INTELLECTUAL PROPERTY Overview by Tom Ferrill, Esq. Rutan & Tucker, LLP Five Palo Alto Square 3000...

INTELLECTUAL PROPERTY Overview

byTom Ferrill, Esq.

Rutan & Tucker, LLPFive Palo Alto Square

3000 El Camino Real, Ste. 200Palo Alto, CA 94306(650) 320-1508 direct

650-320-9905 [email protected]

TABLE OF CONTENTS

Types of Protection Available for Intellectual Property RightsThe Legal Standard For Patentability and what subject matter is patentableWhen To File A PatentPreparation Of A Patent ApplicationThe Patent Application ProcessPatent Application Format and Legal RequirementsProcedure At The U.S. Patent OfficeOther Intellectual Property

PROTECTION AVAILABLE FOR INTELLECTUAL PROPERTY RIGHTS

PATENT COPYRIGHT

TRADESECRET

TRADEMARK MASKWORK

3

Most US Companies are not manufacturing based anymore. The designs and headquarters are here in the US. IP and real property are the main assets companies have.

Questions as we go along

PATENTS• A patent is a written document with drawings describing a

concept and one or more useful implementations of that concept. The claim section of the patent grants to an inventor of the right to exclude others from making, using, selling, offering for sale, or importing the claimed invention for 20 years from the date of filing a patent application.

• A patent does not necessarily grant the owner the right to practice the invention, since this might require the use of technology patented by someone else.

• Patents are considered the strongest form of intellectual property since, unlike copyrights and trade secrets, independent creation is NOT a defense to a claim of infringement. Further, the scope of protection covers infringement of products and processes within the literal scope of the claims as well as any equivalent structures and processes with the scope of the claims.

PROTECTION AVAILABLE FORINTELLECTUAL PROPERTY RIGHTS

•

000100S0 S0 S1 S1 S1 S1

FIGURE 1

IO[0] IO[1] IO[2] IO[3] IO[4] IO[5]

IO[5]

0

Non-redundant Memory Columns Redundant memory columns

Redundant IO

1. An apparatus, comprising:

a memory array having a memory column redundancy structure;

a plurality of input-output circuits; and

a column shift circuitry to shift two or more of the input-output circuits away from a primary memory column to a substitute memory column upon assertion of a signal from a single fuse, the single fuse coupled to the column shift circuitry.

5

PATENT PROGRAM OBJECTIVESWhat Patents should be pursued? (Cont.)

That’s Patentable?!• Most apparatuses and processes are patentable such

as semiconductor intellectual property (IP) platforms including embedded memories, logic, chips, Drugs, Automobiles, software, and even the $19.99 infomercial super storage bags, pet toe nail clippers, etc. Any concept regarding a useful process or apparatus that gives a company a business, technological, or other competitive advantage over its competitors.

• A patent is a legal document used for business purposes. An Invention for a patent application does not need to be a ground breaking scientific discovery. A good inventive concept for a patent application is typically some improvement on an existing product that the customer is really going to be excited about.

6

THE LEGAL STANDARD FOR PATENTABILITY

I. The idea must be "useful"

II.The idea must be "new" (novel)

III. The idea must be "non-obvious"

IV. The idea must fall within one of the categories of patentable subject matter.A. An Apparatus, a Device, or an article of manufactureB. Any kind of processes or methodC. Any kind of Composition of matter

7

PATENT PROGRAM OBJECTIVESWhy Pursue Patents? (Summary)

• Summary: A patent creates leverage that may be used

to collect royalties for your idea, obtain an injunction to

prevent the importing, sale, manufacture, or use of an

infringing product/process, inexpensively defeat

attacks by patent owners via use of sub licensing and

mere counter nuke ability, opens up stubborn

monopolies, provides design freedom for the

engineering development team, and improves

Company’s image with Wall Street, Bankers, and

customers.

8

WHEN TO FILE A PATENT

9

When to file a patent

• Two separate actions that both can cause a bar to filing for

a patent

time line

Public Disclose of an inventive concept to someone outside of 2Wire, not protected by a

NDA.

Barred from obtaining a patent on your invention in any country outside

the US

Barred from obtaining a patent on your invention

even in the US

0 mo.s 12 mo.s

Shipping/sales of a product implementing some form of the inventive concept to a third

party.

time line

Offers/negotiations to Sell of an inventive concept to someone outside of 2Wire

outside of joint development use of the product or similar experimental beta testing use of the

product by a third party.

0 mo.s 12 mo.sSeveral months

before commericalizing

the invention

is the time to submit an invention

disclosure on your invention

Several monthsbefore a public disclosure the

inventive concept is the time to submit an invention disclosure on your invention

WHEN TO FILE A PATENT

• I. MUST file in the U.S. within one year of a first sale, first offer of sale, publication, public disclosure, or public use of the invention sought to be patented. Foreign patent offices do not provide the one year grace period provided in the U.S.

