Presentation is loading. Please wait.

Presentation is loading. Please wait.

Intellectual Property Protecting Your Ideas Susan Ochoa Spiering Ochoa & Associates, PC / Ferrells PLLC Corpus Christi, Texas June 11, 2014.

Similar presentations

Presentation on theme: "Intellectual Property Protecting Your Ideas Susan Ochoa Spiering Ochoa & Associates, PC / Ferrells PLLC Corpus Christi, Texas June 11, 2014."— Presentation transcript:

1 Intellectual Property Protecting Your Ideas Susan Ochoa Spiering Ochoa & Associates, PC / Ferrells PLLC Corpus Christi, Texas June 11, 2014

2 Ochoa & Associates, PC Staff  Susan Ochoa Spiering, Attorney  Kara B. Johnson, Assistant  2Ochoa & Associates, PC

3 Ferrells, PLLC  Michael Ferrell  Peter Ferrell  Robert Alexander  Anna Kinney  Carol Madalloni   Ochoa & Associates, PC Fairfax, VA Staff 3

4 4Ochoa & Associates, PC

5 5

6 Objectives – Understanding Intellectual Property Rights Ochoa & Associates, PC Basic understanding of patents, trademarks and copyrights Importance for business Copyright & infringement Trade Secrets Fair Use 6

7 What is IP? Ochoa & Associates, PC Intellectual Property is intangible property of a person or company. That of the intellect/mind. Made up of patents, copyrights, trademarks, trade names, trade secrets, trade dress. Also, often associated with technology related agreements (e.g. Confidentiality/ Secrecy, licensing, joint development) 7

8 IP: Can be treated like real property buy, sell, lease/license, pass on by inheritance, etc patent/ TM/ Copyright Registration = house deed 8Ochoa & Associates, PC

9 PATENTS and changes based on America Invents Act (AIA) 9Ochoa & Associates, PC

10 10Ochoa & Associates, PC Real Property =house

11 11Ochoa & Associates, PC

12 12Ochoa & Associates, PC

13 13Ochoa & Associates, PC

14 Exclusive right to exclude others from making, selling, offering to sell, or use your claimed invention for 20 years from the date of filing the patent application – basis: US Constitution Art 1, Section 8 Clause 8 Utility – useful processes, composition of matter, machines, improvements thereof; (prov & non-prov). Design – ornamental designs (term – 14 yrs). Plant – asexually reproduced plant varieties. Requirements: new, not obvious, useful. Ochoa & Associates, PC 14

15 Types of Patents 15Ochoa & Associates, PC UtilityFunctional DesignPlantProvisionalNon-provisional non-functionalAsexually1 yearRegular, to be reproducedNot examinedexamined 2-3 years3-5 yearsNot public3-5 years *No rights until the patent grants.

16  Protect the invention; Exclude others from practicing it; Corner the market.  High stakes litigation: high awards or settlements  e.g.: Apple (1 bill –touch screen push feature of phone); Polaroid (873 mil camera); J&J (425 mil pharma); GE (170 mil- wind energy);  No, not to draft or file your invention & application…BUT….rules still need to be followed….  Yes, if have infringement issues.  Yes, to advise/counsel. Ochoa & Associates, PC Why is it important to my business? Do I need an attorney? 16

17 1903 – Mary Anderson – windshield wipers 1903-Josie Stuart – dandruff shampoo 1914 – Josephine Cochran – dishwasher 1951 – Marion Donovan – disposable diapers 1979 – Rose Totino – dough products for frozen pizza Ochoa & Associates, PC 17

18 Problems which can arise when you do not appreciate your intellectual property rights.  Failure to identify (audit) and analyze importance of IP assets.  Failure to understand that obtaining IP coverage will only apply to the U.S.  Failure to consider that intellectual property rights provide defensive, economic and healthy measures to allow your company to grow. Ochoa & Associates, PC 18

19 Problems cont’d  Failure to protect ;  Export only mistake – failure to understand, that you can infringe rights outside the US;  Failure to enforce – laches (unclean hands) Ochoa & Associates, PC 19

20 20 Ochoa & Associates, PC

21 21 Ochoa & Associates, PC

22 Patent Misconceptions  If I keep my invention secret, I can apply for a patent at any time – secret use-maybe.  If I keep my invention secret, no one else can get a patent on it – No  I can file for a “world” patent – No  A patent and a trade secret are the same thing except a TS is cheaper - No Ochoa & Associates, PC 22

23 Getting Started on a Patent  You have an idea…then what do you do?  Do some of your own searching; consider professional search  Consider other patents in the area  Patentability  Infringement Consider why you want a patent & costs - benefits to your business Will you manufacture & sell? License? Enforce? 23Ochoa & Associates, PC

