Executive Perspective for Scientists & Engineers (EPSE) A Real World Look at Intellectual Property Randall K. Broberg, Esq. April 8, 2013
Agenda 1.30 – 2:30IP Overview 2.30– 2.40Break 2.40 – 3.30 Infringement 3.30 – 3.40Break 3.40 – 4.30Negotiating IP 4.30 – 5.00 Introduction to Case Study 5.00 – 6.00Dinner & Case Study working Session 6.00 – 7.00Case Study Presentations
4 Forms of Intellectual Property Patents --inventions Trademarks --branding Copyrights – written and artistic material Trade Secrets – proprietary business information
IP Excludes It Doesn’t Really “Protect” IP are “negative” rights IP is the right to exclude or prevent others from infringing the IP. IP does not give an IP owner the right “to do” something.
What They Cover Utility PatentFunctional Features of Process, Machine, Manufactured Item or Composition of Matter Design PatentNonfunctional Aspects of Ornamental Designs for Articles of Manufacture TrademarksWords, Names, Symbols, or Devices Trade DressOverall Impression of Nonfunctional Product/Service Features CopyrightWritings (Including computer Programs), Photos, Music, Labels, Works of Art, Architectural Drawings Trade SecretSecrets
Examples Utility PatentAIDS vaccine Design Patent Shape of golf club TrademarksAAA® Trade Dress Pink fiberglass CopyrightArticles in a Journal Trade SecretThe Coca-Cola Formula
Creating IP Intellectual Property Common LawGovernment Filings PatentsN/AFederal Required and Foreign Patents Available TrademarksUse in Commerce on or in connection with the goods/services State, Federal and Foreign Registrations Available CopyrightBy fixing a creative and original work in a tangible medium- US Federal Registrations Available Only Trade SecretsCreate valuable business information and keep it secret! N/A
Requirements Utility PatentNew and “Non-obvious” Design PatentNew,“Non-obvious” and non-functional TrademarksIdentifier of Goods or Services Trade DressDistinctive Identifier of Source and non-functional CopyrightOriginality and a “Work of Authorship” Trade SecretConfidentiality Agreements and Reasonable Security Measures
Lengths of Protection Utility Patent 20 Years From Date of Application Design Patent 14 Years From Date the Federal Government Grants the Patent Trademarks Indefinite. Trade Dress Indefinite. Copyright Copyrighted 1964 –1978: 75 Years. Copyrighted 1978 or Later: Life of Author Plus 70 Years Trade Secret Indefinite
Deadlines Utility Patent Design Patent U.S.— 1 Year After First Offer for Sale, or First Publication. To Preserve Most Foreign Rights, Must Be Done Before Then. TrademarksNo deadline but safest to file as soon as possible to ensure priority dates. Trade DressNo deadline CopyrightNo deadline, but at least 89 Days After Publication, If You Want a Chance to Collect Statutory Damages or Attorney Fees From Infringers. Trade SecretNo deadline.
How Long Does It Take? Intellectual Property Common LawGovernment Filings PatentsN/AUtility patents can take 2 to 4 years to issue. TrademarksInherently distinctive marks immediately but descriptive marks may take years 2 year Application process. If no use, can delay registration for several more years CopyrightInstantRegistrations take about 6 to 9 months unless “expedited” Trade SecretsInstantNA
Fees and Costs Utility Patent(1) $5K to $35K to file, plus (2) several thousand per year until patent issues, plus (3) issuance and maintenance fees Design Patent$1K to $5K to file, plus issuance and maintenance fees Trademarks$1K to file and $1K to $5k till issues, depending on difficulties. Trade DressNone, unless Registered as design patent or trademark CopyrightApproximately $100-$200 Trade SecretNone
Owning IP In Absence of Contract Intellectual Property Employees CreateIndependent Contractors Create PatentsIf employees employed to invent, Company Owns it, otherwise “shop right” Absent assignment contract, inventor owns it! TrademarksIf related to company’s business, company owns it If related to company’s business, company owns it because rights arise from company’s use in commerce CopyrightsIf employees create it within scope (work for hire), Company owns it, otherwise employee does If no contract, independent contractor owns it! Trade SecretsIf related to company’s business, company owns it If no NDA in place there’s no trade secret to own!
Don’t Forget Costs and Benefits Virtually all businesses possess IP assets, but how valuable are they? Businesses must balance cost of protecting IP against potential benefits of protection and consequences of failing to protect Some forms of IP have distinct disadvantages. Approximately 3% of all patents make money for their owners –Source - U.S. PTO