Transcript Business Roundtable: Patents & Trademarks

Business Roundtable: Patents &
Trademarks
Friday, October 28, 10 – 11:30am, Trumbull Main Library Community
Room
Robert Berry, Research Librarian, PTRC Representative, Ryan-Matura
Library, Sacred Heart University
5151 Park Avenue, Fairfield CT, 06825
[email protected] (203) 365-4842
United States Patent & Trademark
Office
• Approximately 9,000
employees The USPTO
campus in Alexandria, Va.
• Congress authorizes the
USPTO to examine
applications for Patents and
Trademarks.
• The Copyright Office
(http://www.copyright.gov/)
manages copyrights, the third
major form of Intellectual
Property.
[United States Patent & Trademark Office, “Mission
and Organization of the USPTO,”
http://www.uspto.gov/web/offices/com/annual/20
07/30100_mission_org.html
The USPTO’s PTRC Program
• The program began in 1871 to
create depositaries for
government publications.
• Today PTRCs assist the public
in using of patent and
trademark information
resources efficiently.
• PTRCs Provide free access to
patent and trademark
resources provided by the
United States Patent and
Trademark Office.
[United States Patent & Trademark Office, PTRCs, at
http://www.uspto.gov/products/library/ptdl/index.
jsp ]
The Granting of Patents is Authorized
and Regulated under Federal Law
• U.S. CONST. art I, § 8, cl. 8
grant to Congress the
power to “To promote the
Progress of Science and
useful Arts, by securing for
limited Times to Authors
and Inventors the exclusive
Right to their respective
Writings and Discoveries.”
• Federal laws pertaining to
Patents are codified in Title
35 of the United States.
35 U.S.C. § 101 (Inventions patentable)
defines the scope of “patentability”.
• “Whoever invents or
discovers any new and useful
process, machine,
manufacture, or composition
of matter, or any new and
useful improvement thereof,
may obtain a patent therefor,
subject to the conditions and
requirements of this title.”
• Thus, to be patentable, claims
must be (1) new, (2) useful
and (3) non-obvious.
[USPTO MPEP at § 2106
http://www.uspto.gov/web/offices/pac/mpep/mpep_e
8r6_2100.pdf]
To Determine if a Claimed Invention is New a
Patent Examiner Searches “Prior Art.”
• Prior Art refers to all
information that has
been published
concerning the relevant
Scientific and
Technological principles
claimed.
• It is much more
comprehensive than a
Preliminary Search.
Things that cannot be Patented
include:
• Laws of nature (such as
E=mc2 or Newton’s Law
of Gravity)
• Physical Phenomena
(such as a newly
discovered mineral or
plant)
• Abstract Ideas (such as
concepts related to
hedging risk reduced to a
mathematical formula)
[Diamond v Chakrabarty, 447 U.S. 303, 309 (1980);
Bilski v. Kappos, 130 S.Ct. 3218, 3231 (2010) Doris
Ulmann, Albert Einstein (1931) Prints &
photographs, PR 13 CN 1975:127]
What can PTRCs do?
• Assist People in
Understanding how to
Conduct a Preliminary
Patent Search.
• Assist People in
Locating the up-to-date
Resources.
• Provide Access to
PubWest for Advanced
Searchers.
What can PTRCs not do?
• Filing a patent
application is initiating a
legal proceeding,
accordingly:
• PTRC’s cannot File a
Patent Application for
you or Opine on the
Adequacy of an
Application.
• PTRC’s cannot Conduct a
Search of Prior Art for
you or Opine on the
Adequacy of your Search.
PTRCs also Provide Access to PubWest
Why Undertake a Preliminary Search
of USPTO Databases?
• Inventors can avoid
pursuing existing
inventions and be better
prepared to consult with
a patent agent or patent
attorney.
• Entrepreneurs can avoid
infringement, monitor
technical developments,
and identity licensing
opportunities.
