myers dill and sam digirolamo presentation
TRANSCRIPT
The Basics of Intellectual Property:
A Guide for Businesses
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Types of Intellectual Property (“IP”)
Patents
Trademarks
Trade Dress
Copyrights
Trade Secrets
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Why Worry About IP?
Protect competitive advantage
– Exclude Others
Attract capital
Enhance company’s valuation
Use IP as a marketing edge
Revenue Stream
– Sell
– License
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What is a License?
A contract between licensor and licensee
Licensor grants to licensee the right to
practice/use 1) the technology claimed in the
licensed patent, 2) the trademark owned by the
Licensor, 3) the copyrighted material
Licensor agrees not to sue licensee for infringing
licensor’s patent, trademark, and/or copyright
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What is a Patent?
Exclusive rights granted to an inventor or assignee for a
limited period of time in exchange for detailed public
disclosure of an invention
– “Negative right”
– Right to Exclude Others
Could be product or process/method
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Invention is Patentable if…
New
Useful
Not Obvious
Pertains to Patentable Subject Matter – Process
– Machine
– Composition of Matter
– Article of Manufacture
Grant of Patent Not Barred– 1 Year After Disclosure, Sale, Offer for Sale (Grace
Period)
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Types of Patents
Utility– Process, machine, article of manufacture, etc.
– Term: 20 years from date of filing
– Provisional vs. Non-provisional
Design– Ornamental design of an object
– Term: 15 years from date of issue
Plant– Asexually reproduced plant varieties
– Term: 20 years from date of filing
Utility Patents
Provisional Patent– Provisional patent buys you place in line– Provisional patent buys you time, and thus is good
strategy while business is forming• Cheaper• Less formal
– Mark “Patent Pending”– Never Examined/Published– Good for One Year
Non-Provisional (Utility) Patent– Utility patent is examined in the USPTO– When granted, right to exclude others– 20 year term from date of filing
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Design Patents
Ornamental Design Only /
Not Functional Protection
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Patent Searching
Patentability / Novelty
Freedom to Operate
Invalidity
Collection / State of the Art
Common Patent Pitfalls
Delay in filing– First-to-file
– Miss Grace Period Deadline • Distribution of products prior to filing
• Samples taken home
– No one-year Grace Period in most foreign countries
Not thinking about other uses, alternative
embodiments
Joint ownership issues
Disclosures Exceptions
Experimental Use/Testing– Test/Confidentiality Agreement
Derived from Inventor
Foreign Rights
PCT
– Filing within year of Disclosure
– Making the Choice which Countries to File (142 countries)
National Filings
Hague Agreement – International Design Option
– Most countries members (not Canada, China,
Australia, Russia)
– Up to 100 designs in same class
– Computer Generated and Photographs
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What are Trademarks?
Word, name, symbol, color or combination used
to identify source of goods or services Represented by the TM or SM or ® symbols
Term: 20 Years – Renewable - Can be perpetual
Rights terminate upon cessation of use with
intent not to resume use
Trademarks® , ™
– A trademark identifies tangible good or
product of a company or individual
Servicemarks ®, SM
– A service mark identifies the service(s) of a
provider
Marks used by a company can function as both
(e.g., McDonald’s)
Marks
Acquiring Trademark Rights
Types of trademark
– TM: A Trade Mark™ - used before registration
– SM: A Service Mark SM - used before
registration
Used in Interstate Commerce
Rights by Registration®
Registering Key Trademarks
Requirements for registration
– No likelihood of confusion
– Must be Distinctive• Generic, descriptive, suggestive, arbitrary
Federal Trademark Application
– Intent-to-Use
– Actual Use
State Trademark Application
Alternative: Rely on common law rights
Selecting a Mark
Distinctiveness Spectrum
Auto
MechanicBlu-Ray
Trademark Clearance
Avoid infringement of other trademarks
Ensure strong brand protection
Two types of searches
– Knock-out
– Comprehensive
Common Trademark Pitfalls
Selection of Trademark is descriptive of goods/services
No clearance search
Trademarks are not properly used– Adjective– Labeling
Stop Using
Foreign Rights
Madrid Protocol
Individual Countries
European Union Trade Mark
– (f/k/a Community Trade Mark)
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What is Trade Dress?
