Intellectual Property Presentation - Susan Ochoa

Report
Intellectual Property
Protecting Your Ideas
Susan Ochoa Spiering
Ochoa & Associates, PC / Ferrells PLLC
Corpus Christi, Texas
June 11, 2014
Ochoa & Associates, PC Staff
 Susan Ochoa Spiering, Attorney
 Kara B. Johnson, Assistant
 www.ochoapatents.com
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Ferrells, PLLC
Fairfax, VA Staff
 Michael Ferrell
 Peter Ferrell
 Robert Alexander
 Anna Kinney
 Carol Madalloni
 www.ochoapatents.com
 www.ferrellaw.com
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Objectives – Understanding Intellectual Property
Rights
Basic understanding of patents,
trademarks and copyrights
Importance for business
Copyright & infringement
Trade Secrets
Fair Use
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What is IP?
Intellectual Property is intangible property of a
person or company. That of the intellect/mind.
Made up of patents, copyrights, trademarks,
trade names, trade secrets, trade dress. Also,
often associated with technology related
agreements (e.g. Confidentiality/ Secrecy,
licensing, joint development)
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IP: Can be treated like real property
buy, sell, lease/license, pass on by inheritance,
etc
patent/ TM/ Copyright Registration = house deed
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PATENTS
and changes based on America Invents Act (AIA)
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Real Property =house
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Exclusive right to exclude others from
making, selling, offering to sell, or use your
claimed invention for 20 years from the date
of filing the patent application – basis: US
Constitution Art 1, Section 8 Clause 8
• Utility – useful processes, composition of matter,
machines, improvements thereof; (prov & non-prov).
• Design – ornamental designs (term – 14 yrs).
• Plant – asexually reproduced plant varieties.
• Requirements: new, not obvious, useful.
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Types of Patents
Utility Functional
Design
Plant
Provisional
Non-provisional
non-functional
Asexually
1 year
Regular, to be
reproduced
Not examined examined
3-5 years
Not public
2-3 years
3-5 years
*No rights until the patent grants.
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Why is it important to my business?
 Protect the invention; Exclude others from practicing it; Corner
the market.
 High stakes litigation: high awards or settlements
 e.g.: Apple (1 bill –touch screen push feature of phone);
Polaroid (873 mil camera); J&J (425 mil pharma); GE (170 milwind energy);
Do I need an attorney?
 No, not to draft or file your invention &
application…BUT….rules still need to be followed….
 Yes, if have infringement issues.
 Yes, to advise/counsel.
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1903 – Mary Anderson – windshield wipers
1903-Josie Stuart – dandruff shampoo
1914 – Josephine Cochran – dishwasher
1951 – Marion Donovan – disposable diapers
1979 – Rose Totino – dough products for
frozen pizza
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Problems which can arise when you do not
appreciate your intellectual property rights.
 Failure to identify (audit) and analyze
importance of IP assets.
 Failure to understand that obtaining IP
coverage will only apply to the U.S.
 Failure to consider that intellectual
property rights provide defensive,
economic and healthy measures to allow
your company to grow.
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Problems cont’d
 Failure to protect ;
 Export only mistake – failure to understand,
that you can infringe rights outside the US;
 Failure to enforce – laches (unclean hands)
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Patent Misconceptions
 If I keep my invention secret, I
can apply for a patent at any
time – secret use-maybe.
 If I keep my invention secret, no
one else can get a patent on it –
No
 I can file for a “world” patent –
No
 A patent and a trade secret are
the same thing except a TS is
cheaper - No
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Getting Started on a Patent
 You have an idea…then what do you do?
 Do some of your own searching; consider professional search
 Consider other patents in the area
 Patentability
 Infringement
Consider why you want a patent & costs - benefits to your business
Will you manufacture & sell? License? Enforce?
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Provisional Patent
 Type of patent application, but is not examined
 Gets you a filing date and gives you time to
market and consider your invention further
 Inexpensive
 One (1) year to consider and convert to actual
patent application
 Not without risks. (e.g.. Changes upon
conversion; new filing date, intervening art)
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When to file Patent
 In U.S. within one (1) year of using or disclosing
your invention (statutory Grace/Bar period)
 Preferably before disclosing invention in public
setting, or sell to others.
 Foreign filing: if consider, many countries do not
allow filing once disclose publicly.
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Grace Period
In the U.S. once you disclose a
patent, you only have 1 yr. to
patent it.
Don’t blab about your invention,
use a NDA or file a provisional
patent application first.
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Patents that changed the world
 Alexander G. Bell – telegraphy/ telephone
 Thomas Edison – electric lamp
 Granville Woods – electric railway
 Wright Brothers – flying machine
 Garret Morgan – traffic signals
 Ysidro Martinez – knee implants prosthesis
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Patents in your business
Consider :
 If manufacture or provide a service
 If want / need to corner market – exclude
others
 Balance costs to obtain vs. benefits
obtained
 Infringement & enforcement
What can I do for my business?
 Stop fakes.gov (USPTO)
 IP rights tool kit- country specific
 Non Disclosure Agreements (NDA)
 File patent application if appropriate
 Monitor the market
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Issue Year & Patent
Number
Issue Year
Rapidly growing in issuance
Number
1790
1*
1890
418,665
1912
1,013,095
1936
2,026,516
1962
3,015,103
1977
4,000,520
1992
5,077,836
2000
6,009,555
2006
7 million
2012
8 millionth issued
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(Approx) Costs & Timelines

