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A Non-IP Lawyers Guide to Intellectual Property Fraser Clemens Martin & Miller LLC Patent, Trademark, Copyright & Intellectual Property Counsel Perrysburg,

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Presentation on theme: "A Non-IP Lawyers Guide to Intellectual Property Fraser Clemens Martin & Miller LLC Patent, Trademark, Copyright & Intellectual Property Counsel Perrysburg,"— Presentation transcript:

1 A Non-IP Lawyers Guide to Intellectual Property Fraser Clemens Martin & Miller LLC Patent, Trademark, Copyright & Intellectual Property Counsel Perrysburg, Ohio - Detroit, Michigan © 2007 Fraser Clemens Martin & Miller, LLC All rights reserved. Rick Martin Doug Miller

2 09/27/07 Intellectual property can be your clients most valuable asset Types of IP Assets - Patents Trademarks Copyrights Trade Secrets Licenses Other IP Agreements Other IP Topics - Websites Infringement

3 09/27/07 A Look at the IP Forest...

4 09/27/07 Patents A patent covers an invention or an improvement to an invention Invention must be new, useful and unobvious 35 U.S.C. § 101 (see handout) A negative right - the right to exclude others from making, using, or selling the invention The claims identify the invention covered by the patent

5 09/27/07 Types of Patents (Utility) Utility Patent - covers a product or process Can also cover a method of doing business (Business Method Patent) or software algorithms Good for 20 years from the date of filing Prosecution can take 1 to 3 years-or more Periodic maintenance fees are required during life of the patent (3.5 years / 7.5 years / 11.5 years) U.S. patent is good only in the U.S. Expiration = public domain Cost to obtain (order of magnitude) - $4,000 - $10,000 Sample patent (see handout)

6 09/27/07 Types of Patents (Provisional) Much less expensive (perhaps $1,000-$1,500) Not examined Expires after one year Primary benefit - filing date priority Can use Patent Applied For or Patent Pending Must file U.S. utility and foreign applications within 1 year, if at all

7 09/27/07 Types of Patents (Design) Covers the ornamental features of an object Good for 14 years No maintenance fees Similar to a copyright in a 3-dimensional object or work

8 09/27/07 Types of Patents (Plant) Covers the discovery or invention of a distinct, new variety of plant asexually reproduced Discovery of mutated/cross-bred plants, not naturally occurring 20 years from date of application Periodic maintenance fees are required during life of the patent (3.5 / 7.5 / 11.5 years)

9 09/27/07 Foreign Patent Protection Requires a patent in each country Patent Cooperation Treaty - one application for 125+ countries But grant fees required in each country And annuity fees in each country Can be very valuable - and very expensive

10 09/27/07 Patent Searching Prior art searches (see handout) Can help determine whether patentable subject matter exists Some public libraries have resources Patent Office Website Google Patents Firms can provide a search and opinion $500-$1,500 - depending on complexity

11 09/27/07 Patent Prosecution Application filed Patent Office issues Office Actions (months to years later) Negotiations regarding claims (narrowing) Published at 18 months, with exceptions Notice of Allowance and Issue Fee Due ($700-$900) Can appeal an adverse decision

12 09/27/07 Caveats Public disclosure or offer to sell starts the filing clock One year time limit from date of first disclosure/sale Foreign countries require absolute novelty Any public disclosure may destroy absolute novelty - No foreign patent Use non-disclosure agreements

13 09/27/07 Caveats Patents can be expensive - To obtain, maintain, and defend But patents can be extremely valuable Claims can be broadly- or very narrowly - drawn Can often be designed around Possible to obtain a patent that you cant practice Still - very powerful protection

14 09/27/07 Trademarks

15 09/27/07 What do we call this thing? Selection of a trademark is a very important process A trademark clearance search should be conducted (see handout) Searches federal, state, and common law uses of trademarks And trade names And uses on the internet

16 09/27/07 Trademarks - What are they? Any word, name, symbol, device, or combination thereof Lanham Act: 15 U.S.C. § 1052 (see handout) Used to identify your goods And distinguish them from the goods of others Trademarks are source identifiers Can include sounds, smells, product design, or packaging

17 09/27/07 Trademarks – Types Fanciful (coined) XEROX copiers (Very Strong) Arbitrary APPLE computers (Strong) Suggestive TIDE detergent(Weaker) Descriptive LOCK TITE locks (Weakest) Generic words Aspirin, escalator (Not TM)

18 09/27/07 Trademark Rights Rights come from use - not registration But registration is important Sample registration (see handout) Can use ® Use for unregistered, common law marks First use of the mark = priority of rights Duty to police the mark Use it or lose it Rights last forever - as long as the mark is used

19 09/27/07 Trademark Prosecution Clearance search should be conducted Application filed – may be filed on-line Filing basis - actual use Filing Basis - intent to use Same prosecution as actual use, until allowance Then must file Statement of Use Extensions can be obtained for 3 years

20 09/27/07 Trademark Prosecution Trademark Office issues Office Actions See handout Negotiations with the Examining Attorney Published for Opposition Notice of Allowance - Certificate of Registration Renewals - in perpetuity

21 09/27/07 Prosecution Oppositions can be encountered Cancellations after registration Incontestability status after 5 years Costs - under $2,000 to registration Renewals every 10 years - about $500 (single class)

