1. OBTAINING INTELLECTUAL PROPERTY PROTECTION FOR YOUR NEW INVENTION By: Pasco Gasbarro William Loginov William Loginov Amy B. Spagnole Amy B. Spagnole October 20, 2006 October 20, 2006

2. Trademarks, Copyrights and Patents Are Not The Same –Trademark: Trademark law protects product identifying symbols. –Copyrights: Copyright law deals with the tangible, original expression of ideas in the form of writing, drawing, sculpture, photos, film and music. –Patents: Patent law protects new and useful inventions. inventions.

3. Some Differences (U.S. Law) TrademarkCopyrightPatent NATURE Words, names, designs, slogans, symbols, sounds, product shape, product packaging. Works fixed in a tangible medium of expression, literary and artistic expression such as books, paintings, sculptures, computer software, plays, movies. New and useful inventions, such as manufacturing process, mechanical aspects of product, design of useful articles. PURPOSE Protects trademark owners from unfair competition and the public from confusion. Encourages and rewards creative expression. Encourages and rewards innovation. ACQUIRING PROTECTION Use of the mark in commerce in connection with goods or services or apply for federal or state registration. Automatic upon fixation in a tangible medium. Only by grant from Federal Government. NOTICE OPTIONAL: TM or SM if unregistered; ® or Reg. U.S. Pat. & Tm. Off.; if registered. OPTIONAL after March 1, 1989: © or “Copyright with year of first publication and name of owner.” OPTIONAL: “Patent applied for” or “Pat. Pending” after application filed, or Patent or Pat. Plus registration number after grant.

4. More Differences (U.S. Law) TrademarkCopyrightPatent TERM Common Law: As long as used in connection with goods or services. Federal Reg.: 10 years from registration if use declaration is filed during 6 th year of registration. Renewable for unlimited 10-year periods. Creations after January 1, 1978: Author’s lifetime plus 70 years. Work made for hire: the earlier of 95 years from publication or 120 years from creation. Utility or Plant Patent: 20 years from application filing date. Design Patent: 14 years from grant. PREQUISITES TO AN INFRINGEMENT ACTION No registration needed. Registration required for U.S. nationals. Issued patent required. INFRINGEMENT TEST Likelihood of confusion, mistake, or deception as to source or sponsorship. Unauthorized use or copying (access to work and substantial similarity between protected work and allegedly infringing work). Unauthorized manufacturing, use, sale or offering for sale devices embodying the protected invention

5. What Is A Trademark? Any word, name, logo, symbol or device, or any combination thereof, used by a person to identify and distinguish his or her goods from those manufactured or sold by others and to indicate the common source of the goods. Section 45 of the Trademark Act of 1946 (Lanham Act). Any word, name, logo, symbol or device, or any combination thereof, used by a person to identify and distinguish his or her goods from those manufactured or sold by others and to indicate the common source of the goods. Section 45 of the Trademark Act of 1946 (Lanham Act).

6. Types of Trademarks WORDS SYMBOL SLOGAN

7. Types of Trademarks TRADE DRESS (PACKAGING) TRADE DRESS (PRODUCT DESIGN)

8. Why Are Trademarks Important?  Identifies one seller’s products and distinguishes them from products of others;  Signifies that all goods bearing the trademark come from or are controlled by a common source;  Signifies that all goods bearing the trademark are of an equal level of quality; and  Is a prime instrument in advertising and selling the goods.

9. How do I protect my Trademark?  Trademark Clearance and Searching  Federal Registration –BOU –ITU  State Registration  Common Law  Foreign Registration

10. Do Not Use ® If Not Registered  Registered Mark – ®  Unregistered Trademark – ™  Unregistered Service Mark – SM

11. COPYRIGHTS

12. What is a copyright?  Copyright is a form of protection provided by the laws of the United States to the authors of “original works of authorship.”  A copyright protects original works of authorship, including books, paintings, sculptures, computer software, plays, and movies.

13. What is not protected by copyright?  Works that have not been fixed in a tangible form of expression (for example, choreographic works that have not been notated or recorded, or improvisational speeches or performances that have not been written or recorded);  Titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents;  Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration;  Works consisting entirely of information that is common property and containing no original authorship (for example; standard calendars, height and weight charts, tape measures and rulers, and lists or tables taken from public documents or other common sources).

14. What rights does a copyright provide? The right to:  Make copies;  Prepare derivative works;  Distribute copies of the work to the public;  Perform the work publicly;  Display the copyrighted work publicly;

15. Who can claim copyright?  The copyright in a work is the property of the author who created the work.  The author can be one or more individuals or a company, if the work is a work made for hire.

16. What about the rights of companies?  In the case of works made for hire, the employer and not the employee is considered to be the author.  Copyright law defines a "work made for hire" as: (1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work, a part of a motion picture or other audiovisual work, a translation, a supplementary work, a compilation, an instructional text, a test, answer material for a test, or an atlas, if the parties have expressly agreed (in a written instrument signed by them) that the work shall be considered a work made for hire.

17. When does copyright arise?  Copyright is secured automatically when the work is created. A work is "created" when it is fixed in a tangible medium.  No publication, registration, or other action in the Copyright Office is required to secure copyright.

18. Where does copyright protection extend?  There is no such thing as an “international copyright” that will automatically protect an author’s writings throughout the entire world.  Protection against unauthorized use in a particular country depends on the national laws of that country.  Most countries offer protection to foreign works under certain conditions.

