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All You Need to Know About Patents, Trademarks and
Copyrights
Chip Hood and Bill Needle
Charleston, S.C.Atlanta, Ga.
www.needlerosenberg.com
2
Web Sites for Patents, Trademarks and Copyrights
www.uspto.gov(Patents and Trademarks)
www.loc.gov/copyright(Copyrights)
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Patents
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What is Patentable?
The Supreme Court has said that patents cover “anything under the sun that is made by man.”
Diamond v. Chakrabarty, 447 U.S. 303 (1980) (genetically-engineered bacteria that broke down crude oil)
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Examples of Patentable Subject Matter
Methods of doing business (e.g., Amazon.com’s “1-click” patent; Priceline.com’s “reverse-auction” patent).
Software Vaccines, diagnostic tests
6
Life of a Patent
• 20 years from the filing date of a utility application(no rights during pendency- “Patent Pending”).
• 14 years from issuance for a design patent
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Patent Theory
Patents grant their owner the right to “exclude others from”:
• Making the invention;
• Using the invention;
• Selling the invention;
• Offering the invention for sale;
• Importing the invention.
8
Patent Theory
U.S. patent covers only the United States.
Separate patent necessary in each country – no one patent covers the world.
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Patent ApplicationsFiled and Issued
Patents Issued
0
50,000
100,000
150,000
200,000
250,000
300,000
350,000
1790 1850 1900 1950 1990 2001
Patent Applications
Patents Issued
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Patent Office Statistics
Patents Issued:
66,000 in 1980.
176,000 in 2000.
168,000 in 2002.Source U.S.P.T.O.Numbers rounded to nearest 1000.
0
20000
40000
60000
80000
100000
120000
140000
160000
180000
200000
Patents Issued
1980
2000
2002
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Patent Office Statistics
1998:240,090 applications filed
2002:335,418 applications filed
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Patent Office Statistics
Biotechnology patent applications increased to 47,473 in 2002 from 18,695 in 1996 (a 154% increase).
In contrast, over the same period, there
was only a 12% increase in the number of patent examiners.
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“I have this invention. I know it’s worth millions. What can I do to protect myself?”
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Invention Development Companies
NO! NO! NO! NEVER!
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WARNING:
The One-Year Statutory Bar Rule
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One-Year Rule for Patents
An inventor has one year from the date of the first public disclosure of the invention to file a patent application in the U.S. Patent Office.
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Public Use/Offer for Sale/Sale Before U.S. Application Filed
One-Year Rule for Patents
one year
Public Use/Sale File in U.S.
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One-Year Rule for Patents
But, if the application is filed after the disclosure, the inventor is not able to file for patent protection in most foreign countries.
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One-Year Rule for Patents
So, what do you do?
Answer: File first and then disclose.
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One-Year Rule for Patents
U.S. Application Filed Before Public Use/Offer for Sale/Sale – Foreign Filings Preserved
one year
File in U.S. File ForeignPublic Use/Sale
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You may forfeit your right to patent an invention if there is a public disclosure of your invention more than one (1) year prior to filing a patent application.
Therefore, you should not do any of the following without determining whether patent protection should be sought for the technology:
– Do Not – Do Any of the Following
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Display or discuss the invention at a seminar, lecture, workshop, or trade show open to the public, or
Disclose the invention without a signed Confidential Disclosure (or Non-Disclosure) Agreement, or
– Do Not – Do Any of the Following
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Disclose the invention on inventor’s or company’s web site, or
Submit an article to a journal for publication, or
Offer for sale or sell the invention, or
– Do Not – Do Any of the Following
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Distribute samples of the product to customers, or
Consumer or market test a new product (“Carpet Fresh”), or
– Do Not – Do Any of the Following
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Distribute advertising brochures about the invention, or
Demonstrate a prototype to a public group.
The goal: to prevent unnecessary loss of patent rights due to premature use, sale or publication of patentable technology.
– Do Not – Do Any of the Following
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Patentability
Is the invention patentable? You can do patentability searches on Patent Office website or pay someone to perform search in Patent Office records.
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Infringement
Does the invention infringe someone’s patent? Infringement search and analysis should be performed by a patent attorney.
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Infringement
You receive a cease and desist letter of infringement – the perils of ignoring it:• Willful infringement.• Treble damages and attorney’s
fees.
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Marking
Marking of the product with the patent number starts the infringement damages clock.