• You do not want to discuss a concept with a 3rd party unless that conversation is covered by a Non-Disclosure Agreement.

• You do not want to start negotiations with a potential customer for a product that includes potential patentable concepts unless you file a regular utility patent application or if still in the early development stages perhaps a provisional patent application.

• Generally, it is quite common to begin work on the patent application about 4 - 6 months before a product release or scheduled trade show demonstration.

10

WHEN TO FILE A PATENT (Cont.)

II. Normally, file prior to first publication or sale of the invention to preserve foreign filing rights. We can file a provisional patent application or preferably a regular patent application to protect our rights. Foreign patent offices do not provide the one year grace period provided in the U.S. The foreign standard generally hinges on when the invention was "made available" to the public.

11

PATENT APPLICATION PROCESS

I. Determine which invention disclosures Company will file on.

II. Invention Disclosure Meeting– Typically this meeting is between at least one of the inventors

and the patent attorney who will be preparing the application.– Discuss the prior art (e.g., patents, articles, conference papers,

etc. of relevance to the invention).– Discuss the invention.– Compile drawings, flowcharts, references, and other

documentation that may be helpful.

III. Preparation of a draft of the patent application.– The inventor(s) review the draft.– Patent attorney generates revised patent application.– Final draft is reviewed and inventors sign declaration and

assignment papers.

IV. Patent application gets filed with the Patent and Trademark Office.

12

APPLICATION FORMAT AND LEGAL REQUIREMENTS

I. A patent is a legal document written with legal objectives in mind. It has two main structural parts:– Specification: what the public gets in return for granting the

monopoly.• Background Section - discuss problems with prior art/reason

for the invention.• Summary of the Invention - Broadest claim written with

proper syntax.• Drawings and the listing of the Drawings

13

APPLICATION FORMAT (Cont.)

• Description Section - MUST:– Provide a detailed description of the invention with

the one or more drawings that correspond to the text of the detailed description of the invention.

– Enable others skilled in the art to make and use/implement the invention.

– Describe the best mode which the inventor contemplates of practicing the invention. Thus, if some way of implementing the invention exists that is vastly superior over other ways, then disclose the best way of implementing the invention.

• Abstract - Broadest claim rewritten w/o legalese.– Claims : The legal words that define the boundaries of the

monopoly provided by the patent. Typically, Broad independent claims capturing the concept followed by successively narrower dependent claims capturing specific implementation details.

14

PROCEDURE AT THE U.S. PATENT OFFICE

I. Patent Application is received and assigned a filing date and serial number. The Patent Application is kept confidential in the Patent Office during pendency. Two months to submit an execute Declaration by all listed inventors. Generally an Assignment of ownership will be submitted at the same time.

II. Application is assigned to an Art Group and an Examiner.

III. Examination commences after a long delay after filing, sometimes up to 30 months.

IV. Examiner issues an Office Action, which is the Examiner's Report of his/her results of the examination of the patent application. The Examiner cites all prior art found that relates to the claimed invention. Typically, the Examiner rejects the claims the first time. A 3 month deadline exists to respond.

V. The patent attorney responds to the Office Action by making arguments why the claims are patentable over the prior art and/or amending the claims if necessary to get around the prior art.

15

PROCEDURE (Cont.)

VI. Steps IV and V may be repeated several times. Each action triggers a period for response and another deadline.

VII. Application is allowed or finally rejected. Deadline are trigger in both case.

VIII. Patent issues if allowed - Appeal is possible if finally rejected. Once a patent is granted, then maintenance fees must be paid at roughly the 4, 8, and 12 year points.

16

CONSIDERATIONS FOR FOREIGN FILING

• U.S. filing date can be used as foreign priority date by treaty as long as the foreign application is filed within 12 months of the earliest claimed patent application.

• Invention cannot have been made available to the public prior to the priority date.

• Consider which foreign countries or regions may most likely make, use, or sell the invention

• Countries requiring translation will be more expensive.

• Patent Cooperation Treaty (PCT) applications can be used to defer national filings for up to 30 months after priority date.

17

OTHER PROTECTION AVAILABLE FORINTELLECTUAL PROPERTY RIGHTS

TRADE SECRET

• Trade secret law protects "confidential" information from being taken or used by another party without the consent of the party owning the trade secret.

• Requires reasonable steps be taken to protect the secret, such as limiting access to the secret and obtaining signed NDAs from those to whom access is given.

• Trade secret protection does not prevent independent development including reverse engineering.

• Competitors may file blocking patents on their independently developed technology.

18

Trade Secret (Cont.)

• Trade Secret information is typically information that can derive

sufficient economic value from its disclosure or use and was subject to

efforts to reasonably maintain that information’s secrecy by an

organization. The more effort an organization puts into making that

information secret, the more likely a court will find that information

qualifies as trade secret information. All Trade Secret information: 1)

must be not publicly known or generally available information, 2)

must be labeled as confidential or secret information, 3) have a

controlled/limited access list of people who are authorized to view this

information.