19. Why Register?  Registration is not a condition of copyright protection.  Copyright registration is a legal formality intended to make a public record of the basic facts of a particular copyright.  Registration may be made at any time within the life of the copyright.

20. Benefits of Copyright registration  Registration establishes a public record of the copyright claim.  Before an infringement suit may be filed in court, registration is necessary.  If made before or within 5 years of publication, registration will establish prima facie evidence in court of the validity of the copyright and the facts stated in the certificate.  If registration is made within 3 months after publication of the work or prior to an infringement of the work statutory damages and attorney’s fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.  Registration allows the owner of the copyright to record the registration with the U.S. Customs Service for protection against the importation of infringing copies.

21. How do I let others know about my copyright?  The use of a copyright notice is no longer required under U. S. law, although it is often beneficial.  The notice for visually perceptible copies should contain all the following three elements: –1. The symbol © (the letter C in a circle), or the word "Copyright," or the abbreviation "Copr."; and –2. The year of first publication of the work. –3. The name of the owner of copyright in the work, or an – abbreviation by which the name can be recognized. Example: © 2002 John Doe Example: © 2002 John Doe

22. How long does a copyright last?  A work that is created on or after January 1, 1978, is automatically protected from the moment of its creation and is ordinarily given a term enduring for the author's life plus an additional 70 years after the author's death.  In the case of "a joint work prepared by two or more authors who did not work for hire," the term lasts for 70 years after the last surviving author's death.  For works made for hire, the duration of copyright will be 95 years from publication or 120 years from creation, whichever is shorter.

23. PATENTS

24. PATENTS ARE: A right to EXCLUDE OTHERS from making, using or selling a patented article -- not necessarily to make it yourself A right to EXCLUDE OTHERS from making, using or selling a patented article -- not necessarily to make it yourself Utility patents protect the FUNCTION of a machine, process, computer program, composition of matter Utility patents protect the FUNCTION of a machine, process, computer program, composition of matter Term: 20 from FILING – regardless of when grantedTerm: 20 from FILING – regardless of when granted Design Patents protect the ORNAMENTAL DESIGN of an object – without regard to function Design Patents protect the ORNAMENTAL DESIGN of an object – without regard to function Term: 14 years from GRANTINGTerm: 14 years from GRANTING

25. PATENTS Who is entitled to a patent? Who is entitled to a patent? Our system protects the FIRST TO INVENT Our system protects the FIRST TO INVENT –So long as: No public disclosure No public disclosure No offer for sale No offer for sale No publication No publication No public use No public use If any of the above occur you have ONE YEAR to file or lose the right to patent on whatever was disclosed, offered, etc. If any of the above occur you have ONE YEAR to file or lose the right to patent on whatever was disclosed, offered, etc. How to prove inventorship? How to prove inventorship? Keep a bound notebook of ideas or other PROVABLE medium with dates and witnesses Keep a bound notebook of ideas or other PROVABLE medium with dates and witnesses –Mailing certified mail to yourself is unnecessary

26. PROVABLE medium

27. What is the process for obtaining a Utility Patent? Determine whether the concept is ready for patenting Determine whether the concept is ready for patenting Consult a patent attorney and provide description of invention Consult a patent attorney and provide description of invention Consider whether a PATENTABILITY SEARCH is advisable Consider whether a PATENTABILITY SEARCH is advisable Attorney prepares patent application and inventor reviews Attorney prepares patent application and inventor reviews Application filed in US Patent and Trademark Office (USPTO) Application filed in US Patent and Trademark Office (USPTO)

28. What is the process for obtaining a Utility Patent? Now you have a PATENT PENDING Now you have a PATENT PENDING USPTO eventually examines application, searching for similar prior art concepts and (often) rejecting the claims based upon prior art as either NOT NEW or OBVIOUS USPTO eventually examines application, searching for similar prior art concepts and (often) rejecting the claims based upon prior art as either NOT NEW or OBVIOUS Attorney (and inventor) reviews rejections and prepares response – possibly changing the claims Attorney (and inventor) reviews rejections and prepares response – possibly changing the claims If all goes well: If all goes well:

29. Allowance and Grant of Patent

30. PATENT Cost to obtain a US Patent? Cost to obtain a US Patent? –Full cost is between about $7,500 - $17,500 in most technologies Foreign patents? Foreign patents? –Every country/region has its own system –By treaty file within ONE YEAR of US filing –NO PRIOR PUBLIC DISCLOSURE before US filing Cost? Cost? EXPENSIVE – use deferral tactics like PCT until product is proven and investment capital is secured EXPENSIVE – use deferral tactics like PCT until product is proven and investment capital is secured

31. What about PROVISIONAL APPLICATIONS? Filing fee only $100 Filing fee only $100 No requirement of CLAIMS No requirement of CLAIMS Are a place holder - - CONFER NO RIGHT Are a place holder - - CONFER NO RIGHT –Must be followed by utility filing WITHIN ONE YEAR or benefit is lost BEWARE – except for claims a provisional application must meet ALL other standards for a full, enabled disclosure of the invention! BEWARE – except for claims a provisional application must meet ALL other standards for a full, enabled disclosure of the invention! Foreign applications must be filed at the same time as the US utility Foreign applications must be filed at the same time as the US utility Provisionals remain SECRET if not followed up with a utility filing Provisionals remain SECRET if not followed up with a utility filing