© Kolisch Hartwell 2010 All Rights Reserved, Page 1 Protecting Innovations in Green Technology Peter D. Sabido Intellectual Property Attorney Kolisch Hartwell,

© Kolisch Hartwell 2010 All Rights Reserved, Page 1

Protecting Innovations in Green Technology

Peter D. Sabido

Intellectual Property Attorney

Kolisch Hartwell, P.C.


Overview• Basics of the primary areas of intellectual

property law: Patents Trademarks Copyrights Trade Secrets

• General considerations for each of those areas• Hypothetical example


US Patent No: 5,443,036Method of Exercising a Cat

"A method for inducing cats to exercise consists of directing a beam of invisible light produced by a handheld laser apparatus onto the floor or wall or other opaque surface in the vicinity of the cat, then moving the laser so as to cause the bright pattern of light to move in an irregular way fascinating to cats, and to any other animal with a chase instinct.”


PATENTS

Our inventions mirror our secret wishes.- Lawrence George Durrell


What is a Patent?Grants the right, for a fixed period of time, to exclude others from • making, • using, • selling, • offering to sell, or • importing into the United States

a “patented invention”.


What can be Patented?• Devices• Compositions of Matter• Processes• Articles of Manufacturing• Methods of Use• Software• Business Methods• Genetically Engineered Organisms


What Cannot be Patented?• Principles• Laws of Nature• Mental Processes• Intellectual

Concepts• Ideas• Natural Phenomena

• Mathematical Formulae

• Fundamental Truths

• Original Causes• Motives


Types of Patents

• Utility Patents Protects how an invention works

• Design Patents Protects how an invention looks

• Plant Patents Protects new varieties of plants


Requirements for Patents

• Useful• Novel (New)• Nonobvious• Invented by you


Is it Patentable?

Existing Articles Invention


Practice the Patent?

• Patent grants only a right to exclude and not a right to use

• A patented article may infringe a third party’s patent

Patent covering chair may cover chair with wheels


A Growing Field of Innovation

All U.S. Patents granted1800–2004


Patent Considerations

• Conduct patentability searches• Consider conducting clearance searches

Entering new technology area Concerned with particular competitor

• File patent application before public disclosure One year grace period in North America No or limited grace periods in most other countries


Patent Considerations

• Consider expediting patent applications, such as via USPTO Green Technology Pilot Program First 3,000 green technology patents 1/3 so far in chemical & materials engineering

category

• Mark products appropriately


Hypothetical: The Banana Bike

Designer:Joey Greentech

New company: Shrek Bicycles, Inc.

Name: BANANA BIKE


The Banana Bike

• Banana-shaped frame more aerodynamic than previous frames

• Very distinctive look.


The Banana Bike

What may be patentable?


US Patent No: 5,996,127 Wearable device for feeding and observing birds

"A device for feeding and observing flying animals comprising: a hat, the hat including a front portion and a rear portion; a first support mounted on the hat and extending forward of the front portion of the hat; and a feeder configured to contain food for flying animals mounted on the first support, wherein the flying animals can be observed while they feed.”


TRADEMARKS


What is a Trademark?

Protects an exclusive “sign” or “mark” that is used to distinguish products or services.

• Right to exclude others from using a confusingly similar mark for similar products or services

• For famous marks, right to exclude others from using a confusingly similar mark for any products or services


Examples of Trademarks


Other Trademark Examples


Trademark Types• Common law

Automatic Rights exist where mark used plus zone of expansion Burden on owner to prove rights

• State registered Rights exist within state

• Federally registered Nationwide rights, regardless of where mark used May be obtained before use begins Prevents later user from affecting use of your mark


How to Select a Mark

Two main considerations:• A distinctive element• Cannot cause confusion with existing marks


Can “Apple” be a trademark?

No• Common commercial name for

the goods• Does not distinguish goods from

others in marketplace

Yes• Identifies goods• Distinguishes goods from

others in marketplace


Trademark Considerations

• Conduct trademark searches Violate a third party’s mark? Can register mark?

