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Intellectual Property


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									Intellectual Property

     January 30, 2007
Intellectual Property - History
• The U.S. Constitution gives Congress the power to enact laws
relating to patents
            Article I, section 8, which reads “Congress shall have power
     . . . to promote the progress of science and useful arts, by
     securing for limited times to authors and inventors the exclusive
     right to their respective writings and discoveries.”

• Congress from time to time enacts various laws relating to patents
    • first patent law was enacted in 1790
    • a general revision came into effect January 1, 1953
    • November 29, 1999, Congress enacted the American
    Inventors Protection Act of 1999 (AIPA), which further revised
    the patent laws

• United States Patent and Trademark Office (USPTO)
• form of protection provided to the authors of “original works of
     • includes literary, dramatic, musical, artistic, and certain other
     intellectual works, both published and unpublished.

• 1976 Copyright Act gives the owner exclusive right
    • to reproduce the copyrighted work
    • to prepare derivative works
    • to distribute copies or phonorecords of the copyrighted work
    • to perform the copyrighted work publicly
    • or to display the copyrighted work publicly

• copyrights protect the form of expression rather than the subject
matter of the writing
Trademark and Servicemark

• A trademark protects words, names, symbols, sounds, or colors
that distinguish goods and services from those manufactured or sold
by others and to indicate the source of the goods.
     • can be renewed forever, if they are being used in commerce

• A servicemark is the same as a trademark except that it identifies
and distinguishes the source of a service rather than a product.

• The terms “trademark” and “mark” are commonly used to refer to
both trademarks and servicemarks.
Trademarks – part of the language
                 First used in commerce 1935
                 First registered 1941

                 First used in commerce 1948
                 First registered 1950

                  First used in commerce 1924
                  First registered 1924

                 First used in commerce 1936
  Dumpster       First registered 1936
Apple Corps vs. Apple Computer
Patent - Basics

• A patent is a property right granted by the Government of the
United States of America to an inventor “to exclude others from
making, using, offering for sale, or selling the invention throughout
the United States or importing the invention into the United States”

• for a limited time in exchange for public disclosure of the invention
when the patent is granted
Patent – What Can Be Patented
• any new and useful process, machine, manufacture, or
composition of matter or any new and useful improvement thereof
    • “process” - a process, act or method, and primarily includes
    industrial or technical processes.
    • “manufacture” - articles that are made, includes all
    manufactured articles
    • “composition of matter” relates to chemical compositions,
    includes mixtures of ingredients, new chemical compounds
    • practically everything made by man and the processes
• useful - useful purpose and also includes operativeness

• NOT laws of nature, physical phenomena, and abstract ideas
• NOT mere idea or suggestion – must have a complete description
of the actual machine or other subject matter
Types of Patents

Utility Patent
• may be granted to anyone who invents or discovers any new,
useful, and nonobvious process, machine, article of manufacture, or
composition of matter, or any new and useful improvement thereof.

Design Patent
• may be granted to anyone who invents a new, original, and
ornamental design for an article of manufacture

Plant Patent
• may be granted to anyone who invents or discovers and asexually
reproduces any distinct and new variety of plant
Length of Patent Protection

Utility and Plant Patents – 20 years – maintenance fees required

Design Patent – 14 years – no maintenance fees
Patents - People

• To represent a person before the USPTO, patent attorneys and
patent agents must be registered

• The USPTO maintains a register of attorneys and agents.

• Registration requires compliance with the USPTO regulations
    • a showing of good moral character and of good repute
    • a showing of legal, and scientific and technical qualifications
    necessary to render applicants for patents a valuable service
    (passing of an examination)
         • for examination must have a college degree in engineering
         or physical science or the equivalent of such a degree
Patents - When to File
Must file within 1 year of any public use or sale, or offering for
sale, in the United States or publication of the invention
anywhere in the world

Decision is often made by intellectual property managers
• Business case
    • cost
    • potential market
    • potential competitors
    • enforceability – infringement
    • trade secret?

Non-disclosure Agreements
Trade Secret

  A trade secret is information that companies keep secret
  to give them an advantage over their competitors

  Patents are published and are part of the public record!
Patent Format

• Title of the Invention
• Cross Reference to related applications (if any)
• Statement of federally sponsored research/development (if any)
• Background of the Invention
• Brief Summary of the Invention
• Brief description of the several views of the drawing (if any)
• Detailed Description of the Invention
• A claim or claims
• Drawings
Patent Format Continued

• written description of the invention and of the manner and
process of making and using it
• enable any person skilled in the technological area to which the
invention pertains to make and use the same
• must describe completely a specific embodiment of the process,
machine, manufacture, composition of matter, or improvement
invented, and must explain the mode of operation or principle
whenever applicable
• conclude with a claim or claims particularly pointing out and
distinctly claiming the subject matter that the applicant regards as
the invention
• claims that define the scope of the protection afforded by the
patent and which questions of infringement are judged by the
Provisional Patents
• lower cost first patent filing in the United States and to give
U.S. applicants parity with foreign applicants.
• claims and oath or declaration are NOT required for a
provisional application.
• provisional application provides the means to establish an
early effective filing date in a patent application and permits the
term “Patent Pending” to be applied in connection with the
• Provisional applications may not be filed for design inventions.

The applicant would then have up to 12 months to file a non-
provisional application for patent as described above – extends
the clock if you are not ready to file
Foreign Patents

 • U.S. patent rights only in U.S.

 • no effect in a foreign country

 • must apply in each countries or regional patent offices

 • Almost every country has its own patent law

 • Some laws are more restrictive than U.S., such as time to file
Patent Infringement
• unauthorized making, using, offering for sale, or selling any
patented invention within the U.S. or U.S. Territories
•importing into the U.S. of any patented

the patentee
     • may sue for relief in the appropriate federal court
     • the patentee may ask for an injunction
     • may also ask the court for an award of damages
• the defendant
     • may raise the question of the validity of the patent
     • may claim what is being done is not infringement

• infringement determined language of the claims
• if not within the language of any claims, there is no literal
Recent Cases
• NTP Inc. vs. Research in Motion (Blackberry)

• Gillette Co vs. Energizer Holdings

• PSC Computer vs. Foxconn
Patents – Making Money

• Make the patented product

• Perform the patented process

• Sell the patent

• License the technology

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