24  Type of patent application, but is not examined  Gets you a filing date and gives you time to market and consider your invention further  Inexpensive  One (1) year to consider and convert to actual patent application  Not without risks. (e.g.. Changes upon conversion; new filing date, intervening art) Ochoa & Associates, PC Provisional Patent 24

25  In U.S. within one (1) year of using or disclosing your invention (statutory Grace/Bar period)  Preferably before disclosing invention in public setting, or sell to others.  Foreign filing: if consider, many countries do not allow filing once disclose publicly. Ochoa & Associates, PC When to file Patent 25

26 In the U.S. once you disclose a patent, you only have 1 yr. to patent it. Don’t blab about your invention, use a NDA or file a provisional patent application first. Ochoa & Associates, PC Grace Period 26

27  Alexander G. Bell – telegraphy/ telephone  Thomas Edison – electric lamp  Granville Woods – electric railway  Wright Brothers – flying machine  Garret Morgan – traffic signals  Ysidro Martinez – knee implants prosthesis Ochoa & Associates, PC Patents that changed the world 27

28 Patents in your business Consider :  If manufacture or provide a service  If want / need to corner market – exclude others  Balance costs to obtain vs. benefits obtained  Infringement & enforcement

29 What can I do for my business?  Stop (USPTO)  IP rights tool kit- country specific  Non Disclosure Agreements (NDA)  File patent application if appropriate  Monitor the market Ochoa & Associates, PC 29

30 Issue Year Number 1790 1* 1890 418,665 1912 1,013,095 1936 2,026,516 1962 3,015,103 1977 4,000,520 1992 5,077,836 2000 6,009,555 2006 7 million 20128 millionth issued Ochoa & Associates, PC Issue Year & Patent Number Rapidly growing in issuance 30

31 (Approx) Costs & Timelines  Search - $800-1500  Provisional App’s:  $4-7K to draft; $130 filing fee; One year, no examination Non Provisional App’s: $7-10K or $12K to draft; $600 filing fee; 3-5 years to get thru PTO. Foreign File: $3500 PCT appln + charges to modify appln if needed Each country: $5K to translate, work with foreign assoc; fees vary per country Generally: $30-50K/country/patent over 20 year term (all costs); $10K/country to get started. Costs will vary per area, attorney, and invention. 31Ochoa & Associates, PC

32 America Invents Act Eff 9/16/11  First major change in 60 years to patent rules.  Some changes First to file prior user rights, including secret use patent marking – virtual ok now / false marking triggers more damages re-examination of issued patent (cost greater than $10K) interparties rules ; exparte rules post grant review inventor oath/declaration 32Ochoa & Associates, PC

33 33Ochoa & Associates, PC

34 Summary of Patent Info  For function features  Exclude others from claimed matter – protects your invention  Term: 20 yrs  Subject matter: machine / widget/ process  First to file country now. 34Ochoa & Associates, PC

35 Trademarks™ 35 Ochoa & Associates, PC

36 What is a Trademark?  Protect words, names, symbols, sounds, colors that distinguish goods & services. Identifies origin or source of product /service. Ex: Coca Cola, Pepsi, & Clorox (stylized writing), McDonald arches.  TM can incorporate your trade name.  Term: forever if use in commerce; must prove use Ochoa & Associates, PC 36

37 Trademarks cont’d Cannot confuse public Cannot be deceptive Cannot protect if descriptive or generic

38 * Common law rights vs. registration * Record at CBP (Customs and Border Patrol) -let CBP help protect your rights * Counterfeits -China, Taiwan, Mexico, India Problems (Market Place) Ochoa & Associates, PC 38

39 Trademark Consider for your business Branding & Marketing strategy

40 Trademark (what can I do?) Search to ensure freedom to use Register through state or federal agency. 40 Ochoa & Associates, PC Registration vs. Common Law Rights Objective: provide notice to public Corpus Christi Longhorn Restaurant Case

41 Internet marketing 41Ochoa & Associates, PC Provide choice to consumers vs. confusion (consider proximity, style, context, relatedness of marks and industry)

42 Overlapping of IP (TMs + Patents)  For example:  Coca-Cola has a trademark on its name, and a design patent of the bottle (and their formula is a trade secret.  Coca-Cola also has copyrights on promotions. Ochoa & Associates, PC 42

43 TM Enforcement  TM Police does exist  Work in conjunction with CBP (if involves crossing US border), FBI, TABC (if alcohol or tobacco involved), city police departments  Raids – flea markets, homes  Remember Violation terms : Copyright = pirated  Trademark = counterfeit  State and Federal laws involved. 43Ochoa & Associates, PC

