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?

gmcguire@bsk.com

Bond, Schoeneck & King, PLLC

One Lincoln Center

Syracuse, NY 13202

(315)218-8000

Intellectual Property Protection May 12, 2014