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INTELLECTUALPROPERTY

LAW

Jason HeistStephanie Jones

Steven Wangerow

ME 481 PresentationMichigan State University

Feb. 28, 2011

WHO WE ARE

Jason Heist: BS Chem ’99, JD ’06

Stephanie Jones: BS BioChem ’00, JD ‘03

Steven Wangerow: BS Mech. Eng. ‘03, JD ’09

Harness Dickey: founded in 1921; exclusively IPlaw; offices in Troy, MI; St. Louis, MO; Reston,VA; Portland, OR

national and international client base

What is a patent?

A U.S. Patent is acontract betweenthe inventor and theUS government: you teach your idea preserved forever in

the US Patent Office government grants a

monopoly for alimited number ofyears

What rights does a patent give?

The right to excludeothers from: Making Using Selling Offering to sell Importing

Patent rights arenational: a U.S. Patent covers

the entire UnitedStates

What a patent does not do...

Owning a patentdoes not give youthe right tomake, use, sell,or import yourinvention.

Someone else’s patent claim mayread as follows:

A light bulb comprising:

a glass housing;

a filament member disposed insaid glass housing;

wherein said filament memberglows when provided withelectricity.

Your patent claim to animprovement may read as follows:

A light bulb comprising:

a glass housing;

a threaded base connected tosaid glass housing;

a filament member disposed insaid glass housing;

wherein said filament memberglows when provided withelectricity.

How you can get a patent

Prepare invention disclosure dated and witnessed

Search prior art Prepare application

after application is filed withU.S. Patent Office = patentpending

Prosecute application amend as required by Patent

Office persuade U.S. Patent

Examiner to allow claims andissue patent

Patent Requirements:

Idea must be: Patentable subject

matter (35 USC §101);

Novel (35 USC §102); and

Non-obvious (35 USC§ 103)

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Statutory time bars begin after twokey events:

(1) Your date of invention:conception + reduction topractice

(2) Your application filing date:patent application is filed inthe U.S. Patent Office

No Patent For You ….

if before your Invention Date:

Your invention was already known orused in the United States

Your invention was patented ordescribed in a printed publicationanywhere in the world

No Patent For You …

if more than one year before yourApplication Filing Date:

Your invention was in public use or onsale in the United States

Your invention was patented ordescribed in a printed publicationanywhere in the world

What to watch out for...

Events that maystart the clockrunning: published papers presentations federal grant

awards purchase orders price quotes

Careers in Patent Law Patent Agents:

Technical education requirement Must pass the patent bar examination

Patent Lawyers: Patent agent requirements Must also have a law degree Must pass a state bar examination

Patent Examiners: Technical education requirement Review patent applications to determine if patentable If you work as an Examiner long enough, the USPTO will issue you a

registration number (get’s you out of taking the patent bar examination) Regional Patent Office opening in Detroit some time in 2011

Patent Bar Examination: Tests knowledge of patent examining procedures Online examination at designated test sites approximately a 30-45% pass rate

What do Patent Agents andAttorneys do?

Patent Agentsprepare andprosecute patentapplications

Patent Attorneyswear many hats

Work with interesting cutting edgetechnologies

Mechanical Structures Controls Thermodynamics Heat Transfer Dynamics

Electrical Computer Chemical Biotechnology Design

Patentability and InfringementInvestigations

Working with the inventors tounderstand the invention

Searching (prior art) todetermine what has beendone previously and monitorcompetitor patents

Defining the invention overknown prior designs

Recommending designchanges to avoid infringementof others’ patents

Preparing Patent Applications

Writing a detaileddescription of theinvention usingstatutory guidelines

Preparing claims for theinvention taking intoconsideration case lawand statutoryrequirements

Preparing drawingsillustrating the claimedinvention

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Prosecuting Patent Applications Requires knowledge

of the statutes, rulesand procedures ofpatent practice

Negotiation withexaminers

In depthunderstanding oftechnical details andthe prior art

Intellectual Property Litigation

Asserting a client’spatent rights againstan infringer

Defending a clientagainst infringementclaims

Licensing Negotiations

Negotiations can involve millions ofdollars and can be highly complex

Breadth of knowledge legal (IP, contract) business practices industry details

COPYRIGHTS

Protects original works ofauthorship

Expressions, not ideas

Copyrights-Literature Copyrights - Music

Copyrights- Movies Copyrights- Art Trademarks

Used to designate thesource of goods orservices

Primarilyproduct/servicenames and slogans

Registration lasts aslong as Mark is used

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Trademarks -Services Quiz

What is oldest TrademarkRegistered in United Kingdom(1876)?

Trademarks- Logos Trademarks- Sparty Questions

Thank you!