1. Intellectual Property
Joseph E. Maenner
Maenner & Associates, LLC

2. What is a patent?
The right to exclude others from making, using or selling a patented product or method for a limited amount of time
The exclusionary rights of a patent are defined by the claims (numbered paragraphs at the end of the patent)

3. Why bother to patent? Can exclude competitors from marketplace
Time/resources/$$ for competitor to design around your patent is time/resources/$$ that your competitor is not spending elsewhere.
Can use your patents to cross-license with a competitor
A patent portfolio looks impressive to investors

4. How long does a patent last?
GATT (June 8, 1995) – A subsisting patent or a pending patent application lasts for the longer of 17 years from issue or 20 years from earliest claimed filing date.*
Post-GATT – 20 years from the earliest claimed filing date.*
Post-AIPA (May 29, 2000) – Patent Office delays can add day-for-day extensions after the 20 years.
Pharmaceutical patents can be extended as a result of delays in FDA approval
Design patent – 14 years; no maintenance fees
*Subject to payment of maintenance fees (3-1/2, 7-1/2, 11-1/2 years)

5. What are the statutory requirements for a patent?
Patentable subject matter: “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” (35 U.S.C. §101).
“Anything under the sun made by man.” USSC.
Novel (35 U.S.C. §102*)
Not obvious (35 U.S.C. §103*)
Enabling disclosure; best mode of making/using invention is disclosed (35 U.S.C. §112)
* Most common claim rejections by U.S. Patent and Trademark Office (USPTO)

6. Novelty (35 USC §102) U.S. – relative novelty
Inventor has 1 year from first public disclosure, sale, or offer for sale within which to file a patent application, or he is forever barred from obtaining a patent on that invention.
Rest of world – as a rule, absolute novelty
Must file a patent application somewhere in the world prior to first public disclosure, sale, or offer for sale

7. How much/how long to patent?
Provisional patent application fee (good for one year/must be followed up by non-provisional/PCT filing) -- $260/$130/$65
U.S. non-provisional fee starts at about $1,600/$730/$400
PCT filing fees start at about $3,500 (plus fees for each elected country)
Search, formal drawing, assignment fees run between about $1,000 - $1,500
Attorney fees (depending on complexity/scope) – between about $5,000-$15,000
Typical pendency in USPTO is about 3 to 5 years
Can pay a fee (about $3,000 for a small entity) to accelerate examination

8. First inventor to file A person shall be entitled to a patent unless –
(1) the claimed invention was patented, described in a printed publication, or in
public use, on sale, or otherwise available to the public before the effective filing date
of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or an
application for patent published were deemed published under section 122 (b), in
which the patent or application, as the case may be, names and other inventor and
was effectively filed before the effective filing date of the claimed invention.
Exceptions
A disclosure made one year or less before the effective filing date of the claimed
invention shall not be prior art to the claimed invention if-
(A) the disclosure was made by the inventor or joint inventor or by another who
obtained the patent matter disclosed directly or indirectly from the inventor or joint
inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed
by the inventor or joint inventor or another who obtained the subject matter
disclosed directly or indirectly from the inventor or joint inventor.

9. Using Patents as a Research Tool
“Keep your friends close, and your enemies closer”
-Sun Tzu
Research the USPTO database to find out the state of your
particular technology
Can locate issued patents and printed publications
(use pat2pdf.org to print patents)
Can save a lot of time and effort

10. So now that you have a patent, what do you do with it?
Make/use/sell patented product (maybe)
Assign patent
License patent
Exclusive
Non-exclusive
Cross-license (potential Antitrust issues)
Licensing pools (potential Antitrust issues)
Sue for infringement

11. A patent does not guarantee that you can make/sell the patented product
It is possible to obtain a patent on a product, but someone else’s patent may bar you from making/selling your patented product (dominant patent)

12. Patent Infringement
A product infringes a claim of a patent if every element/limitation in a claim is present in the product, either literally or by equivalent
The product may include more features than are included in the claim and still infringe the claim
The product may look nothing like the patented invention and still infringe the claim

13. Defenses to patent infringement
Non-infringement
Product is missing an element recited in claim
Patent expired
Invalidity
Prior art
Unclean hands/fraud on the Patent Office
On-sale bar
Laches
Patent owner waited too long to enforce patent

14. Infringement clearance
The most important patent to your well-being may be someone else’s patent!
A third party patent that covers your product can keep that product out of the market and can cost you a bundle!!!
Prior to the introduction of a new product to market, it is advisable to obtain an opinion of non-infringement from competent counsel.

