"PATENTS, TRADEMARKS, AND COPYRIGHT"
An Intellectual Property Overview PATENTS, TRADEMARKS, AND COPYRIGHT Susan Anthony, Attorney-Advisor Larry Tarazano, Patent Examiner Office of International Relations United States Patent and Trademark Office Intellectual Property Protection What is Intellectual Property? • It is first and foremost: “Property”-- • Much like land or equipment is an asset. 10/6/2010 2 Intellectual Property Protection What does IP mean to YOUR Business? • It can protect your product and product’s identity-- – Your IP assets allow you to prevent others from making and selling your products. – Remember: Anything that can be 10/6/2010 profitably copied, probably will be. 3 Intellectual Property Protection Intellectual Property Rights are Territorial. What that means is-- US Trademarks and Patents are only good in the USA! What about Copyright? 10/6/2010 That is a horse of a different color! 4 Intellectual Property Protection Some Forms of Intellectual Property: • Trademarks • Patents • Copyright • Trade Secrets 10/6/2010 5 Forms of Intellectual Property Trademarks, Patents, Copyright • These IP rights are often confused. There are some similarities, but these IP rights are different and serve different purposes. • But they need not be mutually exclusive. For any one work, more than one form of IP protection may apply, as long as it meets the requirements of the laws that govern that form of protection. 10/6/2010 6 Forms of Intellectual Property Patents • Patent protection is afforded to inventions and industrial designs (and even plants). • A patent gives the inventor the exclusive right to exclude others from making, using, offering for sale, or selling the invention. • Different types of patents have different terms: • Utility and Plant patents have a 20-year term. • Design patents have a 14-year term. 10/6/2010 7 Forms of Intellectual Property Patents What is Patentable? In the US: Any person who "invents or discovers any new and useful": – Process; – Machine; – Article of Manufacture; – Composition of matter; or – Improvement thereof; may obtain a patent subject to the conditions and requirements of the law. 10/6/2010 8 Forms of Intellectual Property Trademarks • Trademark protection is afforded to words or designs that are used to distinguish the source of the goods or services from that of others. • A trademark gives the owner the right to prevent others from using a confusingly similar mark. • Trademark rights may continue indefinitely. 10/6/2010 9 Forms of Intellectual Property Trademarks What can be used as a “mark” (i.e., an identification of source)? – Names – Shapes – Colors or Combinations of Colors – Logos – Sounds – Smells – Tastes? (pending case) 10/6/2010 10 Forms of Intellectual Protection Copyright •Copyright protection is afforded to authors of “original works of authorship”, including literary, dramatic, musical, artistic, and certain other intellectual works. •A copyright gives the owner the exclusive right (and to authorize others) to do certain things, e.g., copy the work, adapt the work, distribute copies of the work. 10/6/2010 11 Forms of Intellectual Property Trade Secret Two fundamental concepts: 1)Trade secret must be something that is used in business and that gives the owner a competitive advantage. 2)The owner of a trade secret must take reasonable measures to maintain its secrecy. 10/6/2010 12 Forms of Intellectual Property Trade Secret Most often used to protect proprietary portions of technology: – Formulae – Manufacturing processes – Business strategies – Business management information – Customer lists – Design concepts 10/6/2010 13 Forms of Intellectual Property Internet Domain Names • How do you protect internet domain names? • Can they be registered as trademarks? 10/6/2010 14 Basis for Intellectual Property Protection in the United States • Patents and Copyright: – Basis in the United States Constitution giving rights to inventors and authors. • Trademarks: – Derived from U.S. Congress' Commerce Clause power; – Interstate commerce required for federal registration. 10/6/2010 15 Basis for Patent and Copyright Protection in the United States US Constitution, Article 1, Section 8, Clause 8 –“Congress shall have the 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.” 10/6/2010 16 Basis for Protection of Trademarks in the United States. • Article I, Section 8, Clause 3, of the United States Constitution, known as the Commerce Clause, empowers the United States Congress "To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes." 10/6/2010 17 Overlapping Intellectual Property Protection • An industrial design may be protected by copyright as a work of art and also may be the subject of a design patent. • Where a copyrighted artistic representation identifies a product or service, it also may be the subject of a trademark. • In some instances, an industrial design can span patent, trademark, and copyright protection. 10/6/2010 18 Overlapping Intellectual Property Protection Depending on the features of the “intellectual property” in question, it may be covered by: – Patent Protection (Design 14 years or Utility 20 years) – Copyright Protection (Life + 70 or for Works Made for Hire, 95 or 120) – Trademark Protection (Indefinite) 10/6/2010 19 Overlapping Intellectual Property Protection • Patents, Trademarks, Copyright – OH MY! – Different types of protection – Different terms of protection • Therefore, the “exclusive” use of the creation / invention may be extended -- – if it spans or – is made to span more than one type of IP. 10/6/2010 20 Overlapping IP Protection: The Coca-Cola Contour Bottle In 1915, Alexander Samuelson and Earl R. Dean designed the original "hobble skirt" contour bottle. The first design patent on the bottle, D63,657, was granted Dec. 26, 1923, to the bottle manufacturer. 10/6/2010 21 Overlapping IP Protection: The Coca-Cola Contour Bottle The Coca-Cola Company received a second design patent for the contour bottle on March 24, 1937, preventing imitation of the bottle for another 14 years. 10/6/2010 22 Overlapping IP Protection: The Coca-Cola Contour Bottle • The bottle became so well known that it became synonymous with the Coca-Cola product. • The Coca-Cola Company sought and obtained a federal trademark registration for its contour bottle on April 12, 1960, enabling the company to safeguard the bottle design indefinitely. 10/6/2010 23 Overlapping IP Protection: The Kool-Aid Brand Example Design Patent Trademarks 10/6/2010 24 IP Protection: Hershey’s Chocolate Hershey’s Kisses® Trademark Protection Design Marks Word Marks Hershey’s Conical Shaped Kisses Product Shape Chocolate Candy (Trade Dress) 10/6/2010 25 IP Protection: Hershey’s Chocolate Hershey’s® Milk Chocolate Patent Protection Trademark Protection Packaging Word Mark Design Mark Cold Seal Cohesive Hershey Packaging Films 10/6/2010 26 What does IP mean to a Business? Patents, Trademarks, and Copyright on their own do not protect the assets they cover. They give the right holder the right to “exclude” others from using the asset. The property owner must vigilantly police his assets, or the patents or trademarks can be lost and enter the public domain, i.e., become available for anyone to use. 10/6/2010 27 What does IP mean to a Business? Patents, Trademarks, and Copyright all have value and are important assets to a company. How you choose to protect and enforce them is a business decision. 10/6/2010 28 Additional Resources: www.USPTO.gov 10/6/2010 29 Additional Resources: www.StopFakes.gov Small Businesses 10/6/2010 30 Additional Resources: www.StopFakes.gov/smallbusiness 10/6/2010 31 PATENTS AND TRADEMARKS AND COPYRIGHT, OH MY! USPTO Office of International Relations (571)-272-9300 Susan.Anthony@uspto.gov Donald.Tarazano@uspto.gov 10/6/2010 THANK YOU 32