Search - $800-1500

Provisional App’s:
 $4-7K to draft; $130 filing fee; One year, no examination
Non Provisional App’s:
$7-10K or $12K to draft; $600 filing fee; 3-5 years to get thru PTO.
Foreign File: $3500 PCT appln + charges to modify appln if needed
Each country: $5K to translate, work with foreign assoc; fees vary per country
Generally: $30-50K/country/patent over 20 year term (all costs); $10K/country to get started.
Costs will vary per area, attorney, and invention.
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America Invents Act
Eff 9/16/11

First major change in 60 years to patent rules.

Some changes
First to file
prior user rights, including secret use
patent marking – virtual ok now / false marking triggers more damages
re-examination of issued patent (cost greater than $10K)
interparties rules ; exparte rules
post grant review
inventor oath/declaration
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Summary of Patent Info
 For function features
 Exclude others from claimed matter – protects your invention
 Term: 20 yrs
 Subject matter: machine / widget/ process
 First to file country now.
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Trademarks™
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What is a Trademark?
 Protect words, names, symbols, sounds, colors that distinguish
goods & services. Identifies origin or source of product /service.
Ex: Coca Cola, Pepsi, & Clorox (stylized writing), McDonald
arches.
 TM can incorporate your trade name.
 Term: forever if use in commerce; must prove use
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Trademarks cont’d
• Cannot confuse public
• Cannot be deceptive
• Cannot protect if descriptive or
generic
Problems (Market Place)
* Common law rights vs. registration
* Record at CBP (Customs and Border Patrol)
-let CBP help protect your rights
* Counterfeits
-China, Taiwan, Mexico, India
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Trademark
Consider for your business
Branding & Marketing strategy
Trademark
(what can I do?)
Search to ensure freedom to use
Register through state or federal agency.
Registration vs. Common Law Rights
Objective: provide notice to public
Corpus Christi Longhorn Restaurant Case
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Internet marketing
Provide choice to consumers vs. confusion
(consider proximity, style, context, relatedness of
marks and industry)
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Overlapping of IP (TMs + Patents)
 For example:
 Coca-Cola has a trademark on its name, and
a design patent of the bottle (and their
formula is a trade secret.
 Coca-Cola also has copyrights on
promotions.
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TM Enforcement
 TM Police does exist
 Work in conjunction with CBP (if involves crossing US border), FBI, TABC (if alcohol or
tobacco involved), city police departments
 Raids – flea markets, homes
 Remember Violation terms :
Copyright = pirated

