Fundamentals of Patent and Copyright LawforFlorida State UniversityAtlanta, GeorgiaTelephone: (404) 688-0770E-mail: bneedle@needlerosenberg.comhttp://www.needlerosenberg.comBy: Bill Needle

Web Sites for Patents, Trademarks and Copyrights

www.uspto.gov(Patents and Trademarks)

www.loc.gov/copyright(Copyrights)

Patent PowerImmediately following the U.S. Court of Appeals decision on August 9, 2000 that Eli Lillys patent on Prozac was invalid, shareholders dumped $36 billion in Lilly stock, roughly a third of the pharmaceutical giants market capitalization.

Patent Power Royalties from inventions earn an estimated $150B/year worldwide and are expected to grow 30% annually over the next 5 years.

Trying to Cash in on Patents. New York Times, June 7, 2002.

Patent Power

$1.5B in licensing revenue for IBM in 2001 (over 11% of pre-tax profit).Hitachi had $428M in patent licensing revenue in 1996.Canon had $127M in patent licensing revenue in 1997.

Applications Filed and Patents IssuedPatents IssuedPatents Issued

Patent Office StatisticsPatents Issued:

66,000 in 1980.

176,000 in 2000.

168,000 in 2002.

*Source U.S.P.T.O. Numbers rounded to nearest 1000.

Patent Office StatisticsEach week, the Patent Office issues approximately 3,500 new patents.

Patent Office Statistics1998: 260,889 applications filed. 2002: 333,688 applications filed.

Patent Office StatisticsLast year, 333,688 new applications joined a backlog of 355,000 older applications with only 3,538 Examiners.

Patent Office StatisticsFiling of patent applications for biotech inventions jumped 24% in 2000 and 2001.

Patent Office StatisticsAbout one-half of the examiners in the organic chemistry/ biotech/ pharmaceutical groups have Ph.D.s.

Percentage of Examiners byTechnical Discipline

As seen from National Airport

U.S. Patent and Trademark Office

A Glimpse Inside the PTOUSPTO Public Search Room (main work area)

A Glimpse Inside the PTOUSPTO Public Search RoomNorth Stacks Area

PTO Search Room

Patentability TestsThe 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)

Patent TheoryA patent is a contract between the inventor and the Government (Patent Office).

Patent TheoryConsideration for the contract: Inventor agrees to disclose fully the invention to the public fully is the operative word.

Patent TheoryIn exchange, the Government grants for a limited time a limited monopoly on the invention to the inventor if certain patentability tests are met.

Patent TheoryWhat is the limited time or life of a patent?20 years from the filing date of a utility application (no rights during pendency)14 years from issuance for a design patent

Patent TheoryWhy a limited monopoly?An inventor does not have a guarantee that he can make, use or sell the patented invention. A third partys dominating patent may exist.

Patent TheoryPatents grant their owner the right to exclude others from:Making the inventionUsing the inventionSelling the inventionOffering the invention for saleImporting the invention

Patentability TestsWhat are the patentability tests?Usefulness 35 U.S.C. 101.Novelty 35 U.S.C. 102.Non-Obviousness 35 U.S.C. 103.

Patentability TestsUsefulness/UtilityDoes the invention really do anything and, if so, does it solve the problem it is designed to solve?

Patentability TestsNoveltyNovelty and non-obviousness are determined by comparing claimed invention to the prior art:Prior patents/publicationsPrior public usesPrior commercial offers to sell

Patentability TestsNoveltyIs the claimed invention disclosed anywhere in the prior art?

Patentability TestsNon-ObviousnessEven if new and novel, would the claimed invention have been obvious to one skilled in the art at the time of the invention?

Requirements for PatentabilityWARNING:The One-Year Statutory Bar Rule

Requirements for PatentabilityPublic Use/Offer for Sale/Sale Before U.S. Applications Filed No Foreign Filings

ONE YEARPublic Use/SaleFile in U.S.

Requirements for PatentabilityU.S. Application Filed Before Public Use/Offer for Sale/Sale Foreign Filings PreservedONE YEARFile in U.S.File ForeignPublic Use/Sale

Do Not Do Any of the FollowingYou 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 FollowingDisplay or discuss the invention at a seminar, lecture, workshop, poster presentation or trade show open to the public, or

Disclose the invention without a signed Confidentiality (or Non-Disclosure) Agreement, or

Do Not Do Any of the FollowingDisclose the invention on inventors or Universitys web site, orSubmit an article to a journal for publication, or

Publish a manuscript, letter, note or chapter in format available to the public, or

Do Not Do Any of the FollowingOffer for sale or sell the invention, orDistribute samples of the product to customers or collaborator, orConsumer or market test a new product, or

Do Not Do Any of the FollowingDistribute advertising brochures about the invention, orDemonstrate 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.

