presentation for ece508. home page at www.docjava.com Engineering entrepreneurship

1. Introduction to Intellectual Property.
Where does a startup begin?
Presented at: Fairfield University
Date: October 6, 2015
Presented by: Jonathan A. Winter
Associate
St. Onge Steward Johnston & Reens LLC
Stamford, Connecticut, U.S.
jwinter@ssjr.com
203-324-6155

2. What is Intellectual Property
• Patents
• Trademarks
• Designs
• Copyrights
• Trade Secrets

3. • Copyright protects “original works of authorship”
that are fixed in a tangible form of expression.
• Copyright does not protect ideas.
• Does not protect function
Copyright

4. •Copyright is secured automatically when the work is
created, and a work is “created” when it is fixed in a
tangible medium of expression.
•© 2011 Jonathan Winter
•“no person is entitled to any such right . . . under the
common law or statutes of any State” Sec. 301
•Why Register?
• Public Record.
• Necessary to file infringement suit.
• Prima facie evidence of validity.
• Statutory Damages / Attorney’s Fees.
• Record with U.S. Customs Service
Copyright

5. • The right to reproduce the copyrighted work in
copies or recordings.
• The right to prepare derivative works based upon
the copyrighted work.
• The right to distribute copies or recordings of the
copyrighted work to the public by sale or other
transfer of ownership, or by rental, lease, or
lending.
• Work for hire.
Copyright

6. Ownership of a valid copyright must be shown.
Copying of elements of the work that are original must
also be shown.
The allegedly infringing work must be substantially
similar to the registered work.
Independent creation is a valid defense to a charge of
copyright infringement.
Copyright Infringement

7. Copyright – The Obama Photo

8. Trademarks

9. Trademarks
• What is a trademark?
• A word, name, symbol, or device that identifies and distinguishes
goods of one party from those of others.

10. Trademarks
• Why do we have Trademark Protection?
• Identify the source, quality, origin of goods and services.
• We focus on the consumer.
• What Can I Trademark?
• Brand Name
• Product Name
• Slogan
• Logo
• Sound
• Color
• Trade Dress.

11. Trademarks
• Types of Trademark Protection
• Common Law Protection
• State Registration
• Federal Registration

12. Trademarks
• Benefits of Federal Registration
• Presumption of ownership and validity.
• Attorney’s fees and enhanced damages.
• Nationwide notice to all later users of a mark.
• Eliminates defense of innocent adoption – common law
• “Incontestable” status - 5 Years.
• U.S. Customs service.
• International Registrations.

15. Trademarks
• What should I protect?
• Generally a Block Letter registration is best.
• BILLBOARD, CLARKS, WIFFLE, etc.
• Protect your company name.
• Consider protecting primary product or slogan.
• Word + Design (Logo).
• Make sure you are happy with the logo.
• Changes to the logo will require new registrations.
• What does a Trademark protect?
• It protects the brand name associated with a description of goods
in a particular classification.
• http://www.uspto.gov/trademarks/notices/international.jsp

16. Trademarks
• What if I don’t use it yet?
• Search Trademark Records (TESS)
• Get an opinion from an Attorney!
• Make sure you will be able to get the brand before you start
branding.
• It is cheaper to get the brand right in the beginning.
• Intent to Use Application.
• When do I first accumulate Trademark rights?
• Use in commerce.
• Senior user (first to use) is typically in a better position.

17. Trademarks
• How Strong is my Mark?
• Coined/Fanciful. (make up a word)
• XEROX®
• GOOGLE®
• Arbitrary (no connection between word and product)
• APPLE® for computers
• Suggestive.
• GREYHOUND® for bus transportation
• Descriptive. (Show secondary meaning)
• US NEWS AND WORLD REPORT®
• Generocide.
• Common words (PIZZA was refused as generic)

18. Trademarks
• How Long Does My Trademark Last?
• Strength v. Promotion
• Public Perception (remember, we are protecting consumers)
• XEROX®
• “You can’t Xerox a Xerox on a Xerox”
• GOOGLE®
• “Google it” – Search it, or Search it on Google?
• JELL-O

19. Trademarks
• What do I need to file?
• We recommend a search and opinion.
• Goal is to have a solution for issues before they happen
• What are you going to use the mark for?
• Which Classes?
• How Many Classes?
• Description of the goods/services (Stay within the class).
• Specimen of use/Statement of use or file ITU (Intent to Use).

20. Trademarks
• Using a trademark
• TM and ® Symbols.
• No use as noun/verb
• Make copies on a XEROX® Copier - YES
• Xerox that report - NO
• Use as adjective
• BAND AID® - brand Bandages
• KLEENEX ® Tissues
• Don’t make plural
• Don’t alter mark (don’t alter logo).

21. Trademarks
• Approximately How Much Does It Cost to File?
• Searching and opinion $600.
• Preparing and filing application $1200 (One Class)
• ~$500 for additional classes.
• Later prosecution fees – Office action response $500 for simple
responses.
• Statement to allege use (ITU Applications) ~$500.