PROTECTION AVAILABLE FORINTELLECTUAL PROPERTY RIGHTS (Cont.)

TRADE SECRET (continued)

• Institute and Maintain Procedures to Protect Trade Secrets with:

• Employee Agreements.• Communication with new employees.• Exit Interviews.• NDAs with consultants, business partners, etc.• Visitors.• Marking and Security.• Approved personnel distribution/access lists for certain info.

• Avoid contamination from mixing confidential information from Client with that of another entity.• Impaired development or restrictions on shipping a product.• Being sued for damages.• Tarnished reputation hurts future partnerships.

20


COPYRIGHT

• Copyright law protects original works of authorship that are fixed in any tangible medium. Examples that might be relevant to Client include a printed source code listing, memory-resident object code, displayed user interface, or operation manual.

• Copyright protection attaches automatically when a work is created. Copyright protection is not contingent upon the granting of the right as in the patent case.– Duration is life of author plus 70 years.– Works for Hire - shorter of 95 yrs after publication or 120 yrs after

creation.• Software is not a considered a “Work for Hire”

• Copyright protection does not prevent development of similar or competing works embodied in different expressions. Copyright extends only to literal or near literal copies.– Copyright infringement occurs when a party creates a work which is

substantially similar to the protected expression and where the infringing party had access to the protected expression.

21


COPYRIGHT (continued)

• Copyright does not cover the useful or functional characteristics of a work.

• Notice is not required, but still good to protect against an “innocent infringer” defense during calculation of damages.

2000 Client Corp.

• Registration is not absolutely required until just before suit but strongly advisable soon after creation.– If you did not register before infringing activity started

then you are precluded from obtaining an award of statutory damages.

– Useful for corporate asset valuation.

22


TRADEMARK

• A trademark is any word, name, or symbol/logo that is used by a company to identify its goods and distinguish them from those manufactured or sold by others.

• Trademark law prevents a party from adopting a mark to represent its products which is likely to lead to confusion on the part of the purchasing public as to the source or origin of the products.

• Trademark protection does not, in general, prevent a product itself from being copied.

• Trademark protection can prevent a party from unfairly benefiting from or damaging the customer recognition and goodwill developed in a product or company name.

• Lasts forever if you continue to use it and renew registration!

23


TRADEMARK - MARKING

• Mark products with , if the mark is registered.

• Mark products with if in use, but not not federally registered with the Patent and Trademark Office. – Provides limited protection in US.– Not valid in all countries.

• Maintaining and preserving trademark equity by adhering to proper use rules lends itself to the ability to stop unauthorized uses of your trademark.– Failure to do so may result in the loss of the

trademark!• Bayer Co. lost their trademark to “Aspirin”because

they allowed it to become a generic term.• Xerox - came close.

24

We interruptour

advertisingfor a

word fromour lawyers.

Xerox is a trade name and a registered trademark. As atrade name, it stands for Xerox Corporation. As atrademark, it identifies our products. And it shouldn’tbe used when referring to anybody else’s copier,duplicator, paper or whatever. (Let them use their ownname.) Lawyer or not, remember that O.K.? We returnyou now to our regularly scheduled advertising.

XEROX

25


TRADEMARK’S GOLDEN RULES

• ALWAYS use a trademark as an adjective accompanied by the appropriate noun. Never use trademarks as a noun, in plural form, or as a verb. Do not join a trademark to other words or with hyphens.– Bad: “CLIENT TRADMARK MISUSED!”– Good: “CORRECT TRADEMARK”

• ALWAYS use proper spelling.– Ex: Not “EXAMPLE” (EXPLANATION).

• ALWAYS use trademarks and brand names in the ways they were intended to be used.– Do not use them for goods and services for which they

were not originally intended.– Do not alter them, make puns out of them, or portray

them in a negative light.

26


MASK WORKS

• S.C.P.A. grants owners of original mask works (i.e., semiconductor chip layout) exclusive rights to make, import, or distribute semiconductor chip products made from the mask works. Protection lasts for 10 years.

• Think of them as copyrights.– Does not protect ideas, procedures, or processes.– Does not protect against reverse engineering.– Does not protect against independent creation.

• Conditions where registration is desirable:– Protection against direct knock-offs.

• Ex: your foundry decides to use your mask work (or someone else who obtained it) to make your chips for others.

– Protection where layout provides benefits that cannot be explained.

• Ex: layout increases speed but don’t know why.

27

• Domain names

• Obtain and register.

INTELLECTUAL PROPERTY Overview by Tom Ferrill, Esq. Rutan & Tucker, LLP Five Palo Alto Square 3000...

Documents

Transcript of INTELLECTUAL PROPERTY Overview by Tom Ferrill, Esq. Rutan & Tucker, LLP Five Palo Alto Square 3000...