Design and appearance of a product together with the elements making up the overall image that serves to identify the product presented to a consumer.
Trade dress may include features such as size, shape, color or color combinations, texture, graphics.
Trade Dress Examples
Store/Restaurant Décor
Bottle Shape
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Protectable Elements of Trade Dress
Non-Functional Aspects
– Configuration of shapes, designs, colors, or materials
that make up the trade dress must not serve a
utility or function outside of creating recognition
– Color Red
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What are Copyrights?
Rights in the expression of an idea or
information – Not the idea itself
Examples: software code, videos, photos,
graphics, text, music, sculptural works
Basic Term: Life of the author + 70 years
Copyright Requirements
Original– The term original in the copyright law means that the
work originated with the author.
– There is no requirement for novelty or uniqueness as
there is in patent law.
Fixed in a Tangible Medium– Any stable medium that will record or reproduce the
material is acceptable
– Computer software satisfies the fixation the moment
the material is stored
– A computer display is considered fixed even if it
appears momentarily and only returns under certain
conditions (games)
Duration
Depends on whether it is pre or post 1 January
1978
Pre: Depends on whether published? Registered,
first term, renewal, etc.
Post:
– Life of author + 70 years
– Work-for-hire 95 years from publication, 120 years from
creation which ever is shorter
Ownership
Works for Hire: Employer is considered the author
when:– Work prepared by an employee within the scope or his/her
employment
– Work specially ordered or commissioned for use as a
contribution to a collective work
Transfer of Title v Work-for-Hire– Under a work for hire, employer is considered the owner.
Duration 95 years from pub or 120 from creation
Joint Works: 2 or more people make contributions of
authorship with intention contributions be merged
into inseparable work– Equal Rights
Fair Use
Limited use without owners permission
– Criticism, comment, parody, news reporting, teaching,
scholarship or research
– Criteria
Purpose and character of use
Nature of original work
Amount of work used
Extent of harm
Fair Use Examples
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Fair Use Examples
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Fair Use Examples
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Common Copyright Pitfalls
Not getting assignments/agreements From website designers, software developers,
photographers, etc.
Unauthorized use of images, music, videos and
text
Common Copyright Pitfalls
Not getting assignments/agreements From website designers, software developers,
photographers, etc.
Unauthorized use of images, music, videos and
text
Why Register a Copyright?
Statutory Damages
– Up to $150,000 per copy if willful!!!
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What are Trade Secrets?
Valuable, confidential information not generally known by the public
Examples: KFC chicken recipe, formula for Coca-Cola, Google algorithm
State Law (new Federal Action)
Term: Can be Perpetual– Rights terminate upon public disclosure– Nondisclosure agreements
Common Trade Secret Pitfalls
Not identifying all trade secrets (failure to realize
trade secret exists)
Lack of confidentiality and nondisclosure
agreements
Inadequate physical and electronic security
The Shape of Things to Come – Strategies for
Success in the Age of 3D Printing
What is 3D Printing and
How Does it Work?
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State of 3D Printing
As of 2014:
– 80,000 industrial printers worldwide since 1988
– 140,000 desktop printers sold in 2014 alone
– 38% of industrial printers are in U.S.
