Legal Issues
INTELLECTUAL PROPERTY
Patents, Trademarks, & Copyrights
INTELLECTUAL PROPERTY
• PATENTS - relate to inventions
• TRADEMARKS - relate to product
names or symbols
• COPYRIGHT - relate to literary or
creative works
INTELLECTUAL PROPERTY
• Any Patents, trademarks,
copyrights, and trade secrets held
by the entrepreneur.
• Patents & Copyrights grant
exclusive rights for a limited time
after which the work or invention
enters the public domain
PATENTS
• Patent is a contract between government & an inventor.
• In exchange for the disclosure of invention , government grants the
inventor exclusivity regarding the invention for a specified amount of
time.
• At the end of this time, govt publishes invention & becomes part of
public domain.
• As part of public domain disclosure stimulates idea & better product
replace the original.
• Patent holders receive exclusive rights to hold, license make, use,
transfer the production or sell (product/process)an invention,
design, or plant.
• Objective is to provide the holder with temporary monopoly on his
innovation, thus encouraging creation & disclosure of ideas in
marketplace.
• Patent is result of unique discovery, & holder is provided protection
against infringement by others.
• Processes, machines, products, plants, chemical compounds,
improvement on existing items qualify for patent protection.
Rules for perusing Patents
1. Pursue patents that are broad(Covering a
large number and wide scope of subjects or
areas), Commercially significant & offer
strong position.
2. Prepare a patent plan in detail
3. Have your actions relate to your original
patent plan.
4. Establish infringement budget
5. Evaluate the plan Strategically
PATENT APPLICATION
Introduction: background, advantages of invention, nature of problems it
overcomes, how invention differs from existing offerings.
Specification :
• Detailed description of invention (engineering specifications, materials,
components that are vital for actual making of invention.)
• Description of drawings that accompany it.
Claims –
• Criteria by which infringement is determined.
• Specify what entrepreneur is trying to patent.
• series of short paragraphs , each describing feature protected by patent.
• Must not be general
• Entire length one page or less
• Claims Define & limit patented invention.
Declaration – signed by inventor.
• Complete application is ready to be sent to PTO, at which time status of application
becomes patent pending.
Fee: Fee for application vary depending on patent search & on claims
• Attorney fee
• Maintenance fee paid at intervals during life of patent.
TYPES OF PATENTS GRANTED TO
INVENTORS
Patent laws provide for granting of patents in three categories:
• Utility Patents – grants owner protection from anyone else making, using,
selling the invention.
• Reflects protection of new, useful, or improved processes(film developing),
machines(photocopier), apparatuses, articles of manufacture(toothpaste
pump), or compositions of matter(chemical compounds or mixture of
ingredients)
• Term of 20 yrs beginning with the date of filing with PTO.
• Filing Fee is 690$.
• Additional Fee Depending on Number of Claims made in application.
• Design Patents - new, original, and ornamental designs for an article of
manufacture, reflects appearance of an object.
• Granted for 14 yr term.
• Provide the inventor with negative right excluding others from making,
using, selling article having ornamental appearance given in design included
in patent.
TYPES OF PATENTS
• Design Patents
• Initial filing fee 310&.
• Examples: Shoe companies Nike.
• Plant Patents - inventions, discoveries, or asexually
reproduced distinct and new varieties of plants;
including cultivated sports, mutants, hybrids, newly
found seedlings, and living organisms
• Same provisions as utility patent.
• New varieties of plants.
• Patents Issued by PTO.
LENGTH OF PATENTS
PATENTS ARE GRANTED TO THE
TRUE INVENTOR FOR:
UTILITY & PLANT PATENTS
FOR 20 YEARS
DESIGN PATENTS FOR 14
YEARS
Minimizing Patent Risk
• Seek attorney with expertise in product line
• Consider Design patent to protect product design or
product look.
• Seek Legal Counsel Before making an external disclosure of
invention
• Evaluate Competitor patents to gain insight into what they
might be developing.
• Seek Legal Counsel if you think product infringes on patent
of another firm.
• Consider licensing patent to enhance revenue.
• Be sure to mark all products granted a patent. Not having
marked could result in loss in patent suit(Legal action taken
on the part of a patent owner against an alleged infringer
of the patent owner’s patent)
Patent Infringement
Assess if No
FILE For patent
patent now
exists
Yes
New Do expired patents
If Patent Recent or exist that accomplish
nearly Expired same purpose
OR Acceptable
Ready to expire Develop product
Begin Planning For using older design
Can product be
introduction when
changed slightly
Existing patent Expires
without
infringement
No Yes
Seek Develop Modified
License Version
Disclosure Document
• Statement to US PTO by inventor disclosing intent to patent idea.
• Filed to establish Date of conception of invention.
• Important when two entrepreneurs filing for patents on similar
invention.
• The first one to conceive invention will be given rights to patent.
• Clear & Concise description of invention.
• Photographs along with written description.
• A cover letter & duplicate .
• Upon receipt of information, duplicate copy of letter is stamped &
returned by PTO, establishing evidence of conception.
• Retained for two years and then destroyed until patent application is
filed within this time.
• Filing fee determined by PTO
• Not a patent application
• retain patent attorney to conduct patent search Before applying for
patent,
• Decision regarding patentability of invention upon completion of search.