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Joint Inventors
Absent agreement to the contrary, a co-inventor is a co-owner who may use or license or assign the patented invention without being held accountable to the other owner(s). 35 U.S.C. § 262
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Trade Secret Protection
Trade secrets:• are not generally known to the
public, • are protectable as long as the
information remains secret, and • have been the subject of
reasonable efforts to maintain confidentiality.
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Trade Secret Protection
Confidentiality measures must be reasonable under the circumstances:• Non-disclosure or confidentiality
agreements• Advising employees that information
is trade secret• Marking documents “confidential”• Employment agreements
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Copyrights ©
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What is copyright?
A form of protection for original works of expression fixed in a tangible form, including
literary, musical,
pictorial,graphic,sculptural,
audiovisual works.
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Copyrights
Examples of Copyrightable Subject Matter:
Songs
Movies (but not their titles)
Games
Jewelry
Software (sequence of coded instructions which direct the process steps)
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Copyrights
CABBAGE PATCH KIDS babies
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Copyrights
“Original works of expression”
Originality ≠ Novelty
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Idea vs. Expression of Idea
“Original works of expression”
Copyright does not protect an idea, only the expression of the idea.
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Idea vs. Expression of Idea
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Idea vs. Expression of Idea
A copyright owner has no right to prevent the independent creation of the same expression of an idea.
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Rights of Copyright Owner
Copyright owner has the exclusive right:
1. To reproduce the work,2. To perform the work publicly,3. To distribute copies of the
work,4. To display the work publicly,
and
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Rights of Copyright Owner
5. To make derivative works based upon the
original work.
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Copyright Protection
Arises automatically with fixation of the work in a tangible medium.
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Copyright Protection
Don’t have to register the copyright.
Only need to register if suing for infringement.
45
Copyright Protection
Recommended to seek registration within 3 months from first publication to collect statutory damages (up to $100,000/infringement) and attorney’s fees.
46
How to Register a Copyright?
Download the appropriate form at the Copyright Office website:
www.loc.gov/copyright
and follow the simple directions.
47
Copyright Notice
© [year date of creation] [owner]
or
Copyright [year date of creation] [owner]
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Who Owns the Copyright?
You hire a programmer who creates software for your business.
Who owns the copyright in the software?
49
Work for Hire
A work prepared by anemployee within the scope ofhis/her employment (i.e., it was part of the job duties ofthe creator to create the work).
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Work for Hire
Anything else, get a written agreement from the author where he assigns his copyrightable interests in the work to you.
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Duration of Copyright
Life of the author plus 70 years.
If work for hire: shorter of 95 years from publication or 100 years from creation.
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Patent vs. Copyright
Inventions vs. Works of art Idea vs. Expression of idea Upon issuance vs. Upon
creation Expensive vs. No cost 20 Years from filing vs. Life of
author plus 70 years
53
Trademarks
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A trademark or “brand name”comprises “anything” that identifies the source of goods or services from those of another when used in commerce.
What is a Trademark?
55
A Trademark Can Be:A Word or Group of Words
COKE
CABBAGE PATCH KIDS
DON’T LEAVE HOME WITHOUT IT
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A Trademark Can Be:A Symbol, Pictorial
Representation or Design
NIKE “Swoosh”
LACOSTE Alligator
Five interlocking Olympic rings
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A Trademark Can Be: A Combination of Word(s) Plus
Symbol, Pictorial Representation or Design
NESTEA
CHURCH’S
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A Trademark Can Be:Numeral(s), Letter(s) or Combinations Thereof
501 Jeans
IBM computers
LOTUS 1-2-3
V-8 Juice
59
A Trademark Can Be:A Shape of a Container or
Packaging COKE bottle
Conical top of CROSS pen
TOBLERONE chocolate packaging
60
A Trademark Can Be: A Color
Orange for THE HOME DEPOT stores
Pink for Owens-Corning’s insulation
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A Trademark Can Be:A Sound
Chimes for NBC
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A Trademark Can Be:A Sound
Lion roar for MGM
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The mark consists of the exhaust sound of applicant’s motorcycles, produced by V-Twin, common crankpin motorcycle engines when the goods are in use.
(Application Serial No. 74/485,223)
A Trademark Can Be:A Sound
HARLEY DAVIDSON
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A Trademark Can Be:A Scent
“The mark consists of a high impact, fresh flower fragrance reminiscent of Plumeria blossoms” • U.S. Reg. No. 1,639,128
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Trademarks vs. Service Marks
Trademarks identify products or goods.