• File trademark applications early• Present the mark as a mark

Set marks apart from regular text Follow marks with a trademark symbol (TM, SM, ®) Marks always are adjectives, never nouns


U.S. Trademark Statistics

• Fuel Cells > 900• Solar Panels > 1300• Wind Turbines > 700


The Banana Bike (continued)• Registered “Shrek Bicycles” with the Secretary of

State• Obtained the following internet domain names: shrek.com

shrekbicycle.comshrekbicycles.comshrekbike.comshrekbikes.com

• Enough to avoid problems based on use of “Shrek Bicycles” as brand name?


The Banana BikeAnswer: NO

• Trademark rights obtained by first to use a particular mark for goods/services in a particular geographic region

• Others could have trademark rights in “Shrek Bicycles” because another company may

use the exact same name in another part of the country for bicycles

have a federal trademark registration on the exact same name for bicycles


US Patent No: 5,509,859 Leash With Sound

"A novelty item for creating the illusion of an imaginary pet including a hollow, elongated leash with a handle at one end and a collar and harness adjacent the other end. Housed within the handle, which is hollow, is a battery power source and an integrated circuit for producing a plurality of animal sounds.”


COPYRIGHTS


What is a Copyright?

Grants the right for a fixed period of time to exclude others from:

• copying, distributing, and performing or displaying publicly an original work of authorship, and

• preparing derivative works based on the original work of authorship


Original Works of Authorship• Literary works• Pictorial, graphic, and sculptural works• Audiovisual works• Musical works• Dramatic works• Sound recordings• Architectural works• Choreographic works


Original Works of Authorship

Business-related examples:• Software• Product manuals and brochures• Website design and content• Training videos• Presentations


Not “Original Works of Authorship”

• Ideas• Procedures• Processes• Systems• Titles• Short Phrases

• Methods of Operations

• Concepts• Principles• Discoveries• Useful Articles


Types of Copyrights

• Automatic Rights Original work of authorship Fixed on a tangible medium

• Registered Rights Registered with a government entity

- U.S. Copyright Office Life of author plus 70 years Statutory damages


Copyright Considerations

• File copyright applications early• Use copyright notice• Have employees and contractors sign

agreements that cover IP Independent contractors own copyrights in their work

unless have agreement to the contrary


The Banana Bike

User’s Manual • written by a Shrek Bicycles employee• company’s usual humorous style• includes a brief history of bananas

Any copyright considerations?


US Patent No: 7,062,320 Device for the Treatment of Hiccups

"A device for curing hiccups, comprising: a metallic cup-like vessel being a first electrode for producing electricity adapted to be applied to the lip of the user; and a second electrode electrically insulated from said first electrode being affixed to said vessel and extending from a point substantially within said vessel to a point substantially above a rim of the vessel.”


TRADE SECRETS


What is a Trade Secret?

Protects against acquisition or disclosure by “improper means”

• Theft• Bribery• Misrepresentation• Breach of a duty to maintain secrecy• Espionage


Examples of Trade Secrets

• Drawings• Cost Data• Customer Lists• Compositions• Patterns• Compilations

• Programs• Devices• Techniques• Processes• Methods of

Assembly• Other Methods


Trade Secrets – Specific Examples

KFC’s 11 Secret Herbs and Spices

Coca-Cola’s Secret Soft Drink Formula


Requirements for Trade Secrets

• Independent economic value from being not generally known

• Reasonable efforts to maintain its secrecy


Trade Secrets Considerations• May last forever but all value may be lost

at any time Reverse engineering Accidental disclosure Independent development

• Consider patent protection Otherwise, a third party may obtain a patent on your

“secret”


The Banana Bike (continued)

• Certain metal alloy• The two banana shapes must be connected a certain way to avoid defects in the bike frames

Protectible under trade secret law?


Peter D. Sabido

Intellectual Property Attorney

Kolisch Hartwell, P.C.

520 SW Yamhill Street, Suite 200

Portland, Oregon 97204

(503) 224–6655

www.khpatent.com

[email protected]

Documents

© Kolisch Hartwell 2010 All Rights Reserved, Page 1 Protecting Innovations in Green Technology Peter D. Sabido Intellectual Property Attorney Kolisch Hartwell,