[PTDLP, “Ho to Conduct a Preliminary U.S. Patent
Search ,”
http://www.uspto.gov/web/offices/ac/ido/ptdl/CB
T]
Patent Searching can be done using
the U.S. Patent Classification System
You can locate Applications and Patents by
Clicking on the Blue or Red Icons
Note that Seesaws are in Class 472,
Amusement Devises
We can use the Patent Quick Search to
Search by Class and Subclass Numbers
One of 97 Seesaw Patents our Search Retrieved is
Patent No. 3,666,265 Water Seesaw Device
There are Several Useful Resources on
the USPTO Website to get you Started
• Seven Step Strategy
• Inventors Assistance Center
(IAC)
• Patent Attorneys and Agents
Registered to Practice before
the USPTO
• Plugins - TIFF images
• Manual of Patent Examining
Procedure (MPEP)
• How to Conduct a Preliminary
U.S. Patent Search
[USPTO, “How to Conduct a Preliminary U.S. Patent
Search,”
http://www.uspto.gov/web/offices/ac/ido/ptdl/CB
T/]
Seven Step Strategy
Patent Attorneys and Agents Registered to
Practice before the USPTO
Inventors Assistance Center (IAC)
• Answer general questions
regarding patent examining
policy.
• Direct your call to
appropriate USPTO
personnel.
• Assist you with filling out
forms.
• Provide general
information concerning
rules, procedures, and fees.
• Send information via mail
or facsimile.
Trademarks
• A trademark is a word,
phrase, symbol or
design that identifies
and distinguishes the
source of goods.
• A service mark
identifies and
distinguishes the
source of a service or
services.
The USPTO may refuse to register a Trademark
or Service Mark for many reasons, including:
• Likelihood of Confusion
see, e.g., Mini Melts, Inc. v.
Reckitt Benckiser, Inc., 418
Fed. Appx. 271 (5th Cir.
2011).
• Merely Descriptive.
• Deceptively Misdescriptive.
• Primarily Geographically
Descriptive and Primarily
Geographically Deceptively
Misdescriptive.
• Primarily Merely a Surname.
While Trademarks Enjoy Protection under Common Law, there
are Advantages to Registering
• Public notice of your claim of ownership of the mark;
• A legal presumption of your ownership of the mark and your exclusive
right to use the mark nationwide on or in connection with the
goods/services listed in the registration;
• The ability to bring an action concerning the mark in federal court;
• The use of the U.S. registration as a basis to obtain registration in foreign
countries;
• The ability to record the U.S. registration with the U.S. Customs and
Border Protection (CBP) Service to prevent importation of infringing
foreign goods;
• The right to use the federal registration symbol ® and
• Listing in the United States Patent and Trademark Office’s online
databases.
USPTO, “Trademark FAQS,
http://www.uspto.gov/faq/trademarks.jsp#_Toc275426681
Trademarks are Registered with the
USPTO Pursuant to the Lanham Act
• The Lanham Act or Trademark Act of 1946, 60
Stat. 427, as amended, 15 U.S.C. § 1051 et seq.,
provides the user of a trade or service mark with
the opportunity to register it with the PTO
• If the registrant then satisfies further conditions
including continuous use for five consecutive
years, “the right ... to use such registered mark
in commerce” to designate the origin of the
goods specified in the registration “shall be
incontestable” outside certain listed exceptions.
15 U.S.C. § 1065.
Trademark Searching can be Done using a
Classification System for Designs
•
“USPTO assigns all marks containing
design figurative elements a 6-digit
numerical code(s) for searching
purposes. This manual indexes the
categories, divisions, and sections
that make up these codes.”
• “For example, a single five-pointed
star would be coded in:
• Category 01 (celestial bodies, natural
phenomena and geographical maps);
• Division 01 (stars, comets); and
section 03 (single star with five
points), resulting in a complete
design code of 01.01.03.”
[USPTO, Trademarks, Manuals, Guides,
Official Gazette ,
http://www.uspto.gov/trademarks/reso
urces/index.jsp]
Once you Determine the Design Classification Code, you can Search using that
Number. For example Bees fall under 03.23.06: 03 Animals, .23 Insects, spiders,
micro-organisms, and .06 Bees, wasps, hornets.
We can Scroll through Results for marks with a Bee in
them and Names like The Buzz Ladies and Shopbee
A Record for a Trademark or Service Mark may
have more than one Code Associated with it:
• 02.09.04 - Humans,
including men, women and
children, depicted sitting or
kneeling; Kneeling,
humans; Sitting, humans
• 03.23.06 - Bees; Hornets;
Wasp; Yellowjackets
• 09.03.25 - Bath robes;
Costumes (Halloween or
masquerade); Jump suits;
Kimonos; Leotards; Robes;
Surgical gowns; Suspenders
(clothing); Uniforms;
Vestments
• Contact Information
Rob Berry [email protected] 203-3654842
Reference Desk [email protected]
203-371-7726