Mr. Rothe is an attorney with RatnerPrestia, PC, a law firm located in Valley Forge, PA. Christopher counsels clients in all areas of intellectual property law, including patents, IP risk management, and IP transactions. Mr. Rothe has expertise in prosecuting domestic and international patent applications. He is currently responsible for managing patent portfolios for a major U.S. manufacturer of surgical implants, and one of the nation's top children's hospitals. Mr. Rothe is accustomed to explaining complex IP issues to individuals with various backgrounds, including general counsels, company presidents, CEOs, technology transfer specialists, marketing directors, engineers, scientists, and beginning entrepreneurs. Mr. Rothe received a law degree from Villanova University School of Law. Before attending law school, Mr. Rothe spent four years working as an engineer in private practice. He received a B.S. in civil engineering from the Pennsylvania State University in 1992.

1. INTELLECTUAL PROPERTY
October 24, 2009
Christopher A. Rothe
RatnerPrestia, PC
Information contained in this slide show, and any statements made by the presenter during
presentation of this slide show, are provided solely for educational purposes for the NCIIA Invention
to Venture Workshop, and do not constitute legal advice. Individuals seeking legal advice about
intellectual property should consult with competent legal counsel and explain their specific
circumstances. Laws are subject to change. © 2009 RatnerPrestia
1

2. What is Intellectual Property?
Intellectual Property =
“creations of the mind: inventions, literary
and artistic works, and symbols, names,
images, and designs used in commerce.”
- WIPO
• But what makes it property?
2

3. Legal Categories of IP in US:
 Copyrights
 Trademarks
 Trade Secrets
 Patents
3

4. Copyrights
 Protect works that are:
Original;
Creative; and
Fixed in a tangible medium of expression
 Purpose: protects the expression of an
idea, not the idea itself
Examples: Paintings, photographs,
sound recordings, source code
4

5. Copyrights
 What you get:
Exclusive rights to (and authorize others to)
– Reproduce the work
– Prepare a derivative work
– Distribute copies
– Publicly perform or display the work
 Fair use exception
5

6. Copyrights
Copyright term (first published in US):
70 years after the death of author.
6

7. Trademarks
 A trademark is a word, phrase, symbol or
design, or a combination of words,
phrases, symbols or designs, that
identifies and distinguishes the
source of the goods of one party from
those of others.
Examples:
7

8. Trademarks
 A service mark is the same as a
trademark, except that it identifies and
distinguishes the source of a service
rather than a product.
Examples:
8

9. Trademarks
 Trade dress is any other feature seen in
the presentation of a product or service
– Product configuration
– Product packaging
9

10. Trademarks
 What you get: a right to exclude others from
using a mark in a manner that creates a
likelihood of confusion as to source
 Purpose: to protect consumers from confusion or
deception when purchasing
 Term: Indefinite but must renew every 10 years
 Use it or lose it
10

11. Patents
 A “deal” with the government:
– A patent grants an inventor the right to
exclude others from making, using, offering for
sale, or selling the invention in the U.S. or
importing the invention into the U.S. - for a
limited patent term
– In exchange, the government publishes your
invention & public gets to see it
11

12. Types of U.S. Patents
Utility patents
 Protect processes, machines, articles of
manufacture, compositions of matter, etc.
 Term: 20 years from date of filing
Design patents
 Protect new, original, and ornamental designs for
articles of manufacture
 Term:14 years from date of filing
Plant patents
 Protect distinct and new varieties of asexually-
reproduced plants
 Term: 20 years from date of filing
12

13. Requirements for Utility Patent
Must be:
 Novel over prior art
 “Non-obvious” over prior art
 Useful
13

14. Hypothetical
 US Patent issued to Smith
 Title: A Seating Apparatus
Claim:
A seating apparatus comprising
four legs and a seat.
Smith
14

15. Hypothetical
 US Patent Appln. filed by Jones
 Title: Improved Seating Apparatus
Claim:
A seating apparatus comprising
four legs, a seat and a back rest.
Jones
15

16. Hypothetical
Assume:
 Only prior art to Jones:
Smith patent This boulder
16

17. Hypothetical
1) Is the Jones chair patentable?
Useful?
Novel?
Non-obvious?
17

18. Hypothetical
2) If Jones gets a US patent, is he free to
make, use and sell his chair?
18

19. Hypothetical
2) If Jones gets a US patent, is he free to
make, use and sell his chair?
NO !
Patent provides right
to exclude, not to
practice
The Jones chair would
infringe the claim in
Smith’s patent
Smith = dominant patent
19

20. Hypothetical
3) Can Smith make and sell the Jones chair
in view of Smith’s dominant patent?
20

21. Hypothetical
3) Can Smith make and sell the Jones chair
in view of Smith’s dominant patent?
NO !
Smith would be infringing
the Jones patent.
21

22. Patent Novelty & Time Bars
 One year grace period in U.S. to file
patent application after commercial
disclosure:
• Sale or Offer for sale
• Public use (“experimental use” exception)
 After that, you are barred from obtaining a
patent in the U.S.
 Most other countries: no grace period
22

23. Territorial Protection
 U.S. patents - enforceable only in U.S.
 Filing options outside U.S.:
– File in individuals countries; OR
– Patent Cooperation Treaty (PCT)
• one procedure allowing party to apply for
patents in multiple countries that are members
of the PCT
23

24. Trade Secrets
 Trade Secret - information, including a formula,
pattern, compilation, program, device, method,
technique, or process that:
– provides value because it is not known to others who
could benefit from it; AND
– safeguarded by the owner in a way that can reasonably
be expected to prevent others from learning about it
 No term limit, so long as the info remains
“secret”
24

25. Patents vs. Trade Secrets
 Conditions favoring patents:
– the technology is easily discoverable or reverse
engineered
– licensing revenues
 Conditions favoring trade secrets:
– Life cycle is short (e.g. technology is obsolete
in <3 years)
– Proving infringement would be difficult
– Technology can be easily “designed around”
once it is known
25

26. What to Do If You Have “Something”
1. Articulate your invention
– New Apparatus / System?
– New Process / Method?
– All of the above?
– What exactly is novel?
– Explain the invention in one sentence.
26

27. What to Do If You Have “Something”
2. Is a patent a good idea?
– Would a trade secret be better?
– Who would infringe the patent?
– How would you know about infringement?
– Is the prior art “crowded”?
• USPTO search
27

28. What to Do If You Have “Something”
3. Get the record straight
– Keep dated information, preferably in a
permanently bound notebook
– Document all contributors, and what they
contributed
– If you disclosed it, record disclosure date
– Complete an “invention disclosure form”
28

29. What to Do If You Have “Something”
4. Control your Disclosure
– Try to get an NDA
– Limit disclosure to general summaries
29

30. What to Do If You Have “Something”
5. File a patent application before you
disclose the invention
Option: “provisional application”
30

31. Provisional Applications
 Purpose: Gets you a U.S. filing date (f/d)
 Does not get you a patent
 Must file a “full-blown” patent application to
obtain a patent
 Full blown application can claim the provisional’s
f/d if it is filed within 1 year of the provisional
“full-blown” = U.S. non-provisional or PCT
31

32. Provisional Applications
Benefits:
 inexpensive
 buys 1 year of time after f/d to determine
commercial interest & refine invention
 “patent pending” status
But note:
 Must be detailed and descriptive
32

33. For More Information…
 For general IP questions: www.uspto.gov
33

34. QUESTIONS ?
34