Amin Talati’s George Carrera defines and discusses intellectual property assets with a focus on patents, and trademarks, and touching on copyrights, trade secrets and more as it relates to cost effectiveness and generating value in inventions and brands. Mr. Carrera shares how a trademark search may be obtained, what is patentable, and the timelines and costs involved.

1. Discovering &Discovering &
Protecting Your IP :Protecting Your IP :
Cost-Effective Ways to Identify and Develop
Untapped Intellectual Property Assets
in Your Company
George M. Carrera, Jr.,
Registered Patent Agent (USPTO)

2. Intellectual PropertyIntellectual Property
Patents
Trademarks
Copyrights
Trade Secrets
Licensing

3. What are Trademarks?What are Trademarks?
• A Brand Name: Words, logos and
symbols that signify the source of a
product or service
• Trademarks: goods
• Trade Dress: distinctive packaging or
product appearance (“the total image of a
product” – size, shape, color, texture,
graphics, etc.)
• Service Marks: services
• Trade name: company name

4. TM: Dual PurposeTM: Dual Purpose
1. Inform consumers as to the sources of
the goods
2. Inform consumers as to the quality of
the goods
TRADEMARKS SERVE TO SYMBOLIZE
THE TRADE REPUTATION AND THE
GOOD WILL OF THE PROPRIETOR.

5. TM: Registration?TM: Registration?
• Not required
• You can establish rights in a mark based
on first use
• Advantages to Federal (US) registration:
“Although federal registration of a mark is not
mandatory, it has several advantages, including
notice to the public of the registrant's claim of
ownership of the mark, legal presumption of ownership
nationwide, and exclusive right to use the mark on or in
connection with the goods/services listed in the
registration.” uspto.gov (emphasis added)

6. TM: Practical StepsTM: Practical Steps
1. Identify your Mark
2. Identify your Goods or Services
3. Search databases (USPTO.gov;
Internet; common law sources)
a. Hire a professional
b. Ask an attorney
4. File an application (you should use an
attorney)
a. Based on use in commerce
b. Intent to use

7. TM: ExampleTM: Example
1. Identify your Mark: “JETTISON JUICE”
2. Identify your Goods or Services: sports
drink
3. Search databases
a. Identify product classes: 5 (dietary
supplements, protein shakes, meal
replacement shakes), 29 (meats, fruits,
vegetables, milk and milk products, soy
milk), 30 (coffee, tea, sugar, condiments,
etc.), 32 (beers, water, juices, sodas,
non-alcoholic beverages),
33 (alcoholic beverages)

8. TM: Example, cont’d.TM: Example, cont’d.
b. Preliminary searches – screen for exact
or literal matches in relevant classes
1. TESS (Trademark Electronic Search System) at
USPTO.gov –Basic, Structured, or Free form
2. Search engines (Google, Bing, etc.) for common
law use
b. If no exact or literal matches are noted
consider having a comprehensive
trademark search conducted
c. Ask an attorney
d. Hire a professional

9. TM: Example, cont’d.TM: Example, cont’d.
4. File an application* (you should use an
attorney)
a. Based on use in commerce (provide a
specimen, and date of first use in
commerce in the U.S.)
b. Intent to use (must later provide a
specimen)
* Can file electronically through the TEAS system (preferred)
or via regular U.S. mail

10. TM: Searching in ‘TESS’TM: Searching in ‘TESS’
• Structured search for JETTISON JUICE
• Broad – live mark in any class
Jettison[mn] and live[ld]
Where [mn] = unpunctuated mark
[ld] = mark status as live or dead
• Narrow – live mark containing first term in
class 32
Jettison[mn] and live[ld] and 032[ic]
Where [ic] = international class (must be
3 digits)
• Narrowest – live exact match in class 32
“jettison juice”[mn] and live[ld] and 032[ic]

11. TM: ResourcesTM: Resources
• Overview of the trademark process
www.uspto.gov/trademarks/process
• Search trademarks
http://tmsearch.uspto.gov
http://www.uspto.gov/trademarks/process/s
• Frequently asked questions
www.uspto.gov/faq/trademarks.jsp

