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Intellectual Property Fundamentals��Date: November 2, 2022��

Robin Hylton, Assistant Outreach Coordinator

Eastern Regional Outreach Office

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References to particular products, patents trademarks, service marks,

services, companies and/or organizations in this presentation are

for illustrative and educational purposes only and do not constitute or

imply endorsement by the U.S. Government, the U.S. Department of

Commerce, and the U.S. Patent and Trademark Office, or any other

federal agency.

Disclaimer

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Discussion Topics

IP is a business strategy
What is intellectual property (IP)?

What is the U.S. Patent and Trademark Office
Trade secrets, copyrights, trademarks, patents

USPTO Resources - Introduction

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IP strategy IS a �business strategy

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IP:

Is attractive to investors and buyers
Deters infringement lawsuits
Can increase leveraging power

Mergers and acquisitions

Is a property right that can add value to a company’s assets
Is Global

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What is intellectual property? �

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Intellectual property

Real property

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What is the U.S. Patent and Trademark Office?

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The USPTO in FY21

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12,963 employees

8,073 patent examiners
662 trademark examining attorneys
244 Administrative patent judges (APJs)
27 Administrative trademark judges (ATJs)
3,957 Other staff

Patents

650,654 patent applications filed
374,006�patents issued

Trademarks

943,928 trademark applications filed
434,810 Registrations issued

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Historical foundation �of intellectual property

Intellectual property (IP) is deeply rooted in our nation’s history.

U.S. constitution Article 1, Section 8, Clause 8: �“The 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 … ”

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Types of intellectual property

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Can you find the IP in a mobile phone?

Trademarks:

Apple^® Name & Logo
iPhone^®Name

Patents:

Data-processing methods
Semiconductor circuits
Chemical compounds
Battery/Power Control
Antenna
Glass display

Copyrights:

Software code
Instruction manual
Ringtone

Trade secrets:

???

Designs:

Form of overall phone
Arrangement of camera lenses
Placement of buttons/switches

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Let’s talk Trade Secrets!

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Trade secrets

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Why Use a Trade Secret?

Trade Secret Basics:

Protects commercially valuable proprietary information, e.g., formulas or business information that gives a competitive advantage
Trade Secrets are not generally known and must be subject to reasonable efforts to preserve confidentiality

Common Ways to Lose a Trade Secret:

Failure to take adequate steps to prevent disclosure
Owner or owner-authorized disclosure
Reverse engineering
Independent development

Trade secrets are maintained within company confines and are generally protected by signed agreements between employees and companies. These contracts may require non-disclosure of proprietary information and non-competition after leaving employments. This falls within the level of reasonable effort to maintain secrecy and to keep the information out of the public domain.

As we know patents are good for a term of 20 years from the date of first filing. However, trade secrets are good for as long as they are secret. Is it therefore better to keep things trade secrets? Remembering the constitution in Art.1, Sec. 8, Cl. 8, the primary reason for this clause was “to promote the progress of science and useful arts”. If we keep all things secret the progress of science would be stilled. However, there are times when the use of trade secrets are warranted. For example: If you and a competitor were selling products at the same cost and you discovered a machine change that allowed you to make a 2% reduction in the cost in making your goods would you patent that idea or keep it trade secret? The same goes for better formulas, patterns, compilations, programs, methods, techniques or processes.

How many of you know the 17 herbs and spices in Kentucky Fried Chicken or the formula for Coca-Cola. Today someone could probably reverse engineer both of these products, but their trademarks are now more valuable than their formula or ingredients. Who would buy “Joe’s Soda” when there is the option of a COKE, or “Sam’s Fried Chicken” that taste just the same as KFC?

-------------------

Concentrate on Trade Secrets Basics.

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Let’s talk Copyrights!

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Copyright

Library of Congress
Protects “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works
Term: Author’s life + 70 years
www.copyright.gov

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What is Copyright?

Copyright is a legal protection for the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works.

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Things protected by copyrights

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Categories of Protected Works

Literary works
Musical works
Sound recordings
Dramatic works
Choreographic works
Pictorial, graphic and sculptural works
Motion pictures
Architectural works

-- U.S. Copyright Office, Circular 1, page 1

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What Works are Protected?

Work must be fixed in a tangible form of expression.
The fixation need not be directly perceptible so long as it may be communicated with the aid of a machine or device.

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Must be an original work of authorship, meaning that the work must be independently created by the author (as opposed to copied from other works).
The U.S.’s required level of originality is very low – a “modicum of creativity.” Other countries’ laws may differ in this respect.

What Works are Protected?

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Works from Pre-existing Works

Compilations
Derivative Works

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What Works are Not Protected?

