On October 3, 2018, John Cabeca, West Coast Director of the Silicon Valley USPTO presented at CRASHSpace on Intellectual Property topics in relation to business strategy.

1. IP Strategy IS a Business Strategy
John Cabeca
Director, West Coast Region
United States Patent and Trademark Office
CrashSpace
October 3, 2018

2. What is the USPTO?
The USPTO is the Federal agency that grants U.S. patents and
registers trademarks. The Agency also advises the President
and Federal agencies on intellectual property (IP) policy,
protection, and enforcement, and promotes stronger and more
effective IP protection around the world.
Mission:
Fostering innovation, competitiveness and economic growth,
domestically and abroad to deliver high quality and timely
examination of patent and trademark applications, guiding
domestic and international intellectual property policy, and
delivering intellectual property information and education
worldwide, with a highly skilled, diverse workforce.
IP and the Economy
27.9M
IP Intensive Jobs (2014)
38.2%
IP Intensive Industries share
of Total US GDP (2014)
$6.6 trillion
Value Add of IP-intensive
Industries (2014)
$1,312/week
(46% higher)
Avg. weekly wages for
workers in IP-intensive
industries
$115.2 billion
Revenue specific to the
licensing of IP rights totaled
(2012)
28 Industries
Deriving revenues from
licensing

3. 0
2000000
4000000
6000000
8000000
10000000
12000000
1800 1850 1900 1950 2000 2050
GrantedPatents
Years
Patent Growth Over Time

4. The Role of the Patent System
Encourage Inventions
Protect Inventions
Promote commercialization and application
of invention
Accelerate the commercialization of invention to
the whole society
IP Strategy IS a Business Strategy
IP:
• Is attractive to investors and buyers
• Deters infringement lawsuits
• Can increase leveraging power
– Mergers and acquisitions
• Is a property right than can add value to a
company’s assets
• Is Global

5. Anecdotes for Developing an IP Strategy
• Assess your company’s IP assets and prioritize
• Know your competition
• What’s the pace of innovation and
opportunities for growth?
• Determine the best way to protect your IP
• Develop a plan, set goals and implement
• Get help!
What type of IP protection do
you need?
• Patents
• Trademarks and servicemarks
• Copyrights
• Trade secrets

6. Types of Intellectual Property
Overview of Intellectual Property
What’s Protected? Examples Protection Lasts for:
Utility
Patent
Inventions iPod, chemical fertilizer, process
of manipulating genetic traits
in mice
20 years from the date of filing
regular patent application
Design
Patent
Ornamental (non functional) designs Unique shape of electric guitar,
design for a lamp
15 years
Copyright
Books, photos, music, fine art, graphic
images, videos, films, architecture,
computer programs
Michael Jackson’s Thriller
(music, artwork and video),
Windows operating system
The life of the author plus 70
years (or some works, 95 years
from pub., and others 120 years
from creation)
Trade
Secret
Formulas, methods, devices or
compilations of information which is
confidential and gives a business an
advantage
Coca-Cola formula, survey
methods used by a pollster,
new invention for which patent
application has not been filed
As long as information remains
confidential and functions as a
trade secret
Trademark
Words, symbols, logos, designs, or
slogans that identify and distinguish
products or services
Coca-Cola name and distinctive
logo, Pillsbury doughboy
character
As long as mark is in continuous
use in connection with goods or
services – renew by year 6, then
at year 10, then every 10 years

7. Can you find the IP in a mobile phone?
Trademarks:
• Made by "Nokia"
• Product "N8"
• Software by Microsoft “Windows“
Patents:
• Data-processing methods
• Semiconductor circuits
• Chemical compounds
• Battery/Power Control
• Antenna
• Optics
Copyrights:
• Software code
• Instruction manual
• Ringtone
• …
Trade secrets:
• ???
Designs (some of them registered):
• Form of overall phone
• Arrangement of buttons in oval shape
• Three-dimensional wave form of buttons
• Sliding screen
© Nokia
Trademark Definition
Any word, slogan, symbol, design, or
combination of these that:
1. Identifies the source of your goods and
services
and
2. Distinguishes them from the goods and
services of another party