44 44Ochoa & Associates, PC

45 Trade Secrets 45Ochoa & Associates, PC

46 46Ochoa & Associates, PC

47 47Ochoa & Associates, PC

48 Trade Secrets What are they? any information that derives independent, economic value. e.g.: recipe; chemical formulation (Coke) Useful? very, …..if maintain as TS. Must be able to show protect the secret. Term: Pros: Forever, if maintain as TS, and can show efforts towards maintaining as such. Cons: If an item can be reverse engineered, people can make it. In the U.S., based on AIA, there is now limited defense to patent infringement based on prior commercial use…but still hard to enforce TS’s….even if enforce, the secret is out. Ochoa & Associates, PC 48

49 When decide that instead of patent or trademark protection, will keep as trade secret due to costs. Problems Ochoa & Associates, PC 49

50 50 Ochoa & Associates, PC

51 Trade SecretsPatenting  Keep secret  Theft can still occur  Difficult to enforce  Must Protect  Obtain government grant – 20 yrs.  Publishing in 18 months  After 20 yrs, anybody can use it (public domain)  Not everything is patentable VS. 51

52 52Ochoa & Associates, PC

53 53Ochoa & Associates, PC

54 Example of Enforcement of TS  Ref: CC Caller Times, 8/20/12, Chicago Story. Hanjuan Jin, employee of Motorola, software engineer caught at Ohare airport w/ 1000’s of documents of tradesecrets and $31K in cash. Court found theft of TS, or intent to sell secret, since was flying out to China. 4 yrs prison to serve as example that US enforces IP rights. 54Ochoa & Associates, PC

55 Copyright 55Ochoa & Associates, PC

56 What is a copyright?  Right to exclude others from reproducing / duplicating literary, audio materials  –EX: Journals, books, presentations, videos, software, music  –Rights begin when have tangible expression of idea; Rights belong to creator, not person who paid (if pay, need release of rights)  –Term: 75 years from death of author  Concern: Piracy of copyrights Ochoa & Associates, PC 56

57 Copyrights It is not required to register copyrights to have rights. But in case of infringement, you need the rights to enforce them and to claim statutory damages as well as attorney fees. Registering can mean difference in $100K statutory damages vs. $100 actual damages Ochoa & Associates, PC 57

58 58 Ochoa & Associates, PC Home page has lots of useful information, such as: FAQ (English & Spanish) Fees Records to Search Related Links To Register – Go To: eCo Link – follow instructions $35 application fee Can file electronically or paper copy VAVisual Arts TXLiterary /Text PAPerforming Arts SRSound Recordings

59 Protecting your website – consider: Ownership (of material) Notice (to public) Registration (of materials/domain) 59Ochoa & Associates, PC

60 Ownership  Did you create? If no, do you have agreement giving you all IP rights?  Notice --copyright words  Registration – you will need to register your copyrights within 3 months of first publication or prior to infringement; consider the material you have to register (copyright/TM/patent?). 60 Ochoa & Associates, PC

61 61Ochoa & Associates, PC

62 62Ochoa & Associates, PC

63 63Ochoa & Associates, PC

64 Common copyright issues  Theft of copyrighted music, movies (DVD pirating), website advertising/phone app’s.  Recently held even small amount of use is NOT fair use…(nothing is generally fair use if commercialization involved). 64Ochoa & Associates, PC

65 Fair Use 65Ochoa & Associates, PC

66 What is fair use? Fair use is copying copyrighted /protected material for limited and transformative purpose. E.g.Comment Criticize Parody Teach Be aware of what kind of software / music / video / etc… you download into your computer that may be violating copyrights or other IP rights. Ochoa & Associates, PC

67 Fair Use  Caution: can be fine line between infringement & fair use various factors considered  Music – rapping or thieving? Is sampling Ok?  Manu Dibango v. Michael Jackson, Rihanna et al (for use of composition: mama say mama sah ma ma coo sah  Andrew Paul Leonard v. Stemtech Health Services copyright lawsuit: Sales company was copying, using and displaying his work on websites and in publications. Leonard was awarded 1.6 million (item not registered therefore award was 3 X’s less.)  Dhillon v. Does - Unauthorized use of photograph: Northern District of California held that the fair use doctrine barred by copyright claims. (publisher did not make money therefore considered fair use and no damages) 67Ochoa & Associates, PC

68 68Ochoa & Associates, PC

69 69Ochoa & Associates, PC

70 Licensing IP  License = permission by owner of technology (which could include patents & copyrights, TM’s, SM’s, TN’s) to make, use, or sell service or product.  Rights can be granted for any terms agreed between the parties. Ochoa & Associates, PC70

