IDENTIFYING AND PROTECTING INTELLECTUAL PROPERTY

Tyson Bensonbenson@adventip.com

What is Intellectual Property?

Intellectual Property refers to creations of the mind and includes:

• Inventions• Symbols, Names, and Images• Literary and Artistic Works• Designs used in Commerce

Intellectual Property

• Patents

• Trademarks

• Copyrights

• Trade Secrets

Patents

What Is a Patent?

Set of exclusive rights to stop others from making, using, selling, or offering to sell a product or process

Patent rights can be commercially utilized in two basic ways: •Directly•Indirectly

To lend business credibility

Under What Conditions is a Patent Granted?

• Patentable Subject Matter

• Timely Filed

• Written Description

• Best Mode

Under What Conditions is a Patent Granted?

• Novel

• Useful

• Nonobvious

How is a Patent Obtained?

Patent Application• Legal document • Must fully describe the invention • Must include one or more claims

Provisional Application • Lower cost • Claims not required• Not examined• “Regular” Application must be filed within a year• Does not count in determining the expiration date of the patent

How is a Patent Obtained?

Examination of Patent Application

Issue of Patent (Issue Fee)

During Examination, the Application may be kept secret (Exception: Foreign Filing) Filing does not create enforceable rights (Patent Pending)

Maintenance Fees

Should a Patent Search be Performed?

Patentability

Freedom to Operate

Clearance

Trademarks

What is a Trademark? A word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others

Trademark rights may be used to prevent others from using a confusingly similar mark

Registration of Trademarks

How do TrademarkRights Arise?

Trademark rights arise in one of two ways:

• By filing a mark with the United States Patent and Trademark Office based on a bona fide intent to make use of the mark on a product or in association with a service that will soon be offered to the public

• By actually using the mark in commerce on a product or in association with a service

How are Trademarks Registered?

File Application for Registration

Examination• Likelihood of Confusion• Inherently incapable of performing the identification function of a trademark

Actual Use Required Prior to Registration

How are Trademarks Registered?

Term of Registration = 10 years

Can be renewed

Failure to use a mark can cause the rights in the mark to be abandoned

Use of the ®, TM and SM symbols

What are the Advantages of Registering a Trademark?

Nationwide constructive use and right of priority

Constructive notice

Prevents acquisition of common law rights

Legal presumption of the registrant's right to exclusive use of the mark and the validity of the mark's registration

Permits the use of the “®” symbol

Goods bearing a mark which infringes on a registered mark may be excluded from entry into the U.S.

Must Trademarks be Registered?

No – You can still obtain exclusive rights in the market in which the marks are used, if the use is prior to the filing date of any federal registrant or any other user in that market of a confusingly similar mark

Protecting Your Brand

Trademark Searching and Clearance – Google, IP Attorney, etc.

Using Your Mark in Branding – “TM,” “SM”

Policing Your Mark – Searching, Cease and Desist…

Copyrights

What Is a Copyright? A copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished

Copyrights are registered by the Copyright Office of the Library of Congress

What Is a Copyright?Copyright provides a “bundle of rights” which include the following rights:

• to reproduce the copyrighted work• to make derivative works (such as a movie from a novel)• to distribute copyrighted works to the public• to perform, publicly, certain works (such as music)• to display, publicly, certain works (such as paintings)

How is a Copyright Obtained? Copyright arises when work is fixed in a tangible medium

Copyright applies to both unpublished and published works

Copyright endures for the life of the author plus 70 years

Registration of a copyrighted work is not required for existence of the copyright

Registration is a prerequisite to a lawsuit for copyright infringement and to certain legal remedies

How is a Copyright Registered? Copyright registration is simple and inexpensive

The Registrant completes a simple form provided by the Copyright Office and returns it to the Office with a small fee and copies of the work

The Registrant may be the author, including an employer or other person for whom a “work made for hire” was created, or a person or entity which has acquired the copyright)

Transfers of copyright ownership (including exclusive licenses) must be in writing to be valid

What is Copyright Notice?© 2011 XYZ Corporation

Notice should include the copyright symbol “©” or the word “Copyright” or its abbreviation (Copr.), followed by the year of first publication of the work and the name of the Copyright Owner

Notice is no longer required on copies of works published after March 1, 1989

Trade Secrets

What are Trade Secrets? Is not generally known to the public

Confers some sort of economic benefit on its holder

Is the subject of reasonable efforts to maintain its secrecy

Questions?

Tyson BensonPhone: 402-991-6085

E-mail: benson@adventip.com