22 09/27/07 Copyrights

23 09/27/07 Copyright Basics Protects the works of authors Protects the expression of the idea, not the idea itself Copyright arises when the work is created The authors of the work own the copyright

24 09/27/07 Copyrights Copyright consists of a bundle of rights: to copy or reproduce the work to distribute the work by sale to control derivative works to perform or display the work 17 U.S.C. § 106 (see handout)

25 09/27/07 Copyrights Basic term - Life of the author plus 70 years But duration can be a complex issue Work made for hire (authorship) Statutory employees within scope of duties,or By third parties under narrow circumstances Use written assignments with any non-employees (ownership) Fair use - a limited defense to copyright infringement Nature of the work Nature of the use Amount of copying Effect on authors market

26 09/27/07 Copyright Registration Voluntary Inexpensive - $45 Downloadable forms (see handout) TX - literary works (see handout) SE - serials PA - performing arts VA - visual arts SR - sound recordings

27 09/27/07 Trade Secrets

28 09/27/07 Trade Secrets and Proprietary Information Any valuable information That gives you a competitive advantage And that is maintained as secret A very important requirement Most trade secrets dont qualify If lost, lost forever Misappropriation is theft State Law ORC , et seq. (see handout) Uniform Trade Secrets Act (UTSA) (see handout)

29 09/27/07 Licenses and Other IP Agreements

30 09/27/07 Licenses Licenses may be granted under: Patent Only for the life of the patent Sample license (see handout) Trademark Good will and quality control provisions required Sample license (see handout) Copyright Must be in writing Copyright reversion after 35 years Trade secret or any technical know-how May be perpetual Royalties

31 09/27/07 Licenses Franchise agreement includes: A trademark license, and A business plan and $$$ royalties In Ohio called business opportunities Watch out for very specific regulatory requirements for franchises at both State and Federal level Violations = rescission, civil, and criminal penalties

32 09/27/07 Other Agreements Non-disclosure agreements (NDAs) Use NDAs liberally to protect your IP Simple NDA (see handout) Complex NDA (see handout) Employee secrecy agreements Non-compete agreements / Non-contact provisions Trade secret protection programs Independent Contractor Agreement Sample ICA (see handout) Assignments (see handout)

33 09/27/07 Key IP Agreement Provisions Disclaimers of warranties Limitations of liabilities Indemnification provisions IP infringement liability can be very substantial Product liability insurance Advertising injury insurance Improvement ownership and right to use Non-exclusive, Sole, Exclusive

34 09/27/07 Websites and IP

35 09/27/07 Websites and Patents Patentable Features Method of doing business Website functionality Software applications Infringement of third-party patents

36 09/27/07 Websites and Trademarks A domain name can be a trademark A domain name can infringe a trademark A prospective domain name should be searched for trademark conflicts Metatags, Framing, Deep Linking Pay per click advertising ACCPA Bad faith use and registration, and no legitimate claim UDRP Similar standard to ACCPA

37 09/27/07 Websites and Copyrights Development Agreements (see handout) - Crucial Usual specs - deliverables, timelines, costs, etc. Reps/Warranties, Indemnification, Infringement, ND Ownership of copyright interests Owners content Developers content - get license Joint content - content developed specifically for website Third-party content - get permissions Firing the Developer Do you own your website? DMCA

38 09/27/07 Websites and Trade Secrets Protectable subject matter Client and customer lists Databases Data Spills

39 09/27/07 IP Infringement

40 09/27/07 Patent Infringement Do the claims of the patent read on the accused device? Remedies Injunctive relief Damages (actual, treble, attorneys fees) Reasonable royalty Seizure

41 09/27/07 Trademark Infringement Test - will the use of the mark create a likelihood of confusion among consumers as to the source of the goods? Similarity of the marks Relatedness of the goods Remedies Injunctive relief Damages (actual, treble, attorneys fees) Reasonable royalty Seizure and destruction Ohio Deceptive Trade Practices Act Ohio Revised Code Sec et seq.

42 09/27/07 Copyright Infringement Test - Access Substantial similarity Remedies (only with federal registration) Injunctive relief Damages (actual, treble, attorneys fees) Statutory Damages Reasonable royalty Seizure and destruction

43 09/27/07 Conclusion Intellectual property can be your clients most valuable asset Help your clients identify their IP assets Help your clients protect their IP assets Help your clients enforce their IP rights Help your clients avoid infringement scenarios

44 Questions? Fraser Clemens Martin & Miller LLC Patent, Trademark, Copyright & Intellectual Property Counsel Perrysburg, Ohio - Detroit, Michigan © 2007 Fraser Clemens Martin & Miller, LLC All rights reserved. Rick Martin Doug Miller

45 09/27/07 Handout Contents 35 U.S.C. § 101 (Patent laws) Sample Patent PTO search page 15 U.S.C. § 1052 (TM Lanham Act) Trademark search page Sample TM registration Sample TM Office Action 17 U.S.C. § 106 (Copyright laws) Copyright website Sample Copyright registration form (TX) ORC § (Trade Secret law) Uniform Trade Secrets Act

46 09/27/07 Handout Contents, Cont. Patent License Agreement Trademark License Agreement Simple Non-Disclosure Agreement Complex Non-Disclosure Agreement Independent Contractor Agreement Patent Assignment Trademark Assignment Copyright Assignment Website Development Agreement


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