15. Trade Secrets

16. What is a trade secret? 18 Pa.C.S.A. §3930
“The whole or any portion or phase of any scientific or technical information,
design, process, procedure, formula or improvement or customer or sales information
or any other privileged or confidential information which is of value and has been
specifically identified by the owner as of a confidential character, and which has not
been published or otherwise become a matter of general public knowledge.
There shall be a rebuttable presumption that scientific or technical information or
customer or sales information or any other privileged or confidential information
has not been published or otherwise become a matter of general public knowledge
when the owner thereof takes measures to prevent it from becoming available to
persons other than those selected by him to have access thereto for limited purposes.”
18 Pa.C.S.A. §3930

17. Subject matter eligible for trade secret protection
Concrete information -- process or device
Non-technical information -- sales data; marketing plans;
bid price information
Combinations
Customer lists
Some courts have held that a trade secret must be in continuous use to be protected as such
Some courts have held that “negative information” is protectable as a trade secret

18. What is the difference between a patent and a trade secret
Lifetime
Patent - 20 years from priority date
Trade Secret - if properly protected -- forever
Disclosure
Patent - tell the world
Trade Secret - tell no one
Practice by others
Patent - Not until patent expires
Trade Secret - When legally discovered by others

19. How to decide whether to patent or keep a trade secret
If others can copy something by looking at it
(device, method of operating device):
patent it
If others cannot copy something by looking at it and
it is important to the business (process):
protect as trade secret

20. Factors to be considered in determining whether your client’s information is a trade secret
The extent to which the information is known outside of
the client’s business
The extent to which it is known by employees and others
involved in his business
The extent of measures taken by him to guard the secrecy
of the information
The value of the information to him and his competitors
The amount of effort or money expended by him in
developing the information
The ease or difficulty with which the information could
be properly acquired or duplicated by others

21. How to maintain trade secrecy
Mark technical documentation as “CONFIDENTIAL”
Establish codes
Restrict access (employee and visitor)
Do not discuss secret information outside your “group”
Perform trade secret review prior to public disclosure
patent application
marketing material
journal/technical articles
Remind departing employees of duty of non-disclosure

22. How to maintain trade secrecy (cont’d)
Separate steps
personally
physically
on paper
on computer
Restrict access to documentation
passwords
lock and key

23. How to legally obtain someone else’s trade secret
Independent development
lab notebooks
Public domain
patents; publications; general knowledge; combination
Reverse engineering
Innocent receipt

24. Who can misappropriate a trade secret?
Outsider
Industrial espionage
Unauthorized disclosure via NDA or license
Insider
Departed employee
Current employee

25. Remedies for trade secret misappropriation
Damages
Compensatory
Punitive
Attorney fees and court costs
Injunction
However, damage may have already been done
Seizure of Tangible Embodiments of the Secrets
Criminal penalties
Pennsylvania law Pa.C.S.A. §3930
Federal law U.S.C. §1832
(15/$10,000,000; 10/$5,000,000)

26. New employee’s use of prior employer’s information
New employees often come from competitors
A new employee may know some of his previous employer’s secrets
You should let the new employee know (verbally and in writing) that you do not want the employee to use or discuss those secrets (“Do not tell me how you did it in your last job.”)

27. TRADEMARKS

28. What is a Trademark?
A distinctive mark of authenticity that links a product or service with its vendor or service provider

29. What is a Trademark? A word - Photon-X® A name - McDonald’s®
A design - Microsoft’s flying window
A phrase – “We bring good things to life”
used by a manufacturer/dealer to
distinguish his product/service from competitors
Rolls Royce automobile v. Yugo automobile

30. Types of marks Trademarks (Exxon®) Service marks (Marriott®)
Collective marks (ANSI®)
Certification marks (UL®)

31. How to identify a trademark
TM - Trademark not registered (common law)
SM - Service mark not registered (common law)
® - Trademark/Service mark registered in USPTO

32. Strengths of Marks Fanciful - EXXON, pentium Strong
Arbitrary - Apple (computers),
Old Crow (whiskey)
Suggestive - Sno-Rake (snow shovel)
Descriptive - Quik-Print (printing services)* Weak
Generic - aspirin, escalator**
*Registrable with proof of secondary meaning
**Not registrable

33. How to use a trademark A trademark is an adjective
Microsoft ® software
Xerox ® copier
Failure to properly use a trademark risks the trademark
falling into the public domain
aspirin
escalator
cellophane
thermos
google (?)