71 Market impact of Fakes  Terminology / definitions….(again):  counterfeit trademark goods  pirated copyright goods 71Ochoa & Associates, PC

72 Fakes vs. Authentics  When people buy fake purses/shoes etc, they are encouraging counterfeiting and piracy.  public awareness site. Ochoa & Associates, PC72

73 Financial Impact (1.7 billion in 2013) Fakes: CDs, DVDs - movie industry vigilant. Purses, clothes, shoes – TM police. TM police all around us: Held: Designer Sherri Hill was awarded $5M in damages (NY, 6/18/12) from John Doe aka Wang Qinghe, for Trade dress infringement, false designation of origin, TM dilution, cyber squatting & copyright infringement; also found defendant manipulated Google search results. (TM & copyright issues considered) Ochoa & Associates, PC 73

74 Counterfeit (TM principle)  There is real impact on you; must be vigilant of health and safety  Supply chain integrity issue, especially with drugs 2012 Concern over:  Toothpaste  Electrical cords  #1 counterfeited drug : Viagra  Fire extinguishers  Lithium batteries  Optical media  Pharmaceuticals Ochoa & Associates, PC74

75 2013 –Top 10 Counterfeit Goods in USA 75Ochoa & Associates, PC Seized Value(millions)Retail Value (millions) 1.Electronics39101 2.Shoes (red soles)2597 3. Drugs (viagra)1725 4. CD’s / DVD’s1535 5.Clothing15126 6.Perfume951 7.Watches9112 8. Cigarettes810 9. Computer hard ware822 10. Toys/Games727

76 What you can do to protect and enforce IP…  Conduct an IP audit – identify what is eligible for protection  Obtain US rights (at home) and identify any local laws that could impact the market Obtain rights in appropriate foreign markets  Keep your information as safe as possible  Prepare for worst case scenario  Monitor markets in case of infringement  Prevent infringed goods from coming to US  Work with government agencies (FDA, BATF, ITA/TCC, USPTO, DOJ, etc.) Ochoa & Associates, PC 76

77 Some remedies for infringement (not exhaustive list) TM and/or Patent:  File suit  Get TRO or preliminary injunction  Get costs & attorney fees in select cases  Destruction of property  Seizure or impound  Forfeiture  False Advertisement Damages  Profits Ochoa & Associates, PC 77

78 Ochoa & Associates, PC Items that cannot be protected :  Flags  People’s names  Clothes/patterns  Naturally occurring items  Religious Articles 78

79 Search engines  – for patents & TM’s   TESS database (TM’s)  GOOGLE/ GOOGLE Patents  Numerous combinations of the relevant key words are searched;  Non-patent databases include:, Scirus, Google Scholar, The Wayback Machine Ochoa & Associates, PC

80 Domain Names  Search/ Check with   Register through or something similar Ochoa & Associates, PC80

81 Legal Notices Patent pending Patent number Copyright Trademark™ Registered® Email notices Ochoa & Associates, PC For Copyrighted websites, use the word “Copyright” and not the symbol “©” 81

82 Emails Caution what write & who write to; assume can be used in litigation Careful w/ “reply all” button Short, factual (do you really need to string all emails together?) Disclaimer – recommend having on all emails send out Ochoa & Associates, PC 82

83 Recommendations  Exercise common sense  Evaluate risks/needs of business vs. protection vs. costs  Consider consulting with attorney, even short term  Audit & Protect IP rights  Keep quiet about inventions/secrets Ochoa & Associates, PC83

84 Disclaimer  Information is provided “as is” – no warranties  Use at your own risk  Intended to be general Ochoa & Associates, PC 84

85 Thank You for Your Attention; Susan’s Information  Susan Ochoa Spiering  Ochoa & Associates, PC / Ferrells’s PLLC  4921 Willliams Drive  Corpus Christi, TX 78411  Ph: 361.806.0070  Email:  Website: Intellectual property firm serving your IP rights & needs. If you lose me, I can be found on the internet “Corpus Christi Patent Attorney”, or “Susan Patent Attorney Corpus Christi”…or some variation of this. 85Ochoa & Associates, PC

86 Thanks for permission from State Bar of Texas Intellectual Property PR Committee for some of the slides.

87 87Ochoa & Associates, PC

Download ppt "Intellectual Property Protecting Your Ideas Susan Ochoa Spiering Ochoa & Associates, PC / Ferrells PLLC Corpus Christi, Texas June 11, 2014."

Similar presentations

Ads by Google