PATENTS, TRADEMARKS, AND IPGetting Started with Your Research

WHERE DO WE START?

Has anyone else produced a similar product? Are there any patents are trademarks that

could prevent your production? Is there technology/products that exist that

you could license from another company? Are you going to be a domestic or

international company? Will your products be produced in the US or a foreign country?

If there are no complications, what do you want to patent/trademark?

Are you going to seek international patents/trademarks?

WHAT’S THE DIFFERENCE?

Trademark: registering a component of your brand that identifies your company/service from competitors in a similar business.

Patent: legal protection that ensures the creator of a product/service has exclusive rights to create, use, and distribute said product. Legal steps can be taken to stop others from infringing on patent rights.

IP: a creation by an individual in any medium. It is a representation of an idea, and gives the creator exclusive rights to create/reproduce/ manufacture/distribute that idea.

HOW DO I GET A PATENT?

Background research Fill out an application Invention must be:

New Useful Non-obvious Written and drawn description included with

application Not a slight variation on another product/service Not a slight variation on an existing patent for a

non-related product/service http://www.uspto.gov/patents/process/

index.jsp

SEARCHING FOR PATENTS

Recommended routes for inventors/entrepreneurs include Patent attorneys, local guilds/membership groups, patent search firms, University IP Offices, and research specialists.

It is a highly specialized form of research Lawyers are most recommended but can be

extraordinarily expensive. If you are actually going to produce a product, at some point legal council should be considered.

CLASS PROJECT

Basic searches using Verified Resources: You have an idea for a new home thermostat.

Current home thermostats only control heat & cooling. Yours would control the entire home environment. It would monitor inside air and control humidity, air pollutants, and temperature. ENVIRO Stat would control all the enabling variables that affect the inside air such as window temp, roof temp, and air pollutants.

What do we want to know?

WE FOUND A PATENT – NOW WHAT?

Discuss licensing rights with the company Innovate a new way to deliver your product Check the patent information for exclusivity

clauses

LIMITATIONS OF PATENTS/TRADEMARKS

Each country needs a patent Production Sales

Web domains need to be registered in each country

Employee contracts in each country need to be specific as well

Specific descriptors may not be validated in each country – i.e. cloud computing

MORE READING

Reference Universe Encyclopedia of Small Business 3rd Edition Online IP Training:

http://www.stopfakes.gov/business-tools/sme-module

http://www.uspto.gov/ http://www.uspto.gov/video/cbt/ptrcsearching/ http://gpsn.uspto.gov/

Harvard Business Review, many case studies Scholarly journals – E-mail Gabrielle at

gannala@luc.edu for some suggestions.

TAKE A LOOK AT YOUR BUSINESS/PRODUCT

Conduct an IP Audit What do you want to patent/trademark?

Logos Packaging/distinctive look Software Hardware Trade Secrets

Discussion of products under development Privacy concerns

Employee creations Should include all assets that are owned by

the company

DESCRIBE YOUR PRODUCT

LET’S LOOK AT A PATENT

http://appft.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sect2=HITOFF&d=PG01&p=1&u=%2Fnetahtml%2FPTO%2Fsrchnum.html&r=1&f=G&l=50&s1=%2220130167035%22.PGNR.&OS=DN/20130167035&RS=DN/20130167035

Use the UPCS in a search: http://www.uspto.gov/web/patents/classification/

Note the Index/UPCS, Patent Numbers, CIC (current international class) numbers, and References Cited Sections

WHY IS THE USPC BETTER THAN A KEYWORD?

Concepts are often vague Synonyms Different terminology has been used over

time Often times people avoid using specific

language to cast a wider net with their patents

Cumbersome results, often off topic Full text access back to 1976 – PDF scans

back to 1790.

HTTP://WWW.USPTO.GOV/WEB/PATENTS/CLASSIFICATION/SELECTNUMWITHTITLE.HTM

Similar to library classification, or shopping in a grocery store, or classifying species of animals/plants

Starts general, becomes more specific as numbers get longer

WHY DO WE HAVE TO SEARCH SO MUCH?

Cell phones Apple patents a

certain size Size patent is

approved for smartphones only

Apple has the largest market cap

App designers program to a certain size ratio

App designers do not see value in redesigning for a different size for a smaller market

Fewer apps are made for other phones

Potential clients see added value in an Apple product; not only will they buy, they will pay more.

MAKE A LIST OF EVERYTHING WE WANT TO SEARCH

TODAY WE’LL DEMONSTRATE:

Official Government Website Searching: http://www.uspto.gov

Google Patent Search: http://www.google.com/advanced_patent_search

LexisNexis Patent/Trademark Search: http://libraries.luc.edu/databases/database/827 Search By Content Type Patent Search OR Individual company profiles

Law Library Guide: http://lawlibguides.luc.edu/IP

Chicago Public Library: PubWest