Works that have not been fixed in a tangible form of expression
Titles, names; familiar symbols or designs; mere variations of lettering; mere listings of ingredients or content
Ideas, procedures, concepts, principles (as opposed to a description of an idea, concept, etc.)
Works consisting entirely of common property, containing no original �authorship

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Term of Copyright

For works created on or after January 1, 1978:

Life + 70: In the U.S., copyright subsists from creation and lasts the full life of the author, plus 70 years after the author’s death.
95 years from publication: If the author is not a natural person, then copyright lasts 95 years from publication or 120 years from creation, whichever expires first.

(Various materials are available on the internet to�assist in determining copyright term.)

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Exclusive Rights to Copyright Owner

Exclusive Right to

Reproduce the work
Prepared derivative works
Distribute copies
Perform the work publicly
Display the work publicly
Or to Authorize others to do so

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Why Register?

Registration puts others on notice of copyright claim
Registration (of works of U.S. origin) is required to file suit in federal court
Registration is prima facie evidence of validity of the copyright and facts in certificate (if made within five years of publication)
Registration may be recorded with U.S. Customs and Border Protection (CBP) to help prevent importation of pirated products
Statutory damages and attorney’s fees may be claimed in court suits, provided registration is obtained within three months after publication of the work or prior to infringement of the work. (In short, timely registration is an absolutely prerequisite for this award.)
Easier to license work, collect royalties, and enforce your �rights outside of court

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Let’s talk Trademarks!

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What is a Trademark?

Any word, name, symbol or device (or any combination thereof) used to identify and distinguish goods and services and to indicate their source (15 U.S.C. § 1127)

TM

SM

®

Trademarks are sometimes more valuable and important than patents since they identify a word/name, service or device that is connected to a good or service and/or the source of that good or service. If there was no identifying mark that distinguished products or attributes from one another we would have a difficult time finding out what we really liked or needed. If every soft drink was identified with the word soda or cola on it how would we identify Coke, Pepsi or Mountain Dew from Sprite, Dr. Pepper or generic non branded products. The same goes with drugs, cars, airlines and all other goods or services we expect. The Coca Cola brand (trademark) is considered as the best identified in the world and probably the most valuable.

Most people know many word or name brands and are relatively familiar with symbol marks (the bowtie mark for Chevrolet, the Nike “swoosh” and others), but what are device marks? How about colors – what companies are associated with pink? How about Mary Kay and Owens Corning fiberglass insulation! One of the requirements to get a trademark is that it be specific to a specific class of goods or services. Would you think that there would be confusion between the pink for Mary Kay and Owens Corning? They are in different classes and would cause no confusion of goods or services unless you started selling Owens Corning make-up or Mary Kay insulation. What is identified with the color Brown? UPS – if there was a house painted brown would there be a likelihood of confusion between UPS and the house? What if the house was used as a headquarters for a package delivery business?

Do you think that a sound could be trademarked? What about the Intel sound? And the CBS/NBS? chimes? If there is a significant sound or color or shape like the Coke bottle then that device can be granted a trademark.

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Definition of a Trademark

Any word, slogan, symbol, design, or combination of these that:

Identifies the source of your goods or services
Distinguishes your goods and services from those of another party

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What do Trademarks offer?

Brand recognition – distinguishing goods or services from competitors in the marketplace
Public notice of ownership - exclusive right to use
Right to enforce nationally and bring legal action in federal courts
Use of federal Trademark registration symbol ®
Right to record mark with Customs
Serve as basis for foreign filing
Publication in U.S. Trademark database

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Types of Trademarks

Word Mark

COCA-COLA

Special Form Mark

Composite Mark

Design Mark

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Examples of Trademarks

A Trademark can be any word, slogan, symbol, design, or combination of these, including product packaging, product design and trade dress. �
A Trademark can also be a sound, color, or smell

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Strength of Mark

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Examples of Weak Marks

DESCRIPTIVE - Words or designs that describe the goods or services

Ex. URBANHOUZING for real estate services

APPLE PIE for potpourri

* Descriptive marks are much harder to protect than Fanciful or

Arbitrary marks

GENERIC – Common everyday names for goods or services

Ex. MILK for a dairy-based beverage

LAWYERS.COM for providing online databases featuring information about the field of law and legal services

* Generic marks are incapable of being source identifiers so they are not registrable

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Why Register?

Nationwide Protection
Constructive Notice of Right to Use
USPTO will refuse later-filed applications that are “confusingly similar”
Ability to use ® symbol
Ability to prevent importation of infringing goods
Can be used as a basis for obtaining registration in a foreign country
Statutory damages and attorneys fees available in federal litigation relating to infringement

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Let’s talk Patents!

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Types of patents�

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Utility

Protects how an invention works, functions, or is made for 20 years from filing date

Process
Machine
Article of manufacture
Composition of matter

Design

Protects the way a product or article looks, the ornamental expression for 15 years from the date of grant

Plant

Protects newly invented strains of asexually reproducing flowering plants, fruit trees, and other hybrid plants for 20 years from filing date

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Is your idea eligible for protection?

