Patent law for the inventor

What Inventors Need To Know About

Protecting Their Intellectual Property

Andrew Rapacke, JD | USPatentsNMore

Get to know Andrew Rapacke, JD

Andrew Rapacke is a Registered Patent Agent, pending admission to

the Florida Bar. Andrew assists clients in electrical and computer

technology, mechanical and medical devices, and turbines and power

generation.

Mr. Rapacke earned his J.D. from the Florida State University

College of Law, where he was named to the Phi Delta Phi Legal

Honors Fraternity, was a member of the Journal of Trans national

Law and Policy, and recipient of the Distinguished Pro Bono Service

Award. He is a candidate for an M.S. in Electrical and Computer

Engineering from the University of South Florida.

Prior to attending law school, Mr. Rapacke graduated from the United

States Naval Academy and served as Lieutenant in the United States

Navy. While serving as Naval Engineering Officer, he successfully

completed Naval Advanced Gas Turbine Engineering School and was

responsible for propulsion and electrical systems onboard several

Naval warships. Mr. Rapacke is fluent in Japanese.

Get to know USPatentsNMore™

Protect your inventions, ideas, and brands without

sacrificing quality.

We don't nickel and dime - we provide clear and simple

proposals so you can understand what you're paying for and

exactly what it will cost.

We take a strategic approach - we understand business and

most importantly we understand your need to get a return on

your intellectual property investment. we provide the

services that you need to build and grow profit and sales.

We’re lean - most intellectual property firms have massive

overheads from fancy offices with big expense accounts. We

know clients have to pay for that overhead so we keep a lean

and intelligent approach to our own business so we can

deliver high-quality and affordable IP services.

Overview

• Why care?

• What IP do I need?

• Why conduct a prior art search?

• Understanding the ‘Big Picture’

• Patents in a nutshell

• Trademarks

• Copyrights

• May I combine IP?

• Prior Art Search

• Avoid these common mistakes Inventors make

• Common IP speedbumps

• Why Inventors need IP early

• Closing thoughts

Why care?

Meaningful patentability

↓

Commercial potential

If you are an inventor, you care about:

Patents in a nutshell

• What?- process- machine- product- composition of matter

(includes software)

• Patentability- novel- useful- non-obvious

• Exclusive right – not an affirmative one!

… Patents in a nutshell

• Term

– 20 years from filing

• Challenges

– must file within one year of public use, offer for sale,

sale, or publication; and, even that isn’t so safe under first-to-file; enters public domain after expiration of patent

• Variations- plant patent

(asexual reproduction)- design patent

(ornamental - 14 years)

Trademarks

• Trademarks are words, names, symbols, devices and images that represent products, goods, or services.

• Trademarks identify and promote different brands or services.

• For example, I would trademark register the service name USPatentsNMore™

• ™ versus ®

Copyrights

Copyrights protect the

expression of ideas in

literary, artistic and musical

works.

– For example, I would

copyright register all the

books and articles that I

have written.

May I combine IP?

You can use all three types of intellectual property protection together if necessary.

– For example, I would patent my invention of an improved lightbulb, a lightbulb that never expires.

– I would also trademark register the brand name of my invention, Let There Be Light.

– I would copyright register the instruction manual that I wrote that explains how to install and maintain my bulb.

Avoid these Common Mistakes Inventors Make

• Letting yourself ‘get in the way’

• Trying to do it all yourself

• Selling the Invention

• Publicly using the invention

• Bad provisional patent applications

• Poor Prior Art Search

• Sinking all your money into a patent

• Unclear product differentiation

• Inability to articulate ’30 second elevator speech’

• Assuming everyone will want your invention

• Falling into a scam

• Lacking business acumen

• Expecting unrealistic results

What is Prior Art?

Prior Art is any information in the public domain in

any form before a given date that might be relevant to

potential features and embodiments of your invention.

Why conduct a Prior Art Search?

• Understand the distinguishing

features of available relevant

art when you draft claims.

• Prior art is generally expected

to provide a description

sufficient to inform one skilled

in the art of whether there is

art that falls within the scope

of your potential claims.

Weigh the pros and cons of a

“do-it yourself” search

• Advantage:

• Potentially having a better understanding of the nuances of an invention, technical materials, publications, and relevant art

• Disadvantages:

• Not being able to detach yourself from the invention to be able to give an unbiased assessment

• Risk not understanding “the duty to disclose” or “what's close enough?”

The USPatentsNMore Approach to Prior Art Search

• Start a broad search

(200-300 results)

• Attempt to identify families of

patents and look for patterns

• Create a “score card” of each

patent and include notes

• Identify your highest scoring

prior art and begin an in-depth

analysis

• Identify distinguishing features

in the prior art

• Remember - Don’t confuse

search results with

patentability!

Common IP Speedbumps

• Assuming IP is not important

or not valuable for my

invention or business

• The Do-It-Yourself Approach

• Leaping Before You Look

Why Inventors Need IP Early

• Protect competitive

advantage(s)

• First Inventor To File

(FITF)

– Avoid ‘missing the boat’

• file in time

• First To Invent (FTI)

Trusted Partners

• Carrie Jeske / Will It Launch | As Seen On TV

• Tom Jordan / The Pitch Man

• Stephen Keys / ©inventRight

• Steven Sauer / Bigger Tuna

• Barb Gray / Flutterby Media

Closing thoughts

Thank you!

Contact us for questions and/or help with your IP!

Andrew Rapacke, JD andy@cweisslaw.com | 407.801.9368

USPatentsNMore.com