SUNY ESF Tech Entrepreneurship 101 · SUNY ESF Tech Entrepreneurship 101 Intellectual Property...
Transcript of SUNY ESF Tech Entrepreneurship 101 · SUNY ESF Tech Entrepreneurship 101 Intellectual Property...
SUNY ESF Tech Entrepreneurship 101
Intellectual Property Protection
May 12, 2014
George R. McGuire
Bond, Schoeneck & King, PLLC
David L. Nocilly, Esq.
Bond, Schoeneck & King, PLLC
Intellectual Property Buckets Where Do I Start
Patents Copyrights Trademarks Trade Secrets
Be Careful!!
• Don’t Wait Too Long To Protect
• Don’t Leave to Chance
• Document, Document, Document!!
Hypo Star-Up
• Frostings, Inc.
– Invented a process for icing cupcakes that will allow for mass production
– Created a name and graphic to use as a logo
– Does frostings have protectable IP? Should it seek protection?
Patents
Entrepreneurship Class
• Patents – Grant of monopoly from government that
allows you to exclude others (NOT a guarantee to practice)
– Covers any new and useful process, machine, article of manufacture, or composition of matter
• Or any new and useful improvement thereof
– Must file application with the U.S. Patent Office (or foreign office)
– Provides protection for about 20 years
Patents
U.S. Patent No. 8,137,380 – “Closure
Device”
Loss of Patent Rights
• Beware loss of patent rights:
– A public disclosure, use, sale, or offer for sale of
your invention before filing patent application can
be an absolute bar to a patent
• 1 year grace period in the U.S. if disclosure made by
inventor (or by 3rd party who received it from inventor)
• This can include investors if the disclosure is complete
• BEST PRACTICE: File a patent application before any
public disclosure!
Provisional Patent Applications
• Consider a provisional patent application:
– Can be quick and informal
– Kept in secret by patent office
– Automatically abandoned in 12 months
– Does not count towards 20 yr. patent term
– Possibility of additions or changes when filing utility application within 12 months
Patents
• Would a patent be appropriate for frostings?
• YES -- Process for icing cakes that allows for mass production – Stop others
– License others
– Attract venture capital
• NO -- New graphic to use as a
trademark
Trademarks
Entrepreneurship Class
Trademarks
Trademark: Any word, name, symbol, device, or any combination thereof that permits consumers to identify and distinguish the goods/services of one manufacturer/retailer from those of another
Service mark: Any word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of a service
What is a Trademark?
• Less Traditional Examples:
– Single colors: “Tiffany blue”
– Sounds: NBC chimes
– Smells: tennis balls that smell like cut grass
Trademark Notations
• TM – Trademark; use to alert the public that you are claiming ownership of the trademark; has no legal significance
• SM – Service mark; use to alert the public that you are claiming ownership of the service mark ; has no legal significance
• ® – Federally registered trademark; use to alert public that you have a registered mark, but can not be used before registration issues or after registration expires
Trademarks: Selecting a Mark for Your Business
Entrepreneurship Class
Two Legal Issues When Selecting a Mark:
1. Will use of the mark subject you to an infringement suit by another?
2. How much protection will the mark provide against future uses of similar marks?
Selecting a Trademark
Selecting a Trademark
Brainstorming – work with marketing and legal to create a list of potential marks
Registrability/Protectability – determine whether the marks are registrable (strong, non-descriptive, etc), and determine the appropriate classification
Availability/Search – determine whether someone else is using the mark
Registration – file for federal/state registration
• Knock-Out Search – very quick – USPTO Database
– GOOGLE search or other search engine • Doesn’t indicate if mark IS available, but may indicate
mark is NOT available
• FULL Search – standard about 1 week – Trademark search agency
– Includes phonetics, synonyms
– Large common law database
– Websites/Domain names
Selecting a Trademark
• Is a Trademark appropriate for frostings?
– NO -- Process for icing cakes that allows for mass production
– YES -- New graphic – Stop others
– License others
– Attract venture capital
Trademarks
Copyrights
Entrepreneurship Class
• Copyrights
– Original work of authorship that is fixed in a tangible medium
• Original = new to the author (i.e., not copied)
• Tangible medium = paper or electronic
• Mere “modicum” of originality sufficient
– Literary Works (incl. computer programs), Music-Sound Recordings, Movies & audiovisual works, Artwork, Dramatic Works, Choreography, Architectural Works
Copyrights
• Copyrights
– Protection begins with creation
– Perfunctory registration process
– Somewhat limited lifespan?
• Life of the author plus 70 years; or
• 95 years from publication (“work made for hire”)
Copyrights
Copyrights
• Copyright owner’s exclusive rights include:
– Reproduction – Preparation of derivative works – Distribution of copies – Public performance – Public display
• What does copyright not cover? • Inventions, Procedures, Discoveries
• Business or Product Names
• Titles & Short Phrases
• Works by the US Government
• Works not in tangible form – speeches
• Ideas/Facts – COPYRIGHTS DO NOT PROTECT IDEAS OR FACTS,
ONLY THE AUTHOR’S PARTICULAR WAY OF EXPRESSING AN IDEAS OR INFORMATION.
Copyrights
• Patents/Copyrights/Trademarks
– Usually the inventor / author / user is the owner of the rights in the first instance
– Important considerations
• Agreements assigning ownership rights
• “Works Made for Hire” – Employee in ordinary scope of his/her job; or
– Independent Contractor under a written contract stating it is a “Work Made for Hire”
Common Ownership issues
• Is Copyright protection appropriate for frostings?
– NO -- Process for icing cakes that will allow for mass production
– YES -- Graphic design
Copyrights
Trade Secrets
Entrepreneurship Class
• Trade secrets – Any formula, pattern, device or compilation of
information used in business, which gives an advantage over competitors who do not know or use it
– Just have to keep it a secret! • extent to which the information is known to others
• measures taken to guard the secrecy
• the value of the information
• the amount of effort expended to develop the information
• the ease with which the information could be properly acquired or duplicated.
Trade Secrets
Trade Secrets
• Does frostings have a Trade secrets?
– MAYBE? -- Process for icing cakes that allows for mass production
– Need to make a decision whether to pursue patent protection or keep it a secret
– Could depend on how easy it is to keep secret or reverse engineer
– NO -- New graphic to use as a trademark
Tech Entrepreneurship 101
QUESTIONS?
Bond, Schoeneck & King, PLLC
One Lincoln Center
Syracuse, NY 13202
(315)218-8000
Intellectual Property Protection May 12, 2014