Intellectual Property Law for Non-IP Attorneys

INTELLECTUAL PROPERTY LAW FOR NON-IP ATTORNEYS

Grant Clayton- Clayton, Howarth & CannonDave Johnson, Tim Nichols- Workman Nydegger

TRADEMARKS

• A trademark or service mark is any word, name, symbol, phrase, device or combination that is used or intended to be used to indicate the source of a seller’s goods and/or services, and to identify and distinguish the seller’s goods and/or services from another’s.

What is a trademark?

What is a trademark?

• FANCIFUL

– ex. GOOGLE or VERIZON

• ARBITRARY

– APPLE (computers) or KAYAK (website)

• SUGGESTIVE

– TRAVELOCITY (travel services)

• DESCRIPTIVE

– PRETZEL THINS (pretzels)

• GENERIC– TRAMPOLINE (originally a trademark of the Griswold-

Nissen Trampoline & Tumbling Company)

Strong

Weak

Picking a Mark

• Use Based Application– Description of goods and

services– Pick your class(es)

• $325 per class

– Date(s) of first use– Specimen– Declaration

• Using the mark

• Not aware of others– Same mark, same goods or

services

– Opposition period

• Intent to Use Application– Description of goods and

services– Pick your class(es)

• $325 per class

– Declaration• Bona fide intention to use

• Not aware of others

– Within 6 months• Statement of Use

– Opposition period

Application Process

Design (color)

Design (black and

white)

Word

VERIDICUS HEALTH

Priorities

“My mark should describe my business”

Misconception #1: Descriptive is good

Misconception #1: Descriptive is good

“I have a trademark registration, I own the mark”

Misconception #2: Registration=exclusive ownership

Feeb

Shoes

Coats

Online retail store services

PantsBackpacks

Misconception #2: Registration=exclusive ownership

“I have a trademark registration, I can use the mark”

Misconception #3: Registration=exclusive right to use

Third party begins use

Date of first use

File trademark application

Registration approved

PRIORITY IS KEY!

Misconception #3: Registration=exclusive right to use

PATENTS

• A patent is a property right, granted by the government, which allows the owner of the patent to prevent others from making, using, selling, or importing the invention for a limited period of time.

What is a patent?

Claimed Invention

• Utility Patent• Design Patent• Plant Patent

Three types of patents

What can be patented?

• Utility Patent– 20-year term (from filing)

U.S. Patent 5,996,127


• The claimed invention must be directed to one of four patent-eligible subject matter categories

– Process: an act, or a series of acts or steps– Machine: a concrete thing, consisting of parts– Manufacture: an article produced from raw or

prepared materials and giving to such materials new qualities, properties, forms, etc.

– Composition of matter: any compositions of two or more substances and any composite articles


• The claimed invention cannot wholly embrace a judicially recognized exception

– Laws of nature– Physical phenomena– Abstract ideas


• Design Patent

– 15-year term (from issue)– Ornamental designs for articles

of manufacture• Shape/configuration; and/or• Surface ornamentation


• Plant Patent

– 20-year term (from filing)– Asexually reproduced

plants


• Patentability- the ability of an invention to satisfy the legal requirements for obtaining a patent.

• Infringement- the unauthorized making, using, selling, or offering for sale of a patented invention within the United States, or importing into the United States a patented invention during the term of the patent.

Patentability vs. Infringement

Jason Pam

Example-

Patentability vs. Infringement

HOW CAN YOU HELP PROTECT YOUR CLIENT’S RIGHTS?

The United States is now a first-to-file system

Protecting your client’s patent rights

There are time limits for filing a patent

• Strict and unforgiving time deadlines apply to establishing your client’s patent rights


Foreign patents must be pursued at roughly the same time as a U.S. patent

• If you wait until you get your U.S. patent, it will be too late to apply in other countries


What you file is as important as when you file

• A patent application is a complex document that describes an invention in legal and technical terms


Not all patents are created equal

• It is important to do some due diligence to find out what a patent really stands for


If your client buys a patent, record the assignment document in the USPTO

• If an assignment is not recorded within 3 months after signing, the assignee stands at risk of having its rights subordinated to a subsequent bona fide purchaser or lender acting without notice of the assignment. See 35 USC 261, Para. 4


What can be recorded in the USPTO?

• Just about anything– Assignments– Notes and other security interests– Wills– Letters disputing ownership


Documents

Intellectual Property Law for Non-IP Attorneys