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Intellectual PropertyProtecting Your Ideas
Susan Ochoa Spiering
Ochoa & Associates, PC / Ferrells PLLC
Corpus Christi, Texas
June 11, 2014
Ochoa & Associates, PC Staff Susan Ochoa Spiering, Attorney
Kara B. Johnson, Assistant www.ochoapatents.com
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Ferrells, PLLC
Michael Ferrell
Peter Ferrell
Robert Alexander
Anna Kinney
Carol Madalloni
www.ochoapatents.com
www.ferrellaw.com
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Fairfax, VA Staff
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Objectives – Understanding Intellectual Property Rights
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Basic understanding of patents, trademarks and copyrights
Importance for business
Copyright & infringement
Trade Secrets
Fair Use
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What is IP?
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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)
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IP: Can be treated like real property
buy, sell, lease/license, pass on by inheritance, etc
patent/ TM/ Copyright Registration = house deed
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WHAT IS A PATENT?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.
PATENT TYPES:
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Types of Patents
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Utility Functional
Design Plant Provisional Non-provisional
non-functional Asexually 1 year Regular, to be
reproduced Not examined examined
2-3 years 3-5 years Not public 3-5 years
*No rights until the patent grants.
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.
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Why is it important to my business?
Do I need an attorney?
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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
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PATENT EXAMPLES
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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.
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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)
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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
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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?
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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)
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Provisional Patent
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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.
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When to file Patent
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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.
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Grace Period
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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
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Patents that changed the world
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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
What can I do for my business? Stop fakes.gov (USPTO) IP rights tool kit- country specific Non Disclosure Agreements (NDA) File patent application if appropriate Monitor the market
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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
2012 8 millionth issued
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Issue Year & Patent NumberRapidly growing in issuance
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(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.
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America Invents ActEff 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 damagesre-examination of issued patent (cost greater than $10K)
interparties rules ; exparte rulespost grant reviewinventor oath/declaration
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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.
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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
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Trademarks cont’d
• Cannot confuse public
• Cannot be deceptive
• Cannot protect if descriptive or generic
* 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)
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Trademark(what can I do?)
Search to ensure freedom to use
Register through state or federal agency.
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Registration vs. Common Law Rights
Objective: provide notice to public
Corpus Christi Longhorn Restaurant Case
Internet marketing
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Provide choice to consumers vs. confusion (consider proximity, style, context, relatedness of marks and industry)
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.
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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.
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Trade SecretsWhat 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.
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When decide that instead of patent or trademark protection, will keep as trade secret due to costs.
Problems
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Trade Secrets Patenting
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.
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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.
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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
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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
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www.copyright.gov• 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
VA Visual Arts
TX Literary /Text
PA Performing Arts
SR Sound Recordings
Protecting your website – consider:
Ownership (of material)
Notice (to public)
Registration (of materials/domain)
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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?).
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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).
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What is fair use?Fair use is copying copyrighted /protected material for limited and transformative purpose.
E.g. CommentCriticizeParodyTeach
Be aware of what kind of software / music / video / etc… you download into your computer that may be violating copyrights or other IP rights.
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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)
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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.
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Market impact of Fakes Terminology / definitions….(again):
counterfeit trademark goods pirated copyright goods
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Fakes vs. Authentics
When people buy fake purses/shoes etc, they are encouraging counterfeiting and piracy.
www.myauthentics.com- public awareness site.
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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)
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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
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2013 –Top 10 Counterfeit Goods in USA
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Seized Value(millions) Retail Value (millions)
1. Electronics 39 1012. Shoes (red soles) 25 973. Drugs (viagra) 17 254. CD’s / DVD’s 15 355. Clothing 15 1266. Perfume 9 517. Watches 9 1128. Cigarettes 8 109. Computer hard ware 8 2210. Toys/Games 7 27
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.)
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Some remedies for infringement(not exhaustive list)
TM and/or Patent: File suitGet TRO or preliminary injunctionGet costs & attorney fees in select casesDestruction of property Seizure or impound Forfeiture False Advertisement DamagesProfits
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Items that cannot be protected:
Flags
People’s names
Clothes/patterns
Naturally occurring items
Religious Articles
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Search engines USPTO.gov – for patents & TM’s COPYRIGHT.gov TESS database (TM’s) GOOGLE/ GOOGLE Patents Numerous combinations of the relevant key
words are searched; Non-patent databases include: IP.com, Scirus,
Google Scholar, The Wayback Machine
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Domain Names
Search/ Check with Whois.com Register through godaddy.com or something
similar
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Legal Notices
Patent pendingPatent numberCopyrightTrademark™Registered®Email notices
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For Copyrighted websites, use the word “Copyright” and not the symbol “©”
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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
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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
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Disclaimer
Information is provided “as is” – no warranties
Use at your own risk Intended to be general
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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: [email protected]
Website: www.ochoapatents.com
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.
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Thanks for permission from State Bar of Texas Intellectual Property PR Committee
for some of the slides.