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From Invention to Start-Up Seminar Series University of Washington The Legal Side of Things

From Invention to Start-Up Seminar Series University of Washington The Legal Side of Things. Invention Protection Gary S. Kindness Christensen O’Connor Johnson Kindness PLLC. TECHNOLOGY EVALUATION. MAJOR BARS TO U.S. PATENT PROTECTION.

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From Invention to Start-Up Seminar Series University of Washington The Legal Side of Things

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  1. From Invention to Start-Up Seminar Series University of Washington The Legal Side of Things Invention Protection Gary S. Kindness Christensen O’Connor JohnsonKindnessPLLC

  2. TECHNOLOGY EVALUATION

  3. MAJOR BARS TO U.S. PATENT PROTECTION Patented or described in a printed publication in the U.S. or a foreign country over a year prior to the filing date of the application for patent. Public use, sale, or offer for sale in the U.S. of a product embodying the invention over a year prior to the filing date of the application for patent.

  4. FOREIGN PATENT PROTECTION – ABSOLUTE NOVELTY U.S. one year grace period can be a trap for the unwary since many foreign patent laws require absolute novelty, i.e. no public disclosure prior to initial filing.

  5. PATENT PROTECTION OVERVIEW • Evaluate invention for business merit • Perform novelty search • Make filing decision • Evaluate value of invention in foreign markets • Make filing decision

  6. PATENT PROTECTION PROCESS

  7. ALTERNATIVE PATENT PROTECTION PROCESS

  8. TRADE SECRET DEFINITION A trade secret consists of any device, pattern, design, process, procedure, technique, or compilation of information that is or could be used in a company’s business and that gives the company an opportunity to obtain an advantage over competitors who do not know or use it.

  9. TRADE SECRET PROTECTION • Information must be kept secret • Protection lasts as long as information is kept secret • Trade secret can be lost if another legitimately learns of it by: • Disclosure to outsiders without safeguards • Disclosure in publication • Observation by visitor • Reverse engineering

  10. PATENT RIGHTS Patents grant the owner the right to prevent others from making, using, or selling the subject matter covered by the claims of the patent. Patents do not grant the owner the right to make, use, or sell what is covered by the patent, only the right to prevent others from making, using, or selling.

  11. TYPES OF PATENTS • Design Patents – Protect the ornamental aspects of a product • Utility Patents – Protect the useful or functional aspects of a product

  12. ELEMENTS OF DESIGN PATENTS • Drawings showing the ornamental design to be covered by the patent • Must be accurate • Single claim to the ornamental design shown in the drawings

  13. ELEMENTS OF PROVISIONAL PATENT APPLICATIONS • No particular form – article, specification, simplified patent application (background an detailed description sections). • Must be technically enabling, i.e. adequate to teach a person of ordinary skill in the relevant technology how to practice this invention. • Must describe all limitations included in the claims of a subsequently filed utility application. • May include one or more claims.

  14. ELEMENTS OF UTILITY PATENTS • Specification, including drawings • Must be adequate to teach a person of ordinary skill in the relevant technology how to practice the invention, i.e. make a working embodiment of the invention • Must describe the best mode for carrying out the invention, usually the most recent version of the invention • Claims • Define the scope of patent coverage • Patents usually include one or more independent claims and a series of dependent claims • Independent claims should only include the essential elements of the invention

  15. PATENTABILITY REQUIRES THAT THE INVENTION BE USEFUL, NOVEL, AND UNOBVIOUS • Novel: New or unique • Unobvious: Could the invention be readily deduced from publicly available information (prior art) by a person of ordinary skill in the relevant technology • Prior Art: The body of technological information against which novelty and unobviousness are judged – primarily printed publications and products available to the public

  16. U.S. PATENT APPLICATION PROCESS (I)

  17. U.S. PATENT APPLICATION PROCESS (II)

  18. TRADEMARK DEFINITION A trademark is a word, slogan, design, picture, or any other symbol used to distinguish goods or services.

  19. CLASSIFICATION OF TRADEMARKS • Arbitrary or Fanciful marks • Suggestive marks • Descriptive marks • Generic Marks

  20. ARBITRARY OR FANCIFUL MARKS Ultimately become the strongest marks since, initially, they have no relationship to the related goods or service – Xerox, Exxon, Amazon, etc.

  21. SUGGESTIVE MARKS • Less strong than Arbitrary or Fanciful marks • Suggest, but do not describe, some aspect or feature of the related goods or service.

  22. DESCRIPTIVE MARKS • Describe some aspect or feature of the related goods or services. • Require significant period of exclusive use with the related goods or service (usually 5 years) to establish distinctiveness and become registrable.

  23. GENERIC MARKS • Somewhat of a misnomer. • Can never become a registrable trademark since by definition such “marks” are the generic name of the related product or service.

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