12. TM: Protecting Your RightsTM: Protecting Your Rights
• You are responsible for enforcing your rights if
you receive a registration, because the USPTO
does not "police" the use of marks.
• While the USPTO attempts to ensure that no
other party receives a federal registration for an
identical or similar mark for or as applied to
related goods/services, the owner of a
registration is responsible for bringing any legal
action to stop a party from using an infringing
mark. (source: uspto.gov)

13. ““Top 10” Patent FAQsTop 10” Patent FAQs
 Can I patent this formulation?
 Do I have to perform a patent search?
 How long does patent protection last?
 What in the world is considered patentable?
 How much does is cost?
 How much is it worth?
 Can I sell my product (i.e. practice my invention)?
 Can I file a patent if I’ve been selling more than 1
year?
 Can I file a patent if I’ve been selling for less than 1
year?
 Which countries are available for patent protection?

14. A little about Patents…A little about Patents…
• Form of exclusivity
• Patent confers a right to exclude
• Only Govt-approved monopoly
• Worth the investment?

15. THE BASICSTHE BASICS
Patent RequirementsPatent Requirements
• New
• Useful
• Non-Obvious (not done w/ hindsight)

16. SUBJECT MATTERSUBJECT MATTER
What can be Patented?What can be Patented?
• Plant, never-before extracted/ extracted components
• Purified or enriched extracts
• Seeds, GMO’s
• New combinations of ingredients
• Therapeutic treatments
• Therapeutic method of using an old compound
• Indirect effect – synergy, potentiation
• Manufacturing method
• Improvement of existing product, apparatus, or
method
• Business methods (New standard per S.C. decision
In re Bilski – not merely Machine or Transformation
test)

17. For ExampleFor Example
 Many historical patents
directed to novel hard
candy shell (both product
and process)
 Patent protection dates
back to 1940
 Developed new product
categories
 No “candy shell”
Mars “vs.” Hershey’s

18. viavia candyblog.net (5/27/2010):candyblog.net (5/27/2010):
Some may wonder if the light coating is
like that on M&Ms Premiums. There is a
light waxy coating on there, but it’s
thinner than the latexy and colorful stuff
on the M&Ms Premiums. It’s more like
what you’d find on Junior Mints or
Whoppers. Just a simple glaze that melts
away quickly.

19. Visual comparison:Visual comparison:

20. Hershey develops pill-like filmHershey develops pill-like film
coating for confectionerycoating for confectionery
WO2012/146921WO2012/146921

21. BeveragesBeverages CategoryCategory
Now in marketNow in market
Sports & Energy Drinks
Liquid Water Enhancers (functional, “fun”
flavors)
Teas of all types
Coffees
Fruit/Vegetable blends

22. BeveragesBeverages CategoryCategory
Hybridization

23. SweetenersSweeteners CategoryCategory
Established ProductsEstablished Products
Saccharin
Sucralose
Ace K (Acesulfame)
Aspartame

24. SweetenersSweeteners CategoryCategory
Up & ComersUp & Comers
Xylitol
Maltitol
Stevia
Rebaudioside
Luo Han fruit (case study)
Mogroside V

25. SupplementsSupplements CategoryCategory
Sample patentSample patent

26. Case Study: Luo HanCase Study: Luo Han
IP rights in development – patenting
activity
Mogroside V, luo han fruit component, has
been granted GRAS (Generally Regarded
as Safe) notification status from the FDA

27. What is Luo Han?What is Luo Han?
monk fruit
produced by a plant (Siraitia grosvenorii),
which only grows in the northern parts of
Guangxi province, in southern China
Chemically: contains Mogrosides II-VI
(0.5-1% wt. in dried fruit)

28. What is Luo Han?What is Luo Han?
Mogroside V: 300X sucrose

29. Record of InventionRecord of Invention
• Details and describes your idea
• E-mail us at info@amintalati.com
• We’ll send you one

30. Record of InventionRecord of Invention
• Inventors need to keep
good records
and memorialize technical
content
• May be witnessed and/or
notarized

31. Patent StrategyPatent Strategy
What Issue Are You Addressing?What Issue Are You Addressing?
What Problem Are You Solving?What Problem Are You Solving?
Are You Doing it Better?Are You Doing it Better?
• Yes? Then explore your IP options
• Efficiency, Economy
• You can license technology
• Defensive strategy
• Blocking strategy

