This document provides an overview and summary of an "Inventing 101" presentation about developing and protecting inventions. It discusses the different types of intellectual property including patents, copyrights, trademarks, and trade secrets. For patents, it covers the basic requirements, types of patentable subject matter, the examination process, and costs associated with obtaining a patent. It provides guidance on developing an invention through prototyping, testing, and market research. It also discusses the importance of properly disclosing an invention through an invention disclosure form.

1. Inventing 101: The Nuts
and Bolts of Developing
and Protecting an
InventionPresented by: Crissa Seymour Cook
Friday, March 6, 2015

2. Inventing 101: The Nuts & Bolts of Developing
and Protecting an Invention
Presented By
Crissa A. Seymour Cook
Hovey Williams LLP
Becky Hundley
Intellectual Property & Contracts Manager
WSU | Ventures
Friday, March 6, 2015
Business Booster Series
© Hovey Williams LLP 2015

3. Types of Intellectual Property
 Patents
- Inventions:
*Processes/Methods
*Machines/Devices
 Copyrights
- Expressions of Ideas:
*Writings
*Music
*Art Works

4. Types of Intellectual Property
 Trademarks
- Source indicators
 Trade Secrets
- Confidential information that has economic
value:
*Formulas
*Customer lists
*Manufacturing processes
®

5. Patents
.

6. Patents: Practical Inventions
Patentable Subject Matter Includes…
 “Anything under the sun that is made by man”
 Exclusions: laws of nature, physical phenomena,
abstract ideas
 Statutory classes: processes, machines, manufactures,
compositions of matter
 Compositions, devices, techniques, new
combinations, software, new uses of an old thing

7. Basic Requirements
 Novel: loosely means that the invention is
new and is non-identical to the previous
work of others. (35 USC § 102)
 Non-obvious: means that the invention
must not be an obvious extension of what
has gone before. (35 USC § 103)
- Obviousness is measured by what one
of ordinary skill in the subject area of the
patent would have known at the time of the
invention.

8. Technology Commercialization
Process
Enablement
Demonstration
Development
ProbabilityofSuccess
Effort/Time
Idea Prototype IP License
Invention Disclosure
Commercialization Stage
Commercialization Steps

9. Technology Rights
 Ownership
 By virtue of being the inventor or being the Assignee of the
technology
 Control of the IP, subject to any encumbrances
 Can be joint or sole ownership
 Joint inventors have an undivided interest in the “whole” invention.
 Don’t be shy about requiring a written agreement with your co-
inventors
 License
 The right to use the IP (typically granted by contract)
 Exclusive License
 Licensor agrees to not provide licenses to any third party.
 Non-Exclusive License
 Licensor reserves the right to provide licenses to third parties, or
reserves the right to practice the invention itself.

10. Technology Assessment
 “Maturity” of technology?
 What is the stage of the technology?
 What additional research or development is necessary to
refine technology?
 What needs to be done to reach market?
 Patentability?
 Can the technology be protected under IP?
 Cost/benefit analysis of pursuing IP protection.
 Market opportunities?
 Is there commercial merit to the technology?
 What is the cost/benefit of pursuing? (cost of goods vs.
return on investment)
 Is there a buyer for this technology?

11. Technology Development
 Document your idea
 Write down all of the details about your invention
 What is it?
 How does it work?
 What’s it used for?
 How will it be made?
 Have you run any experiments?
 Use a journal and have it signed by a confidential witness.
 Any bound notebook whose pages are numbered
consecutively and can't be removed or reinserted can be
used for this purpose.
 Date your records and keep them in a confidential place

12. Technology Development
 Research your idea
 Just because you have never seen your idea in a store
doesn’t mean someone else hasn’t already thought of it.
 Search for your idea
 You can perform a rudimentary patent search for free
at www.uspto.gov as well as at
www.google.com/patents
 Don’t forget about general internet searching
(“Google” it)
 Research your market: costs, logistics, licensees, or
potential commercial partners
 Consider to what extent you can push development on
your own, or if you need to “sell early” to have a larger
company further development.