Trademark = counterfeit
 State and Federal laws involved.
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Trade Secrets
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Trade Secrets
What are they?
any information that derives independent, economic value.
e.g.: recipe; chemical formulation (Coke)
Useful?
very, …..if maintain as TS. Must be able to show protect the
secret.
Term:
Pros: Forever, if maintain as TS, and can show efforts towards
maintaining as such.
Cons: If an item can be reverse engineered, people can make it.
In the U.S., based on AIA, there is now limited defense to patent
infringement based on prior commercial use…but still hard to
enforce TS’s….even if enforce, the secret is out.
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Problems
When decide that instead of
patent or trademark protection,
will keep as trade secret due to
costs.
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VS.
Trade Secrets
Patenting
 Keep secret
 Obtain government
grant – 20 yrs.
 Publishing in 18
months
 After 20 yrs, anybody
can use it (public
domain)
 Not everything is
patentable
 Theft can still occur
 Difficult to enforce
 Must Protect
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Example of Enforcement of TS
 Ref: CC Caller Times, 8/20/12, Chicago Story.
Hanjuan Jin, employee of Motorola, software engineer caught at
Ohare airport w/ 1000’s of documents of tradesecrets and $31K in cash.
Court found theft of TS, or intent to sell secret, since was flying out to China.
4 yrs prison to serve as example that US enforces IP rights.
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Copyright
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What is a copyright?
 Right to exclude others from reproducing / duplicating
literary, audio materials
 –EX: Journals, books, presentations, videos, software,
music
 –Rights begin when have tangible expression of idea;
Rights belong to creator, not person who paid (if pay,
need release of rights)
 –Term: 75 years from death of author
 Concern: Piracy of copyrights
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Copyrights
It is not required to register copyrights to
have rights. But in case of infringement, you
need the rights to enforce them and to
claim statutory damages as well as attorney
fees.
Registering can mean difference in $100K
statutory damages vs. $100 actual damages
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www.copyright.gov
• Home page has lots of useful information, such as:
 FAQ (English & Spanish)
 Fees
 Records to Search
 Related Links
• To Register – Go To:
 eCo Link – follow instructions
 $35 application fee
 Can file electronically or paper copy
VA
Visual Arts
TX
Literary /Text
PA
Performing Arts
SR
Sound Recordings
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Protecting your website – consider:
Ownership (of material)
Notice (to public)
Registration (of materials/domain)
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Ownership
 Did you create? If no, do you have agreement
giving you all IP rights?
 Notice --copyright words
 Registration – you will need to register your
copyrights within 3 months of first publication
or prior to infringement; consider the material
you have to register (copyright/TM/patent?).
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Common copyright issues
 Theft of copyrighted music, movies (DVD pirating), website
advertising/phone app’s.
 Recently held even small amount of use is NOT fair use…(nothing is
generally fair use if commercialization involved).
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Fair Use
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What is fair use?
Fair use is copying copyrighted /protected
material for limited and transformative purpose.
E.g. Comment
Criticize
Parody
Teach
Be aware of what kind of software / music /
video / etc… you download into your computer
that may be violating copyrights or other IP rights.
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Fair Use

Caution: can be fine line between infringement & fair use various factors considered

Music – rapping or thieving? Is sampling Ok?

Manu Dibango v. Michael Jackson, Rihanna et al (for use of composition: mama say mama sah
ma ma coo sah

Andrew Paul Leonard v. Stemtech Health Services copyright lawsuit: Sales company was
copying, using and displaying his work on websites and in publications. Leonard was awarded
1.6 million (item not registered therefore award was 3 X’s less.)

