view of all of the prior art, Graham v. John Deere Co. • Utility—In re Bana. Important in biotech/chem applications. • Statutory Subject Matter--Diamond v. Chakrabarty. • Best Mode—at the time of filing • Enablement—skilled in the art could make/use • Written Description—skilled in the art can understand the inventor’s boundaries and ownership. • More is needed in Enablement and Written Description in difficult technologies.

13. Utility Patents (cont’d) • Statutory Bars to Patentability 35 U.S.C. § 102 • Public disclosure or use more than one year prior to filing patent application. • A public disclosure of the invention immediately bars patentability in many foreign countries. • Offer for sale more than one year prior to filing patent application. Public Disclosure

14. Utility Patents (cont’d) • Types of Utility Patent Applications • Provisional Patent Application • Available since 1995 to provide a fast and inexpensive way to establish a filing date and patent pending status. • Non-Provisional Patent Application • Standard patent application in the Patent Office. May refer to a previously filed provisional application for priority date.

15. Specific Types of Utility Patents • Machine • Process • Article of Manufacture • Composition of Matter

16. Specific Types of Utility Patents (cont’d) • Machine • An apparatus, device, or mechanism that will operate to produce a desired result. • Components may all be known, however, the machine may still be patentable if it is configured and operated in a novel, useful, and non-obvious manner.

17. Specific Types of Utility Patents (cont’d) • Process • A method consisting of one or more steps. Focuses on the steps required to produce the desired result rather than any physical materials used to achieve the result. • Diamond v. Diehr—use of mathematics in a process. • State Street Bank and Trust Co. v. Signature Financial Group, Inc.—Business methods

18. Specific Types of Utility Patents (cont’d) • Article of Manufacture • Any article made for use from raw or processed materials. The articles are not machines, but rather generally more simple structures. Examples include a toothbrush, a paperweight, a table, etc.

19. Specific Types of Utility Patents (cont’d) • Composition of Matter • May include physical mixtures or chemical compounds. The substance is the patentable element, not the form of the matter or process for manufacturing it. A bar of soap is an article of manufacture but the soap compound itself is a composition of matter.

20. Design Patents • Design patents protect a new, original, and ornamental design for an article of manufacture. • Design patents do not protect the utility of the article. • The term of a design patent is 14 years.

21. Plant Patents • Protects any new and characteristically distinct variety of plant that has been invented or discovered and asexually reproduced (without seeds). • Plant must not be discovered in an uncultivated area (i.e. can’t be discovered in the wild). • The term of a plant patent is 20 years from the date of filing.

22. Trademarks

23. Trademarks • A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. Also includes sounds, fragrance and color. • Registration with the USPTO is required to enforce the trademark in a court of law. • Rights in a federally-registered trademark can last indefinitely if the owner continues to use the mark on or in connection with the goods and/or services in the registration and files all necessary documentation in the USPTO at the appropriate times.

24. Trademarks (cont’d) • The symbol ® may only be used after trademark registration is complete. • The symbol TM may be used immediately by unregistered trademarks to claim rights to the mark and to provide notice to the public of your claim.

25. Trademarks (cont’d) • Advantages of Registering Trademarks • Federal Courts may prevent others from improperly using your trademarks on their goods and services. • May receive up to three times your damages (“treble damages”) if a party is found by a court to be willfully using or infringing on your mark. • May file applications for trademark registrations in other countries, based upon your United States Registration. • May prevent people and/or businesses from other countries from shipping goods into the United States that falsely display your mark on their goods.

26. Trademarks Registration Issues • Proposed mark causes confusion with a previously registered mark. • Proposed mark is immoral, deceptive, or scandalous. • Proposed mark disparages, falsely suggests a connection with or brings into contempt or disrepute: persons, institutions, beliefs or national symbols. • Proposed mark consists of the name, portrait or signature of particular living person without his or her consent. • Proposed mark is just a surname. • Proposed mark misdescribes the goods or services to which it is applied.

27. Trade Dress • Protects the design and packaging of materials. • Similar to Trademark in that protection for identification of a product to consumers. • No registration necessary, but can register as a trademark.

28. Trade Secrets

29. Trade Secrets—State Law • Information, including a formula, pattern, compilation of data, program device, method, technique, or process, that: • (i) Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and • (ii) Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

30. Uniform Trade Secret Act • Federal Law currently adopted by 38 jurisdictions. • Information must not be “generally known or readily ascertainable.” • Information must have “independent economic value due to its secrecy.” • The trade secret holder must use “reasonable measures under the circumstances to protect.”