13. Technology Development
 “Prototype” It/File for IP Protection
 Can work on these simultaneously.
 Balance IP filing strategy/timing with the “stage” of your
invention.
 Sketches, computer-generated models, 3-D mock-ups,
working examples/experiments help further your inventive
idea, but will also be used in the IP filing process.
 Note: You will almost always discover a flaw in your
original design or think of a new feature you would like to
add. Ideally, you want to work out these kinks before filing
the patent application – once the application is filed, it is
generally too late to include them.

14. Technology Development
 Market It
 How will you sell it?
 To whom will you sell it?
 End user/customer
 Intermediate party
 Can you market it on your own?
 Do you need a larger industry partner?
 Do you already have contacts in that industry?

15. Getting Started:
The Invention Disclosure
 The Invention Disclosure Form
 Naming Inventors:
 Inventors – who else helped you develop the
invention?
 Inventors must play a role in conception of invention
 Brief description of invention
 Prior public disclosures?
 Known “prior art”?
 Dates of conception/reduction to practice
(inventor’s journal)
 Supplemental Materials

16. The Invention Disclosure
 What to disclose?
 Your disclosure needs to enable and describe the
invention.
 Identification of full scope of invention
 Explore metes & bounds; alternative or non-
optimized versions
 Any proposed presentations should be included
with disclosure form
 Materials and methods for any working examples
– very important
 Drawings, flow diagrams, etc.

17. How much disclosure?

18. The Invention Disclosure
 Major requirements:
 Written Description
 Enablement
 Best Mode
 Definiteness
Inverse relationship to the level of
“predictability” of the field of the invention
and amount of information necessary for full
disclosure

19. The Invention Disclosure
 Written Description
 Description of invention that demonstrates possession
of invention as of filing date
 Enablement
 Describe how to make and use invention
 Working examples, Prophetic examples
 Figures
 Some experimentation permitted…must not be undue
 Best mode of carrying out the invention
 Definiteness: clarity and precision in terminology

20. Disclosure considerations
 Patent application disclosure must enable one skilled in
the art to practice the invention without undue additional
experimentation
 “show your work”
 Use drawings where helpful or essential (picture worth a
thousand words)
 Best mode must be disclosed
 Patent application must adequately describe the invention
(sufficient species to claim a genus)
 Important that disclosure/application is as comprehensive
as possible.

21. Disclosure considerations
 Once the application is filed there is virtually no
possibility to add to it or update it*
* Added material is considered “new matter” and gets
a new filing date.
 Patent application will and should be more
comprehensive than a manuscript (the patent attorney will
help with this)
 Patent application should be submitted BEFORE public
presentations, disclosures, meetings, etc.

22. The Drawings
 Drawings helpful to understanding the
invention
 Process flows, machinery schematics,
blue prints, etc.

23. How/when to disclose?
 Begin process somewhere between idea
stage and “prototype” stage.
 Consider any impending public disclosures
you plan to make.
 WSU has specific protocols and an invention
disclosure form that can be used.

24. Process Overview
Consider this timeline in planning when to file a
provisional, when to submit a manuscript, etc.
Estimated time when
proof of concept may be
close to finished (major
questions answered)
Work backwards
so that provisional
filing isn’t
premature

25. Patent Acquisition
Prepare and File
Post-issuance
Challenges Examination
Issuance

26. Examination process
 Patent examiner will do a search based upon the application
claims to see if there is any “prior art” related to the invention
 Claims describe the metes and bounds of protection
 “A method of…” “A composition comprising…”
 Claimed invention must be: new, non-obvious as compared to
one or more prior art references located by Examiner.
 Examiner issues an “Office Action” – patent attorney will have
a back and forth exchange with the Examiner regarding the
prior art and the claims.
 Inventor input can be helpful – “person skilled in the art”
 Often Examiner is misinterpreting the claims, the prior art, or both

27. America Invents Act
 Went into effect March 16, 2013
 The AIA significantly encourages early
(and often) filing of patent applications
 U.S. patent laws are now based on “first-
inventor-to-file” rather than “first-to-invent”