Service marks identify services.
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Service Marks
GOLDEN ARCHES Design
MCDONALD’S
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Trademarks
GOLDEN ARCHES Design
BIG MAC
MCDONALD’S Plus Design
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Certification Marks
Example: VIDALIA for onions (“The certification mark is intended to be
used by persons authorized by certifier, and will certify that the goods in connection with which it is used are yellow Granex type onions and are grown by authorized growers within the Vidalia onion production area in Georgia as defined in the Georgia Vidalia Onion Act of 1986.”)
69
Trade Names vs. Trademarks
A trade name is not a trademark: McDonald’s Corporation vs.
McDONALD’S
Trade names are not registrable in the Trademark Office.
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Types of MarksStrength
• Highest
• None
Fanciful
Arbitrary
Suggestive
Merely Descriptive
Generic
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Fanciful
XEROX
KODAK
EXXON
CLOROX
KOTEX
POLAROID
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Arbitrary
COMMAND hair care products
SHELL gasoline
APPLE computers
ICE CREAM chewing gum
GUESS? Jeans
DIE-HARD batteries
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Suggestive
CROSSTALK software
STRONGHOLD nails
7-ELEVEN retail store service
COPPERTONE tanning products
RAPID SHAVE shaving cream
GLEEM toothpaste
ROACH MOTEL roach bait
WOOLITE wool cleaner
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Merely Descriptive
CHAP-STICK chapped lip treatment
SHEAR PLEASURE beauty salon
BEEF AND BREW restaurants
HOUR AFTER HOUR deodorant
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Generic
aspirin cellophane cola cornflakes cube steak dry ice
escalator high octane kerosene lanolin linoleum
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Generic
mimeograph murphy bed nylon raisin bran refrigerator
shredded wheat
thermos trampoline yo-yo zipper
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The Term “Brilliant” would be:
Merely descriptive for diamonds.
Suggestive for furniture polish.
Arbitrary for applesauce.
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Your Client Wants to Adopt a New Mark
Search, Search, Search:
Trademark Office (www.uspto.gov)
Thomson & Thomson (www.thomson-thomson.com)
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Types of Trademark Applications
Actual use of mark in interstate commerce; and
Intent-to-use the mark in interstate commerce.
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No - No’s
Can’t assign an intent-to-use trademark application.
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No - No’s
An assignment of a trademark, absent the “goodwill of the business connected therewith”, is invalid –
“assignment in gross”.
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No - No’s
Licensing of a trademark, without quality control provisions, results in a “naked” license.
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The Care and Feeding of Marks
Always use the mark as a proper adjective which modifies a noun, such as CABBAGE PATCH KIDS dolls, LEVI’S jeans, XEROX copy machines.
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Never use a mark in the possessive form, in the plural form or as a verb.
Avoid prefixes, suffixes, additions or deletions of the mark.
The Care and Feeding of Marks
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The Care and Feeding of Marks
Distinguish the mark in use from surrounding text: distinctive type face, quotation marks, all capital letters or capitalize the first letter of each word of the mark.
86
For Registered Marks: “®” or “Registered in the U.S. Patent
and Trademark Office” or “Reg. U.S. Pat. TM. Off.”
Marking and damages.
The Care and Feeding of Marks
87
The Care and Feeding of Marks
For unregistered marks:
“TM” “SM”
or an asterisk indicating “A trademark/service mark of XYZ Corporation.”
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Benefits of a Federal Registration
Registrant can:
1. Claim constructive date of first use of mark to date of filing of application.
2. Prevent registration of similar or confusing marks.
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Benefits of a Federal Registration
3. Secure injunctive relief and damages in federal court.
4. Assert the registration in court as prima facie evidence of ownership, validity and right to exclusive use throughout the United States.
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Benefits of a Federal Registration
5. Eliminate defense of innocent adoption of mark by providing nationwide constructive notice of ownership of mark.
91
Benefits of a Federal Registration
6. Obtain incontestability of the mark after (5) years of use (conclusive proof of registrant’s ownership, exclusive right to use the mark, and the mark’s distinction).
92
Benefits of a Federal Registration
7. Prevent the importation of goods with infringing marks once the mark is recorded with Customs.
93
Thank You!
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