35 U.S.C. § 101

composition of matter

manufacture

machine

process

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Prior art

Your invention

“Novel”: e.g., your invention is new, was not described in the prior art or known
“Non-obvious”: e.g., the differences between your invention and prior art would not have been obvious to someone in that field
Does it have “utility”: e.g., does it function as intended

35 U.S.C. §§§ 101, 102 and 103

Hurdles to Patenting�Is your invention:

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What is NOT patentable?

Cannot patent an idea

Must be able to be developed into a new, nonobvious and useful machine, manufacture, process, or composition of matter that can actually accomplish the task

Cannot patent natural phenomena
Cannot patent abstract ideas

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The path to a patent

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Provisional vs. non-provisional �patent applications

Provisional	Non-provisional
Not examined or published One year time limit Only for utility patents A low-cost way to establish an early effective filing date (priority date) in a non-provisional patent application with few formalities	Examined Published 18 months from earliest filing date (unless a request for a non-publication at filing) Can become a patent

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The patent application roadmap ��Back and forth�with the USPTO

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USPTO resources

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Visit us at uspto.gov

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Find help in your area

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uspto.gov/locations

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Find help in your area

Learn to search for inventions and trademarks
Connect with inventor and entrepreneur organizations in your state
Get free patent or trademark legal assistance
Accessible via uspto.gov homepage

USPTO in your region
uspto.gov/locations

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Visit a Patent and Trademark Resource Centers (PTRCs)

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Nationwide network of public, state, and academic libraries that are designated by the USPTO to disseminate patent and trademark information and to support intellectual property needs of the public.

uspto.gov/PTRC

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Inclusive innovation

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Council for inclusive innovation

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Access inventor and entrepreneur resources

USPTO’s hub for resources and information for �inventors, entrepreneurs, �and small businesses.

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uspto.gov/inventors

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uspto.gov/startups

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Access resources for startups

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Get information about patents and trademarks

Inventor Assistance Center

Provides general information about the patent examination policy and procedure.
8:30 a.m.- 8 p.m. ET, Monday through Friday
(571) 272-1000
(800) 786-9199 (press 2)
uspto.gov/InventorAssistance

Trademark Assistance Center

Provides general information about the trademark registration process.
8:30 a.m. – 8 p.m. ET, Monday through Friday
(571) 272-9250
(800) 786-9199 (press 1)
uspto.gov/TrademarkAssistance

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Learn how to file a patent application

Pro Se Assistance program provides outreach education to applicants (also known as "pro se" applicants) who file patent applications without the assistance of a registered patent attorney or agent.

uspto.gov/prosepatents

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Check out free legal assistance programs*

Patent Pro Bono Program - a nationwide program matching financially under-resourced inventors and small businesses with volunteer patent practitioners to file and prosecute patent applications.

Law School Clinic Certification Program - permits law students under the supervision of a participating law school clinic’s supervisor to practice patent and/or trademark law before the USPTO while providing those services to applicants, pro bono.

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*Applicant(s) are not charged for legal services, but must pay all USPTO fees and any additional costs that may arise

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USPTO Patent Pro Bono Program

A nationwide network that assists financially under-resourced independent inventors and small businesses

Program participants must have income 300% below federal poverty guidelines

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For more information, visit www.uspto.gov/probonopatents.

ATTORNEY

AGENT

LAW FIRM

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Pro Bono Program organizations

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Law school clinics

The USPTO’s Law School Clinic Certification Program allows law students enrolled in a participating law school’s clinic program to practice before the USPTO under the guidance of a law school faculty clinic supervisor.

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For more information, visit www.uspto.gov/lawschoolclinic.

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Reduced patent fees

Small Entity

50% reduction in most patent fees
Must be an individual or
A small business (less than 500 employees) or a non-profit organization

Micro-Entity

75% reduction in most patent fees
Meet small entity requirement
Filed no more than 4 previous applications
Income not greater than 3x median income
Not assigned to other than a micro-entity
Inventions assigned to employer don’t count against you

For more information on Micro Entity: https://www.uspto.gov/patents/laws/micro-entity-status

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Attend free USPTO events

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uspto.gov/events

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Stay connected with the USPTO

USPTO news and updates
USPTO events
Patent Alerts
Trademark Alerts
Copyright Alerts

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uspto.gov/subscribe

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Eastern Regional Outreach Office

easternregionaloutreachoffice@uspto.gov

@uspto.gov

USPTOvideo

@uspto

www.uspto.gov

Thank you!

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robin.hylton@uspto.gov

easternregionaloutreachoffice@uspto.gov

571.270.7100

Robin Hylton

www.uspto.gov

Thank you!