28. America Invents Act
 File patent applications before any public
disclosure, use, presentation, commercial
activity, sale, etc. involving the invention
 Limited “grace period” still available
 Balance of filing too early vs. waiting too long to
file on invention.
 Use Non-Disclosure Agreements
consistently, but do not rely on NDAs to fully
protect invention

29. America Invents Act
 Invention Disclosure forms and
streamlined protocol for submitting and
evaluating inventions becomes even more
important under the AIA

30. How long does it take to get a patent?
 Technology Dependent
 Computer/Software/Electronic Business Method
 3 - 5 years (typical)
 Electrical
 2 - 4 years (typical)
 Chemical
 1.5 - 3 years (typical)
 Mechanical
 1.5 - 3 years (typical)

31. What does it cost?
 Provisional application ~$1,000-$4,000
 Preparation and filing of a non-provisional
application ~ $8,000-$10,000
 Examination ~ $5,000-?? – depends on your
examiner!
 Issuance ~ $1,000-$2,000 fees
 Maintenance fees are due periodically during
life of patent or it will expire.

32. What does it cost?
 International protection?
 Depends on the country
 $2,500-$10,000 just for filing in certain countries
(including translation costs)
 Prosecution adds another $5,000-??? per country
 International portfolios cost tens of thousands of
dollars to pursue.

33. Is getting a patent worth it?
 Some Factors to Consider
1. Commercial Value
 Market size and acceptance
 Profit margin attributable to exclusivity
 Likelihood of copying (Barriers to entry: capital,
physical, legal, technical)
1. Patentability
 Novelty and nonobviousness
 Breadth of protection available
1. Licensing Possibilities
2. Defensive Use in Litigation and Cross-licensing

34. Protecting an Invention
 Consult with a patent attorney
 Beware - Invention Promotion Firms:
 http://www.uspto.gov/inventors/scam_prevention/index
 www.ftc.gov
 www.bbb.org

35. Common Patent Misconceptions
 A patent gives you the right to use or make the
invention.
 Patented products are better than unpatented
products.
 If I find a new use for an old product, I can get
a patent on the product.

36. Resources:
 USPTO website (free)
 www.uspto.gov
 Free searching -
http://www.uspto.gov/patents/process/search/
 Patent Agent/Attorney search –
https://oedci.uspto.gov/OEDCI/
 Google patents (free)
 www.google.com/patents
 “Free Patents Online” website – “pdf” images
 http://www.freepatentsonline.com/search.html

37. Other types of IP

38. Trademarks
 Trademarks
- Assets of a Business – Both as property
and as goodwill
- family of marks
- slogans
- designs/icons
- product configuration
 Marked item must be used in commerce

39. Examples
 Word: WALL STREET JOURNAL, PEPSI
 Logo:
 Letters: WSJ
 Symbols:
 Sounds: MGM’s Lion Roar, NBC’s chimes
®

40. Examples
 Slogans/Taglines:
 McDonald’s: I’M LOVIN’ IT!

41. Trademarks
 You should always use a TM symbol with all
trademarks whenever possible. TM may be
used for any mark used in commerce.
 You should always use the registration
symbol (®) for registered trademarks.
 Removes defense of innocent infringement

42.  Trademarks Must be Distinctive
 Inherently Distinctive Marks
 Fanciful: no other meaning than its meaning as a
trademark [STARBUCKS, LEGO, VERIZON]
 Arbitrary: words with separate meaning, but nothing
to do with the associated product/service [CAMEL for
cigarettes, APPLE for computers]
 Suggestive: suggest a characteristic of a good or
service without actually describing that characteristic.
[COPPERTONE for sunblock, EARTHLINK for
internet service, JETBLUE for airline service]
Picking a “good” trademark