32. New LawNew Law
America Invents Act of 2011 (AIA)America Invents Act of 2011 (AIA)
• Signed into law by Pres. Obama on Sept. 16,
2011 (new provisions 9-16-12)
• 1st
Inventor to file (in effect 3-16-2013)
• Inventors no longer can antedate (“swear
behind”) a disclosure by another
• Blocking purpose: may want to prevent
someone else (publishing websites, ROI form)
• Prior trade secret users endangered, but retain
limited prior user/first user rights

33. New LawNew Law
America Invents Act of 2011 (AIA)America Invents Act of 2011 (AIA)
TIMELINESTIMELINES
• 1-Year Grace Period exists in U.S. (for
publication, sales, or other disclosures)
• “Absolute Novelty” applies in many countries
(so file first)
• 1st
Inventor-to-File Regime dawning in U.S. for
the first time (March 16, 2013)
• Can file a full application within 1 year of
“domestic” priority (U.S. Provisional) or foreign
priority filing
•‘Accelerated’ options carry over (guaranteed 1
year to “final disposition”

34. TT
II
MM
EE
LL
II
NN
EE
SS

35. Other Patent TypesOther Patent Types
Design PatentsDesign Patents
• Ornamental aspects only
• Can be valuable if not a driver of function
• Overlooked often, since not given much scope
• Damages can be forceful: go straight to profits
(contrast util.: reasonable royalty)
• Examples: packages/containers; shapes of food
• Shining example is iPhone:
Apple v. Samsung, (N.D.Cal 2012)

36. Other Patent TypesOther Patent Types
Plant PatentsPlant Patents
• Varietals
• Hybrids
• Asexually reproduced

37. Timing Considerations &Timing Considerations &
Patent Filing StrategiesPatent Filing Strategies
• Can prepare botanical extracts or isolate
bioactives
• Clinical trial (not necessary at outset)
• Correlation: in vitro to in vivo (animal or
human)
• Have window of time before publication

38. CostsCosts
• If have a great product or idea – can go all out with
patent investment - Int’l filings (PCT up to 146
countries)
• If on a budget – buy time:
• don’t need a prior art search (no obligation)
• file a quick Provisional application (fees lowered)
• don’t need clinical data right away (but put in as
much as possible)
• If don’t want patent investment – keep as a trade
secret (talk w/ an attorney)
• Need good employee agreements/ confidentiality
or NDAs
• Marking issues

39. You’ve Scoured Your Potential IPYou’ve Scoured Your Potential IP
Ideas, But You Don’t Have Anything?Ideas, But You Don’t Have Anything?
• License patents and published/pending apps
• Partner/JV with industry start-ups
• Patent auction sites
• Bankruptcy sales
• Solve a problem:
• Adverse effect resolution
• Bad taste/ Taste-masking
• Organoleptic properties
• Improved flavoring & sweetening
• Soluble protein
• Soluble fiber

40. Other Ways to Protect YourOther Ways to Protect Your
Product or BrandProduct or Brand
• Trademark/ Trade Dress
• ITC/ Customs enforcement
• Regulatory approvals/notifications - GRAS
notifications, New Dietary Ingredient (NDI)
notifications, New Drug Applications (NDA) etc.
• Clinical Studies
• Establish a strong and distinguishable branding
presence (i.e. – product/ingredient branding)

41. A Surprising DevelopmentA Surprising Development
• The USPTO’s backlog of
unexamined applications
dropped by over 100,000
cases in the past year from
a starting point of over
700,000 unexamined cases
• http://www.patentlyo.com
(Dennis Crouch, 9/5/12)
• 2012 grants: 253,000 (a
record)
• 2013 forecast: >290K

42. RECAPRECAP
• Patent confers a right to exclude (may license
some rights back to yourself)
• Patent is an asset on your balance sheet
• Real assets may be monetized
• Freedom-to-Operate/ Clearance ($10K-90K)
• Patent infringement litigation is very expensive
($1 MM for a small case, and up)
• Enforcement
• You don’t have to enforce (foreign
jurisdiction questions)
• Can obligate another party to enforce (if you
license)

43. Questions?Questions?
Feel Free to Contact Us:
info@amintalati.com
George@AminTalati.com
www.AminTalati.com