Dhillon v. Does - Unauthorized use of photograph: Northern District of California held that the
fair use doctrine barred by copyright claims. (publisher did not make money therefore
considered fair use and no damages)
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Licensing IP
 License = permission by owner of technology (which
could include patents & copyrights, TM’s, SM’s, TN’s)
to make, use, or sell service or product.
 Rights can be granted for any terms agreed between
the parties.
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Market impact of Fakes
 Terminology / definitions….(again):
 counterfeit trademark goods
 pirated copyright goods
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Fakes vs. Authentics
 When people buy fake
purses/shoes etc, they are
encouraging counterfeiting
and piracy.
 www.myauthentics.compublic awareness site.
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Financial Impact (1.7 billion in 2013)
Fakes: CDs, DVDs - movie industry vigilant.
Purses, clothes, shoes – TM police.
TM police all around us: Held: Designer Sherri
Hill was awarded $5M in damages (NY,
6/18/12) from John Doe aka Wang Qinghe,
for Trade dress infringement, false
designation of origin, TM dilution, cyber
squatting & copyright infringement; also
found defendant manipulated Google search
results. (TM & copyright issues considered)
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Counterfeit (TM principle)
 There is real impact on you; must be vigilant of health and safety
 Supply chain integrity issue, especially with drugs
2012 Concern over:
 Toothpaste
 Electrical cords
 #1 counterfeited drug : Viagra
 Fire extinguishers
 Lithium batteries
 Optical media
 Pharmaceuticals
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2013 –Top 10 Counterfeit Goods in USA
Seized Value(millions)
Retail Value (millions)
1. Electronics
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101
2. Shoes (red soles)
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97
3. Drugs (viagra)
17
25
4. CD’s / DVD’s
15
35
5. Clothing
15
126
6. Perfume
9
51
7. Watches
9
112
8. Cigarettes
8
10
9. Computer hard ware
8
22
10. Toys/Games
7
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What you can do to protect and enforce IP…
 Conduct an IP audit – identify what is eligible for protection
 Obtain US rights (at home) and identify any local laws that
could impact the market
Obtain rights in appropriate foreign markets
 Keep your information as safe as possible
 Prepare for worst case scenario
 Monitor markets in case of infringement
 Prevent infringed goods from coming to US
 Work with government agencies (FDA, BATF, ITA/TCC, USPTO,
DOJ, etc.)
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Some remedies for infringement
(not exhaustive list)
TM and/or Patent:
 File suit
 Get TRO or preliminary injunction
 Get costs & attorney fees in select cases
 Destruction of property
 Seizure or impound
 Forfeiture
 False Advertisement Damages
 Profits
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Items that cannot be protected:
 Flags
 People’s names
 Clothes/patterns
 Naturally occurring items
 Religious Articles
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Search engines





USPTO.gov – for patents & TM’s
COPYRIGHT.gov
TESS database (TM’s)
GOOGLE/ GOOGLE Patents
Numerous combinations of the relevant key
words are searched;
 Non-patent databases include: IP.com, Scirus,
Google Scholar, The Wayback Machine
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Domain Names
 Search/ Check with
 Whois.com
 Register through godaddy.com or something
similar
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Legal Notices
Patent pending
Patent number
Copyright
Trademark™
Registered®
Email notices
For Copyrighted websites, use the word
“Copyright” and not the symbol “©”
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Emails
Caution what write & who write to;
assume can be used in litigation
Careful w/ “reply all” button
Short, factual (do you really need to string
all emails together?)
Disclaimer – recommend having on all
emails send out
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Recommendations
 Exercise common sense
 Evaluate risks/needs of business vs. protection vs.
costs
 Consider consulting with attorney, even short term
 Audit & Protect IP rights
 Keep quiet about inventions/secrets
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Disclaimer
 Information is provided “as is” – no
warranties
 Use at your own risk
 Intended to be general
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Thank You for Your Attention;
Susan’s Information
 Susan Ochoa Spiering
 Ochoa & Associates, PC / Ferrells’s PLLC
 4921 Willliams Drive
 Corpus Christi, TX 78411
 Ph: 361.806.0070
 Email: [email protected]
 Website: www.ochoapatents.com
Intellectual property firm serving your IP rights & needs. If you lose me, I can be
found on the internet “Corpus Christi Patent Attorney”, or “Susan Patent Attorney
Corpus Christi”…or some variation of this.
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Thanks for permission from State Bar of
Texas Intellectual Property PR Committee
for some of the slides.
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