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Intellectual Property (IP) and Designs Joe Barich Adjunct Professor of Law Shareholder - McAndrews, Held & Malloy.

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Presentation on theme: "Intellectual Property (IP) and Designs Joe Barich Adjunct Professor of Law Shareholder - McAndrews, Held & Malloy."— Presentation transcript:

1 Intellectual Property (IP) and Designs Joe Barich Adjunct Professor of Law Shareholder - McAndrews, Held & Malloy

2 What is a Intellectual Property (IP)? – Copyrights, Trademarks, Utility Patents, Design Patents and Provisional Patent Applications Comparison of IP Rights Design Patents In More Detail The Patent Clinic

3 What is IP? “Intellectual Property” is a generic category for several rights created by statute including: – Copyrights – Trademarks – Utility Patents – Design Patents Note: there are a number of other IP rights – Trade Dress – Trade Secret – Maskworks, etc.

4 What is IP? Typically a right to exclude or prevent someone from doing something. Typically involves government registration Typically a civil right – you go to court to enforce Each of the IP rights directed to something different – Copyright – how it looks or sounds (expression) – Trademarks – who sold it – Utility Patent – how it works (functionality) – Design Patent – ornamental appearance of industrial article

5 What Is A Copyright? Exclusive right to a work of expression, such as a written story, a painting, or a song. The subject of the copyright must NOT be functional – if functional, look to utility patents Lasts for a LONG time – life +70 or 95 years is common Copyrights provide exclusive rights with regard to appearance or expression, but may be curtailed in certain situations such as fair use or parody, for example.

6 How Do I Get A Copyright? Copyright “subsumes” in the work at the moment of the work’s creation – you make it, you have a copyright. Must register your copyright with copyright office to sue If unregistered at time of infringement, you must prove damages If registered, then higher statutory damages – RIAA - $0.23/song vs. $5000 per song Mark your work to provide notice – © 2010 Joe Barich OR Copyright Joe Barich, 2010

7 A mark that identifies the origin of goods or services in trade Protect consumer from counterfeit products Can last forever – as long as you use it Standard for infringement is “consumer confusion”– if a consumer would think that goods from a second company actually originated from the company owning the trademark, then there may be infringement. Same mark may be used in different fields without confusion What Is A Trademark?

8 Start selling goods with a mark on them. Common Law Trademark Rights – arise when you sell your first products – limited geographic scope – must prove damages – may not be able to expand Use of “Pizza TM ” – provides notice that you are claiming Pizza as a trademark, but you may not be legally entitled to it. No examination – sue. How Do I Get A Trademark?

9 Register your trademark with the Patent and Trademark Office (PTO) – Mark is examined – Mark is published for opposition Federally Registered Trademark ® – Geographic scope of the entire US – Statutory Damages – May become incontestable Mark your product to provide notice – Only registered products can use ® How Do I Get A ® Trademark?

10 What is a Patent? (Utility & Design) Legal right to exclude others from practicing your invention – Not a right to use or make – Not a right to sell Does not guarantee that you are not infringing other patents A sword, not a shield - does not “protect”, except as deterrent In the Constitution itself – Art 1, Sec. 8, Clause 8



13 Functionality - How something works. Not expression – see Copyright Lasts for 20 years from its date of priority (typically its date of filing). But! takes 3-5 years to issue as a patent right thus providing an enforceable term of approximately 15-17 years. What Is A Utility Patent?

14 Draft patent application and submit to PTO – Patent application is a long technical document – Best to seek legal assistance Patent application includes: – Specification describing the invention – Claims – what you can exclude others from doing. – Claims are the only legal right you can use to sue PTO rejects your claims and you negotiate, argue, and amend How Do I Get A Utility Patent?

15 To get a patent, claims must recite: 1) statutory subject matter that is 2) novel and 3) non- obvious. – Statutory subject matter - fit within the statutory classes of patentable subject matter. – Novel - no one single piece of prior art teaches all of the limitations in your claim. – Non-obvious - seven PTO tests based on prior art. Note: Claims may be narrower than you suspect- may be possible to “design around” How Do I Get A Utility Patent?

16 Ornamental Appearance of an Industrial Article – Not functionality like Utility Patent Lasts for 14 years from its date of issuance Design Patents differ from copyrights – Different standard for grant and a different infringement standard from copyrights – Must be novel and non-obvious – Presumption of validity In a nutshell, design patents have a shorter term, but are a “tougher” IP right than copyrights What Is A Design Patent?