Japan is 2nd
China is 3rd
Total market as of 2014:
– $4.1B (includes prototyping + other non-commercial
uses)
– $2B in products
2016 market expected to grow to $7B
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State of 3D Printing
Standards being formulated
Improvements: Speed, accuracy, materials
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State of 3D Printing
3D Printing Technologies
– Blown Powder: Metal powder blown coaxially to the
laser beam which melts the particles on a base metal
to form a metallurgical bond when cooled
– Thermal Extrusion: Thermoplastic filaments heated
through a nozzle
– Stereolithography: UV-light
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State of 3D Printing
3D Printing Technologies
(cont’d)
– Selective Laser Melting (SLM);
Selective Laser Sintering
(SLS); Electron Beam Melting
(EBM)
– Ink-jetting Photopolymer
process: Tiny droplets of
liquid photopolymer onto a
tray & cured with UV-light
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A laser or electron
beam melts or sinters
powder (metal or
plastic parts)
State of 3D Printing
Printer Capabilities
– Multi-color and multi-material 3D printers
– Printers capable of creating objects with both
electrically conductive and insulating materials:
Thermoplastics
Inks
Pastes
Photopolymers
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State of 3D Printing:
Snapshot of the 3D Printer Players
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3D Printer Materials
State of 3D Printing
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State of 3D Printing
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State of 3D Printing
Fashion: Jewelry
Dresses
Shoes
Food
Aerospace
Homes
Prototyping
Pharmaceutical
Medical Orthopedics/prosthetics
Dental implants
Prototyping surgical operations/surgical planning
Skeletal reconstruction
Tissue and organ replication (ear, nose, body parts)
Hobby
Much more
3D Printing Applications
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FDA Approves First 3D Printed Pill
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Examples of “Printing” Footwear
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State of 3D Printing
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Aerospace America, July-August 2015 edition
Thermoplastic Powder – Case Study
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Using 3D printing for approximately 13 years
Using laser sintered thermoplastic parts in production for
10 years
Over 20,000 3D printed parts used in non-critical
applications
Metal Powder – Case Study
GE Aviation is printing over 114,000 fuel nozzles for use
in 6,000 jet engines that will start flying in 2016.
They are using Direct Metal Laser Melting (DMLM) to
melt 20-100 micron layers of a powdered alloy.
Previously nozzles were manufactured by welding
together 18 smaller pieces which was labor-intensive
and wasteful.
Design flexibility has allowed the nozzle to be 25%
lighter.
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State of 3D Printing
Service Providers
– Connect 3D manufacturers with customers
– Industrial based/commercial grade products
– Distinctive network of printers/all technologies
Manufacturers execute agreement with service providers
– One service provider: 32 manufacturers using 266
different types of printers
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State of 3D Printing
Service Providers
– Service provider develops 3D blueprint
– Manufacturers bid on projects
– Customer selects
– Service provider issues license to selected
manufacturer
– Send customer instructions
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Impact on Manufacturing
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Impact on Manufacturing
No entry barriers
Digital scans/digital
blueprints replace
products
Mass customization
possible
File sharing ramifications
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Impact on Manufacturing
Reduced shipping and
production costs
Reduced logistic footprint
Potential applications
(limitless)
Customers replace
manufacturers
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New Manufacturing
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Legal Issues
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Intellectual Property
Tax Treatment & Accounting of
Print-to-Order Revenue
Packaging &
Transportation
Commercial
Contracts
Licensing
Agreements
Imports/Exports
Higher Education
Healthcare
Food and Drug
Administration (FDA)
Regulatory
Product Safety &
Warranty
Product & Environmental
Regulations
$
3D Printing – Intellectual Property
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Who Are the Players?
Intellectual Property– Manufacturers of 3D printers
– Product manufacturers and designers
– Scanners/digital blueprint designers
– Customers
– Distributors
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Manufacturers and Designers
Infringement– Patents
Replacement parts
– Trademarks
Counterfeit goods
– Copyrights
Need a Well-Rounded IP Strategy
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Manufacturers and Designers
Infringement of Patented Product Who is the infringer?
Third party fabricator?
3D printer manufacturer?
Scanner/creator of digital blueprints?
Someone who distributes the digital blueprint?
Distributor of product?
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Manufacturers and Designers
Infringement of Trademark (™) Trade Dress
Molding Trademarks into Product Infringer can remove trademark
Embedding code into the product
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Manufacturers and Designers
Infringement of Copyright (©)– Sculptured works - easier to copy
– CAD program (engineering drawings)
– Electronic instructions to 3D printer/Digital blueprint
– Digital blueprint - easy to transmit to anyone
3D printing repositories/databases
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Intellectual Property
Alternate Ways to Protect Products
Copyright for 3D product configuration and
software for design? Who owns software, if
contract with someone to write code?
Trade Dress
How we structure patent claims (scanners): Method Claims – manufacturing by 3D printing
Product by process claims
Claims for computer readable storage medium (i.e., digital
blueprint)
Scanning Method Claims
Design patents
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Distributors
Risk Analysis:
– Indemnification
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Questions?