34. Family of marks - very powerful
McDonald’s
McMuffin
McRib
McShake
‘R’ Us
Toys ‘R’ Us
Kids ‘R’ Us
Babies ‘R’ Us
Apple
iPod
iPhone
iTouch

35. Registers Principal Supplemental
Benefits
Nationwide protection from date of registration
Incontestability (after five years of continuous use)
Warning to others
Bars imports
Protection against counterfeiting
Treble damages for deliberate infringement
Evidentiary advantages
Facilitates settlement
Use of ®
Proof of ownership - valuable intangible asset
Supplemental
used for marks not registrable on the Principal Register (descriptive)
but capable of distinguishing applicant’s goods

36. Application Based on Use
Actual use
mark has been used in commerce which is
regulated by Congress
interstate
international
Indian tribes
Intent to Use
mark has not yet been used in commerce which
is regulated by Congress
must file a verified statement of use within 6 months
after date of Notice of Allowance (can file up to 5
six month extensions)

37. Remedies for trademark infringement
Damages
- compensatory
- corrective advertising
- punitive
Injunction
Disclaimers
“not associated with “
Recalls and destruction

38. Conclusion Trademarks are a valuable asset
Always use the ® in conjunction with a registered trademark
Trademarks must be properly and continuously used to avoid
losing them to the public domain
Use the trademark as an adjective
Use the trademark liberally on goods, packaging, presentations,
website, etc.
Keep alert for potentially infringing marks

39. Copyrights

40. Copyrights What is a copyright? What can be protected by a copyright?
A right to copy
What can be protected by a copyright?
Literary works -Musical works
Dramatic works -Choreographic works
Vessel hull designs -Pictorial/sculptural works
Motion pictures -Sound recordings
Architectural works -Mask works

41. Notice and registration
© 2013, Maenner & Associates, LLC
A copyright need not be registered to affix the copyright notice
However, a copyright must be registered to bring a lawsuit

42. How to apply for a copyright registration
Go to Copyright Office website (
Go to “How to Register a Work” and select form for the type of work that you have
Follow the directions and fill out the form
Pay the fee (typically about $40.00)
File the form, pay the fee, and submit the required specimen(s) to the Copyright Office

43. How long does a copyright last?
For works created on/after January 1, 1978:
For single/joint authors: Life of longest living author + 70 years
For works made for hire: shorter of 95 years from first publication or 120 years from creation

44. Sale of a copyrighted work
Does not amount to sale of the copyright in the work
I can sell the original of a (copyrighted) work of art to you, but you do not get the right to make/sell copies of the work (Absent an agreement to the contrary, I still retain that right)

45. Why bother to copyright?
Copyrights are CHEAP!!!!!
Copyrights last for a LONG time!!!
The copyright laws allow for actual damages/infringer profits OR statutory damages

46. Copyright infringement
Standard is “Access” + “Substantial Similarity”
Plaintiff may elect statutory damages in lieu of actual damages (up to $150,000 for willful infringement)
Criminal penalties are also provided

47. Defenses to allegation of copyright infringement
No access
If Defendant can prove that the creation of the allegedly infringing article was done without access to the copyrighted article, even if the two articles are identical, then it is likely that infringement will not be found
Fair use
Educational use, non-profit use, parody

48. Computer Software Shrink-wrap Licenses
“By removing the shrink-wrap over this package, you agree to the terms of the license herein.”
License can be for single user or multiple user
Oftentimes, software licensed for a single user is installed on multiple computers
Software industry is cracking down on violators

49. Compulsory Licensing “Cover versions” of songs
One band can record their own version of someone else’s song without permission
However, must serve notice on the copyright owner within 30 days of making the recording and before distribution of the recording
Must also pay a royalty of a statutory amount per recording or a statutory amount per minute or fraction thereof

50. Termination of transfer/license of copyrighted work
For any work other than work made for hire
For a transfer/license of rights executed after January 1, 1978
In a period between 35 and 40 years from date of transfer/license of the rights, author or author’s estate may terminate transfer/license without compensation to purchaser/licensee

51. Copyright Counseling Advice
Register copyrightable material
It’s cheap
It may be a VERY profitable investment
DO NOT use material from which you do not know the origin
A copyright for the material may still be in force
Using the material may turn out to be VERY costly if the copyright owner sees your use
The Internet makes it VERY easy for a copyright owner to see who may be infringing his/her work

52. Contact information:
Joseph E. Maenner
Maenner & Associates, LLC
2723 Stockley Lane
Downingtown, Pa