43.  Cannot be merely Descriptive:
 Merely identifies a characteristic of the article or service
it marks [WORLD WATERPARK ASSOCIATION]
 A descriptive mark entitled to federal protection only
if it acquires distinctiveness (aka secondary
meaning)
 Shown through long-term use, advertising
expenditures, sales revenue, testimonials, etc.
 Cannot be Generic:
 Never entitled to trademark protection, i.e. “laptop
computer” [ASPIRIN, ELEVATOR, CELLOPHANE, YO-
YO, GOOGLE?]
 Famous marks must ward against genericide
Picking a “good” trademark

44.  Must Not be Confusingly Similar to Other Marks
 Factors to consider:
 Visually, audibly, or phonetically similar?
 Starbucks Frappuccino coffee
 Bar in Missouri received letter for selling a stout
beer dubbed a "Frappicino."
 Are the goods/services related or competing?
 Trade channels overlap?
 Sophistication of consumers
Picking a “good” trademark

45. Trademark not yet used?
 What if you’ve picked out a great trademark,
but aren’t yet actually using it?
 An intent-to-use application may be filed with
the USPTO to “reserve” the mark without first
making use of the mark
 Proof of actual use is required before the
registration will be issued

46. Federal Trademark Protection
Duration – How long does a federally registered TM last?
Potentially forever if:
(a)continuous use exists;
(b)mark does not become a generic description of the
product;
(c) maintenance between 5th
& 6th
year of registration;
(d)renewals are filed every 10 years;
(e)all licensing of the mark is done with quality control;
and
(f) there is no acquiescence to infringement.

47. Copyrights
Copyrights exist upon creation; benefits of federal
registration
Anything that contains creative expression, i.e.
advertisement, software, website, movies, songs
May immediately use the copyright notice, i.e. ©
2015 HOVEY WILLIAMS LLP

48. REQUIREMENTS FOR COPYRIGHT
PROTECTION
 Work of original creative authorship
 Fixed in a tangible form of expression from
which it can be perceived, reproduced, or
otherwise communicated, directly or with aid
of a device

49. Copyrights
1. literary works - fiction and nonfiction books, manuscripts,
computer programs, manuals
2. musical works (and accompanying words) -- songs, operas,
and musical plays
3. dramatic works -- including music - plays and dramatic
readings
4. pantomimed and choreographed works
5. pictorial, graphics, and sculptural works – photos, maps,
globes, charts, technical drawings, diagrams, and models
6. motion pictures and audiovisual works
7. sound recordings and records – digital recordings, CDs,
MP3s, and tapes

50. EXCLUSIVE RIGHTS IN COPYRIGHTED
WORKS
 Right to Reproduce or copy
 Right to Distribute
 Right to Display
 Right to Perform
 Right to Make Derivative Works

51. Copyright Protection
 Unregistered Copyright
 Author owns immediately upon creation
 Registered Copyright
Author or owner may register copyright to avail itself
of statutory rights
- Ability to sue for infringement
- Statutory Damages (Requires Timely Registration)
 Up to $30,000/infringing work
 Up to $150,000 for willful infringement of work
 Attorneys’ fees/legal expenses

52. Why Register?
 Proof of ownership
 If you don’t register within five years of creating
the work, the court doesn’t have to recognize the
registration you do file as self evident proof.
 Access to courts
 Statutory damages
 Must register within 3 months of publication or before
infringement
 Otherwise, only an award of actual damages and
profits is available to the copyright owner.

53. WORKS MADE FOR HIRE
 Applies only to specific items – not just any
creation made by someone you hired!
 Works made by an employee within the
course of employment; OR
 Works specially ordered pursuant to a signed
written work for hire agreement AND if the
works are in eligible categories

54. WORKS FOR HIRE CATEGORIES
 contribution to a collective work
 part of a motion picture or other
 audiovisual work
 a translation
 a supplementary work
 a compilation
 an instructional text
 a test or answer material for a test
 an atlas

55. WORK FOR HIRE
 Does NOT apply to someone you hired to create a
website for your business or product.
 Web developer needs to have a contract that
assigns the rights to your website and domain name
to you.

56. Any Questions?

57. 57
THANK YOU!
CONTACT INFORMATION:
Crissa Seymour Cook
Hovey Williams LLP
ccook@hoveywilliams.com