8. Trademark Definition
Any word, slogan, symbol, design, or
combination of these
Can also be a sound,
color, or
smell
Types of Trademarks
Word Mark
COCA-COLA
Special Form Mark
Composite Mark Design Mark

9. What do Trademarks offer?
• Brand recognition – distinguishing goods or services
from competitors in the marketplace
• Public notice of ownership - exclusive right to use
• Right to enforce nationally and bring legal action in
federal courts
• Use of federal Trademark registration symbol ®
• Right to record mark with Customs
• Serve as basis for foreign filing
• Publication in U.S. Trademark database
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Strength of Mark
- Determining Registrability and Protectability

10. What is a Patent?
• A Property Right
– Right to exclude others from making,
using, selling, offering for sale or
importing the claimed invention
– Limited term
– Territorial: protection only in territory that
granted patent;
NO world-wide patent

11. The Peoples’ Benefit
To ensure that investment of time and money is
rewarded to continue future inventive stimulation
– Patent gives inventor limited rights
– 20 Year Term
Public is provided disclosure of how to use and make
invention
– Patenting requires publication
– Accelerates development
– Strengthens national economy
United States is a First Inventor to File System!
• Looking for international protection?
– You’ll want to file before public disclosure
• Only want US protection?
– You can file within one year after public disclosure
When should you file a patent
application?

12. What are the risks of disclosure?
• What can I say before
filing?
• When do I know I’ve said
too much?
• Disclosure vs. Sale
– Crowdfunding Campaigns
• Can’t I just keep it
secret?
Examples of Public Disclosure:
• displaying your invention at a
trade show,
• posting your invention on the
Internet
• offering to sell your invention
• a description of your invention in
a newspaper or journal article, or
• publicly demonstrating your
invention.
The Path to a Patent
NEW
IDEA?
PROVISIONAL
APPLICATION
(OPTIONAL)
NON-
PROVISIONAL
APPLICATION
(UTILITY)
PATENT!
ONE YEAR!
TWENTY YEARS

13. Provisional Utility Applications
• Simplified filing requirements
• Items required:
1. Specification - CLEARLY DESCRIBED - in compliance
with 35 USC 112, Paragraph (a)
• Same disclosure requirement as non-provisional
• Enabled, Written Description
2. Drawings (needed in almost all cases)
3. Filing fee
4. Cover Sheet identifying Provisional Application
26
What is Patentable?
NEW,
NONOBVIOUS,
USEFUL, &
CLEARLY
DESCRIBED
Method
of using
Chemical
Compos-
ition
Method
of
making
Product
Improve-
ments
thereof

14. Patent “Claims”
The “heart” of the patent grant
Specific definition of the invention
Metes and bounds of the patent
coverage
Patent Claim Scope
Invention
Too
Broad/General
Not valuable
Not patentable
Too
Specific

15. Patent Claim Example
Phone
Laptop
Battery
Suitcase
Phone
Laptop
Suitcase
Phone
Laptop
Suitcase
Laptop
Suitcase?
Guide to Resources
Helping Applicants

16. www.uspto.gov/inventors/assessment
USPTO Offices
Midwest – Detroit, MI
– Elijah J. McCoy
– Opened July 2012
Rocky Mountain – Denver, CO
– Byron G. Rogers
Federal Building
– Opened July 2014
West Coast – Silicon Valley
– San Jose City Hall
– Opened October 2015
Texas – Dallas, TX
– Terminal Annex
Federal Building
– Opened Nov. 2015

17. Silicon Valley has long acted as the world’s innovation
incubator, with 1 in 8 patents issued to U.S. applicants
from the region. Fueling dreams, California also leads the
country as the state with the most issued patents in the
high tech and biotechnology industries.
Outreach Services:
• Walk-in services to obtain information and assistance on IP
• Workstations for searching patents and trademarks
• Interview rooms to connect applicants to examiners working in
the region, at HQ or across the country
• Office hours with USPTO experts and strategic partners like
Small Business Administration and the Export Assistance Center
• Educational Programs for the innovation ecosystem