17 Draft patent application and submit to PTO – Mostly formal drawings from all angles About 75% of design patents are issued without rejection Average time to issuance is about 15 months. Can still be a functional article, but Design Patent coverage is directed to the ornamental aspects of the functional article How Do I Get A Design Patent?

18 A Provisional Patent Application is a cheap, informal filing at the PTO that can reserve a priority date to allow you to file a utility application up to a year later Often a “kitchen-sink” filing with photos, drawings, brochures, e-mails, short description Only reserves date for what is actually disclosed Can save priority date for later foreign filing Often used to “shop invention around” for year What Is A Provisional App.?

19 Gather all disclosure – Make sure you gather or create disclosure of everything that you want to reserve File disclosure with cover sheet at PTO Not Examined by PTO – just sits in a room for a year Reserves date for Utility Patent only – not Design Patent How Do I Get A Provisional?

20 Filing =“Patent Pending” Someone who has filed a patent application with the PTO is said to be “prosecuting a patent” and the process is often called “patent prosecution.” No rights to enforce patent until issuance “Patent Pending” has even less of a right than “TM” Patent Terminology Note

21 Warning! - BAR DATES! U.S. has One Year Grace Period from date of first disclosure/commercialization – file or lose it Foreign = No Grace Period – disclose/commercialize before filing and you blew it Foreign rights can be preserved by filing an application in the U.S. before disclosure and then later filing foreign app claiming priority to U.S. app Disclosures in confidence (to attorney, under agreement of confidentiality), without commercialization, are typically OK

22 May be able to obtain both copyright and patent for computer software Software written on paper is considered a non- functional literary work, therefore copyrightable Software executing on a computer is considered functional. If it is statutory subject matter, novel and non-obvious, it may be patentable. Computer Software

23 Copyright – rights at creation, registration increases rights Trademark – rights at first use, registration increases rights Utility Patent – no rights at creation. Patent rights must be applied for at the Patent and Trademark Office (PTO) and issued by PTO. Design Patent – same as Utility Patent Provisional Patent Application – no rights, but works as a placeholder for later Utility Patent IP Right Comparison

24 More On Design Patents - 1 First design patent issued in 1842 for a font Copyright did not cover industrial articles at the time, therefore new form of IP was desired As of Nov 2, 2010 - – 625,000 issued US design patents – 7,825,000 issued US utility patents

25 More On Design Patents - 2 “Ornamental Appearance” – Shape – Surface Ornamentation – Color – Combination of all three Does the patented design include design choices or is the appearance dictated solely by function? (Rosco, Inc. V. Mirror Lite Co., 304 F.3d 1373, 1378 (Fed. Cir. 2002)

26 DP Infringement – Ordinary Observer Egyptian Goddess, Inc. v. Swisa, Inc. (2008) “There is infringement if, in the eye of the ordinary observer, the accused design is closer to the patented design than it is to the prior art.” Thus, if someone would confuse your product for the patented product, you are in trouble. Result – Increased the scope and enforceability of design patents Only solid (not dotted) lines are part of claim

27 Can Still Be A Functional Article D440,149 “Nut” Only needs some ornamental appearance As long as appearance is not dictated by function or there is a choice

28 US D599,372 Google Home Page Design Issued Sep 1, 2009 DPs Are Widely Sought

29 What is the Patent Clinic? Have a great invention? Want a patent? TEC/College of Law Joint Effort Draft a Utility patent application for selected Cozad/Lemelson participants for free (typical cost 10K-12K) Participants file themselves (we show how) and pay their own PTO fee

30 Who Writes The Patent Applications? Law students in their 3L (final) year Have taken Patent Law and Patent Prosecution and earned a B+ or better (tough professor – Me!) Most have law firm experience Will be expected to draft patent applications professionally in the fall, typically without additional instruction

31 Who will be supervising the law students? Joe Barich Adjunct Professor, CoL, 6 th year teaching About 12 years experience at a large patent specialty law firm, now a Shareholder Involved in the prosecution of more than 800 utility patents in the US and abroad 2008, 2009, 2010 Illinois Rising Star on the Super Lawyers list

32 How Does the Patent Clinic Work? Patent Clinic works with inventor to draft their utility patent application Inventor must be available and help out Patent Clinic Drafts patent application Inventor gets rights clearance from OTM and files patent application

33 Questions? Thanks!

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