Please Do the Following:Consult with the Universitys Technology Transfer Office before any public disclosure of the invention.

Stamp CONFIDENTIAL on every page of the technical portion of any grant proposal.

Use laboratory notebooks.

Documenting Invention

Why? - important to prove date of invention corroboration in interference proceeding.All experimental protocols and data should be entered in a notebook.Notebook pages should be numbered and bound.All entries should be dated and witnessed by someone who understands entry but is not a co-inventor.

Whats An Invention? Conception + Reduction to Practice =

Invention

Whos An Inventor?Inventorship cannot be determined until the patent application claims are drafted.Inventor is one who contributes significantly to either the conception or reduction to practice.Co-author does not necessarily mean co-inventor.

Provisional Patent Application

No specific Patent Office format required. No claims or formal drawings.Not examined in Patent Office.Requires complete description of invention and best mode.

Provisional Patent ApplicationCheaper and quicker to file than utility application.Use Patent Pending marking.However, have to file utility application within one year or provisional becomes abandoned.

Utility Patent ApplicationRequires specific Patent Office format: formal drawings, specification and claims.Examined for utility, novelty and non-obviousness.Issues as patent (2 years minimum).20-year term starts from filing date of utility application.

Process for U.S. Utility PatentsPatent IssuesGather information on inventionPatentability SearchPrepare ApplicationInventor Signs Declaration, POA, AssignmentPatent Application Receive Notice of AllowanceResponse to Action FiledExaminer Issues Office ActionUSPTO Advises serial number and filing dateN&R Files Application in Patent OfficePay Issue FeeUSPTO Examiner conducts patentability searchPublication of Application 18 months from filingPay Maintenance Fees at 3 , 7 and 11 years after patent issues

Patent Example

Utility Patent

Design Patent

Copyrights

What is Copyright?A form of protection for original works of expression fixed in a tangible form, including literary,musical,pictorial, graphic,sculptural,audio/visual works.

What is Copyright? Songs Movies (but not their titles) Games Jewelry Software (sequence of coded instructions which direct the process steps)Examples of Copyrightable Subject Matter:

CabbagePatch KidsBabies

Copyright

Original works of expression

Originality Novelty

Idea vs. Expression of IdeaOriginal works of expression

Copyright does not protect an idea, only the expression of the idea.

Idea vs. Expression of Idea

Idea vs. Expression of Idea A copyright owner has no right to prevent the independent creation of the same expression of an idea.

Rights of Copyright OwnerCopyright owner has the exclusive right:To reproduce the work,To perform the work publicly,To distribute copies of the work,To display the work publicly,and

Rights of Copyright OwnerTo make derivative works based upon the work.

Copyright Protection How to obtain copyright protection?Arises automatically with fixation of the work in a tangible medium.

Copyright Protection

Dont have to register the copyright.

Only need to register if suing for infringement.

Copyright Protection

However, its recommended to seek registration within 3 months from first publication to collect statutory damages (up to $100,000/infringement) and attorneys fees.

How to Register a Copyright?Download the appropriate form at the Copyright Office website:

www.loc.gov/copyright

and follow the simple directions.

Copyright Notice [year date of creation] [owner]

or

Copyright [year date of creation] [owner]

Work for HireA work prepared by an employee within the scope of his/her employment (i.e., it was part of the job duties of the creator to create the work) or

Work for HireA work specially ordered or commissioned for use as:a contribution to a collective work;as a part of a motion picture or other audiovisual work;as a translation;as a compilation;

Work for Hireas an instructional text;as a test;as answer material for a test; or as an atlasif the parties expressly agree to a written instrument signed by them that the work shall be considered a work made for hire.

Work for HireMoral: Always have the author of the work sign an agreement under which the copyright in the work is assigned to you.

Duration of CopyrightLife of the author plus 70 years.

If work for hire: shorter of 95 years from publication or 100 years from creation.

Thank You!Atlanta, GeorgiaTelephone: (404) 688-0770E-mail: bneedle@needlerosenberg.comhttp://www.needlerosenberg.com

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