18. Patent Specialist 1-on-1 Meetings
Reserve a meeting with a patent specialist!
• In-person assistance intended for
pro se applicants
• Discuss different forms of IP,
patent application process, prior art
searches, and available resources
• No legal or business advice can
be provided
Public Interview Rooms
Connect and collaborate with patent examiners.
• Rooms are equipped with multiple
videoconferencing systems and
HD document camera
• Replicates in-person experience
between applicant and patent examiner
• On-site Interview Specialists available
to assist with IT equipment and
to help ensure interview goes smoothly

19. Universal Public Work Stations (UPWS)
Public access to patent and trademark databases, including search tools
only available at USPTO headquarters, regional offices, and Patent and
Trademark Resource Centers (PTRCs).
PubWEST & PubEAST:
• Public versions of the Web-based
Examiner Search Tool and Examiner
Assisted Search Tool
• Developed for USPTO patent examiners
• Public access to many search features patent
examiners use
Patent Pro Bono Program
In California:
California Lawyers for
the Arts
www.calawyersforthearts
.org/CIAP
File and Prosecute Patent Applications: The Program matches financially under-
resourced inventors and small businesses with registered patent attorneys.
- 22 regional programs across the country provide matching services.

20. Allows students in a participating law school’s clinic program to practice before
the USPTO under the strict guidance of a Law School Faculty Clinic Supervisor.
Law School Clinic Certification Program
In California
• University of San
Francisco School of Law
• Lincoln Law School of
San Jose
• University of California,
Los Angeles School of
Law
• Thomas Jefferson
School of Law
• California Western
School of Law
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7
16
49
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Nationwide network of public, state and academic libraries designated by the
USPTO to support intellectual property needs of the public.
Patent and Trademark Resource Centers (PTRC)
http://www.uspto.gov/ptrc

21. Micro Entity Status
• 75% off most patent fees
• Low cost submission to establish filing date
– Provisional Application Filing Fees
• $140 small entity
• $70 micro entity
• Micro entity certifies that he/she:
– Qualifies as a small entity (less than 500 employees);
– Has not been named as an inventor on more than 4 previously filed patent
applications;
– Did not, in calendar year preceding the calendar year in which the applicable
fee is paid, have a gross income exceeding 3 times median household income;
and
– Has not assigned, granted, or conveyed (and is not under obligation to do so)
a license or other ownership interest in the application concerned to an entity
that, in calendar year preceding the calendar year in which applicable fee is
paid, had a gross income exceeding 3 times the median household income.
Need Patent Protection Fast?
Need to FAST track your patent? Use Track One!
Move your ideas quickly with USPTO's Track One
www.uspto.gov/patent/initiatives/usptos-prioritized-patent-examination-program

22. Resources
Helpline: 1-800-PTO-9199
- Utility Patent Application Guide: www.uspto.gov/patents/resources/types/utility.jsp
- Patent Process: www.uspto.gov/patents/process
- Patent Search Guide: www.uspto.gov/patents/process/search
- Trademark Assistance Center & Help Videos: www.uspto.gov/trademarks
- IP Awareness Assessment Tool: www.uspto.gov/inventors/assessment
- Inventor and Entrepreneur Resources: www.uspto.gov/inventors
- Pro Se Assistance: www.uspto.gov/patents-getting-started/using-legal-services/pro-se-assistance-program
- Micro Entity Limit: www.uspto.gov/patents/law/micro_entity.jsp
- Patent Pro Bono help and video: www.uspto.gov/inventors/proseprobono
- First Inventor to File: www.uspto.gov/aia_implementation/patents.jsp#heading-10
- Law School Clinic Program: www.uspto.gov/learning-and-resources/ip-policy/public-information-about-practitioners/law-school-clinic-1
Thank You
www.uspto.gov/SiliconValley
https://www.facebook.com/uspto.gov
http://www.youtube.com/user/USPTOvideo/