22. Patents

23. Patents
• Why do we have patents?
• “To promote the Progress of Science and useful Arts, by securing
for limited Times to Authors and Inventors the exclusive Right to
their respective Writings and Discoveries.” Article I, Section 8,
Clause 8, U.S. Constitution.
• What can I patent?
• Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title. 35 U.S.C.
§101
• What does this include?
• “Anything under the sun made by man is patentable“ Diamond v.
Chakrabarty, 447 U.S. 303 (US Supreme Court 1980)

24. Patents
What is a patent?
• Right to Exclude v. Right to practice
• Exclude another from Making, Using, Selling, Import, Export
• Limited in time ~20 years from filing date.
• Right to practice – Do you infringe another’s patent?
• Patent exhaustion
• Indemnification UCC 2-312 (unless disclaimed)

25. Patents
Who owns it?
• Inventors own the patent unless it is assigned.
• Have appropriate agreements in place.
• Employment agreement
• Shop right?
• Assignment documents.
• Make sure the company is legally formed before you assign a
patent to it

26. Patents
Why should I file?
• AIA First to file
• First INVENTOR to file.
• 1 year grace period (Trade Secret/Pre-patent).
• Novelty drives revenue
• Leverage in negotiations
• Licensing
• Defensive
• Marketing (“Patent Pending”)
• Enforcement v. Acquisition
• You may not want to enforce it, but someone else may wish to
acquire the technology to enforce against another.

27. Patents
Contents
• What is in a patent
• Specification – Description
• Drawings
• Claims – This is what you assert in court.

28. Patents
Why should I file? – Novelty = Loyalty
• U.S. Patent 7,657,849
• User features.
• Interaction with product.

29. Patents
Why should I file? – Novelty = Loyalty

30. Patents
Why should I file? – Novelty = Revenue
• Novelty Drives Revenue
• U.S. Patent 6,176,154.
• What is new?

31. Patents
What is the product

32. Patents
Novelty = Revenue

33. Patents
At what stage should I file?
• Identify Market Need - ROI
• Patents: Market weapons or Technology Weapons
• What features are important?
• What features are new?
• Search: USPTO, Google Patents, Formal Search
• Be careful of market testing.
• Be careful of public disclosure.
• NDA.

34. Patents
At what stage should I file?

35. Patents
What Can I Patent?
• Examples?
• Process - Method of making something.
• Machine/Manufacture
• Electrical/Mechanical Device
• Consumer Products
• Computer systems/software
• Compositions of Matter
• Plant Patents - Monsanto.

36. Patents
What Can I Patent?
• What is excluded?
• Laws of Nature
• Mathematical Principles
• E = mc2
• Mental Process/Abstract Ideas

37. Patents
How long do they last?
• What am I protecting?
• Ornamental Features
• Design Patent – Term is 14 years from issue date.
• Useful when you are making a large quantity of a product.
• A Device/Computer System/Machine etc.
• Provisional Patent – Saves your place in line, lasts 1 year.
• Can’t assert it, but you can license/assign it.
• Must follow up with Utility Patent within 1 year.
• Utility Patent – 20 Years Filing Date of Earliest U.S. Application.
• Right to exclude.
• Can be bought/sold/licensed.

38. Patents
Where do I start?
• The Provisional Application
• What is in a provisional application?
• Drawing(s)
• Description
• Formalities
• Cover sheet
• Filing Fee
• Assignment? Founders assign to their company

39. Patents
Contents of a Provisional Patent
• Drawings
• You can take pictures.
• Sketches.
• Needs to show the features.
• Use reference numbers to refer to description
• Show how moving parts interact (dashed lines).

40. Patents
Contents of a Provisional Patent
• Drawings

41. Patents
Contents of a Provisional Patent
• Description
• How does it work?
• What does it do/what does it accomplish?
• What features does it have?
• Focus on the features or combination of features that are new.
• Describe the drawings.
• The description should enable one of skill in the art to make the
device or understand how it works.
• “Shot gun approach” v. “Targeted” (public disclosure?)
• Continuations

42. Patents
Contents of a Provisional Application
The rigging system includes a pin 50 that is secured to
the rigid support members 42/46 by one or more bolts
52. As one of ordinary skill in the art will understand, the
pin 50 provides for the connection of an oarlock (not
shown). Each of the 65 support members 42/46 include
a hole 44/48 (e.g., support hole), at least one of which is
designed to accommodate a pitch adjustment
mechanism or pitch adjuster 60.
• Description:

43. Patents
How much is a Provisional Patent?
• Cost.
• Filing Fee: $130 (small entity)
• Attorney Services: Typically around $1500.
• Assuming inventors provide a good description.
• Inventors provide drawings/photos.
• Benefits.
• Allows you to focus on marketing and selling your product
• Gives you a year to:
• Decide if your product is worth investing in a utility patent.
• Get investors.
• Start selling a “Patent Pending” product.

44. Patents
What Happens After A Provisional?
• Provisional = No Examination, No Publication
• File a Utility Patent Application within a year.
• What is the difference?
• Utility Publishes
• Has Claims
• Meets more stringent formal requirements
• Will be examined to determine if it is Novel, and Non-Obvious.
• If it issues, you have the right to exclude

45. Questions?
Jonathan A. Winter
Associate
St. Onge Steward Johnston & Reens LLC
Stamford, Connecticut, U.S.
jwinter@ssjr.com
203-324-6155