You’ve Built a Better Mousetrap...Now what? How to Protect Your Intellectual Property Using Patents and Trademarks Elizabeth Dougherty Acting Deputy Director Office of Patent Legal Administration International Home and Housewares Show Chicago 2012

U.S. Patent 102,133

Goals of Presentation Provide an understanding of what Intellectual Property (IP) is with a focus on patents and trademarks Educate stakeholders as to why they should considering protecting their IP through the use of patents and trademarks De-mystify the process of obtaining patents and registering trademarks through the U.S. Patent and Trademark Office (USPTO)

4 USPTO - Mission To foster innovation and competitiveness by: Providing high quality and timely examination of patent and trademark applications, guiding domestic and international intellectual property policy, and delivering intellectual property information and education worldwide.

Patent and Trademark Fundamentals

What is a Patent? A grant by the U.S. Government conferring to an inventor the right to exclude others from the: manufacture sale or offering for sale use or importation of her/his invention in/into the U.S. LettersPatent

Patent Fundamentals U.S. system is a quid pro quo  The inventor discloses the invention to the government in specific terms  The government grants exclusive rights to the inventor

Types of Patents Utility New and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof Design Any new, original and ornamental design Plant Whoever invents or discovers and asexually produces any distinct and new variety of plant

Utility Applications Provisional - one year period, no claims required, written disclosure must meet same requirements as non-provisional, not allowed for design. Non-Provisional - claims required, written disclosure must meet requirements of 35 USC 112 1st paragraph. Examined for patentability, can result in a patent.

U.S. Patent No. 2,026,082 Monopoly Utility Patent Applications

U.S. Patent No. 821,393Flying Machine Design Patent Applications Utility Patent Applications

Design Patent Applications Design patents protect the way an object appears

Thomas Edison Design Patent D12,631 Design Patent Applications

Plant Patent Applications Plant patents protects asexually produced plant varieties

What is a Trademark? Any word, name, symbol, device (or any combination thereof) used to identify and distinguish goods or services and to indicate their source

Trademarks  Trademarks - symbols or slogans that represent goods or services - can last indefinitely as long as they are not allowed to become generic  Term – 10-year term with 10-year renewal terms

Do I need a patent or trademark? Why?

What is the Value of a Patent? Incentive to Invent Security for Investment New Technology Resources Ensure that Investment of Time and Money is Rewarded to Continue Future Incentive Stimulation –Accelerates Development –Strengthens National Economy

Creation of Assets (To Sell or License, Collateral for Financing) Building Block for Future Inventions Source of Historical Information Contribution to Society What is the Value of a Patent?

The Monster Under My Bed De-Mystifying the Patent and Trademark Process Interacting with the U.S. Patent and Trademark Office

Profile of Patent Operations FY2011 Accomplishments and Current Landscape Agency Profile –Over 8,500 patent examiners and related technical specialists, organized into 9 Technology Centers –One location in Alexandria Virginia, with a future satellite office in Detroit Michigan (Opening July 2012). Nationwide Workforce. Production and Efficiency –537,128K UPRD filings in fiscal year 2011 –244,430 UPRD patents issued in fiscal year –Current backlog of 660,270 unexamined applications –Average time to examine an application is 33.8 months Goal of total pendency 20 months, first actin pendency 1 months 21

USPTO Organization Structure

Office of the Commissioner for Patents Office of the Deputy Commissioner Office of Patent Examination Policy Office of Patent Resources and Planning Office of Patent Information Management Office of Innovation Development

United States Patent and Trademark Office Technology Centers The Deputy Commissioner for Patents oversees all patent examining functions in the nine Patent Technology Centers. Patent Operations provides administrative oversight to and coordinates the activities of Technology Centers 1600, 1700, 2100, 2400, 2600, 2800, 2900, 3600, and 3700.

United States Patent and Trademark Office Technology Centers Technology Center 1600: Biotechnology and Organic Chemistry. Technology Center 1700: Chemical and Materials Engineering. Technology Center 2100: Computer Architecture Software and Information Security. Technology Center 2400: Computer Networks, Multiplex, Cable and Cryptography/Security. Technology Center 2600: Communications. Technology Center 2800: Semiconductors, Electrical and Optical Systems and Components. Technology Center 2900: Designs. Technology Center 3600: Transportation, Electronic Commerce, Construction, Agriculture, Licensing and Review. Technology Center 3700: Mechanical Engineering, Manufacturing and Products.

Patent Examination READ AND UNDERSTAND SPECIFICATION DETERMINE WHETHER SPECIFICATION IS ADEQUATE DETERMINE SCOPE OF THE CLAIMS SEARCH EXISTING TECHNOLOGY FOR CLAIMED INVENTION DETERMINE PATENTABILITY WRITE/MAIL A LEGAL OFFICE ACTION ON THE PATENTABILITY RESPOND TO APPLICANTS RESPONSE ISSUE PATENT OR ABANDONMENT

Allowance First Examination FirstExamination Notice of Allowance Second Examination Amendment SecondExamination Appeal Process Appeal Brief Appeal Process Rejection Examination Process

Overview of Process for Obtaining a Utility Patent

Trademark Operations Organizational Chart

Overview of TM Examination Process: Use-based application

New Trademark Initiatives Trademarks Next Generation –Information technology initiative, e.g., virtualization and cloud computing – Trademark Consistency Initiative –Quality initiative, centralized process by which applicants can Request Consistency Review of the Office’s treatment of their pending applications and recent registrations – Trademark User Feedback –Complaints, compliments, or other feedback (not an “official filing”) –

Features of the Website Apply Online for a Patent Obtain Status of a Patent Application Search US Patent Database Search Patent Classification Manual Download Forms and Fee Schedules Patent Help Resources Access Details of All Currently Pending Published Patent Applications (Public PAIR)

Overview of Website - Inventors Click on “Inventors” Helpful links for inventors - General Information - Introductory Guides - FAQs - Upcoming Events - Registered Attorneys & Complaints Against - Inventors Assistance Center - and much more…

Overview of Website - Patents

Overview of Website - Careers

IP Awareness Assessment

Other Forms of Intellectual Property

 COPYRIGHT - Library of Congress –Protects “original works of authorship” including literary, dramatic, musical, artistic and certain other intellectual works. –Term - Author’s life + 70 years Copyright

Trade Secrets How is this different from Patents, Trademarks and Copyrights? What constitutes a trade secret? How can we determine a trade secret?

43 Trade Secrets Trade secrets - based on contracts - may offer protection indefinitely Is it better to patent or keep a trade secret? Coca Cola; KFC

44 Any information that derives economic value from not being generally known or ascertainable Can be formulas, patterns, compilations, programs, devices, methods, techniques or processes Protection stems from common law dating to the 1800’s All states have some sort of trade secret protection Most laws based on the Uniform Trade Secrets Act Trade Secrets

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