SPARK proudly presents another installment of intellectual property (IP) law for entrepreneurs and business leaders via its Business Law & Order series. In this session, we have assembled an All-Star line-up of IP experts to discuss the basics of intellectual property, registration, enforcing and maintenance so that you can protect and grow your business’s portfolio of intellectual property assets. The PowerPoint from this event is attached.

1. Business Law & Order
Intellectual Property I: Understanding
the Basics
October 15, 2012
© Ann Arbor SPARK

2. Intellectual Property:
Understanding the Basics
Jeremy D. Bisdorf, Esq.
Jaffe Raitt Heuer & Weiss, P.C.
201 S. Main Street, Suite 300
Ann Arbor, MI 48104
www.jaffelaw.com
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3. PATENT ASPECTS OF INVENTION
DEVELOPMENT & COMMERCIALIZATION
Ann Arbor SPARK 10/15/2012
William G. Abbatt, Shareholder
Copyright © 2010 Brooks Kushman P.C.

4. Today’s Goals
• Patent sensitivity training
– IP issue-spotting for the inventor
• How patents might touch you & your practice
• Not to make you into a patent attorney !
• Discuss commercial exploitation of your
– innovation
– professional reputation &
– creativity
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Copyright © 2010 Brooks Kushman P.C.

5. You Can Be a "Legend" (If You Want To Be . . .) !
• Conceive an invention
– Define &
– Protect it
• Recognize it for what it is - a potentially
valuable IP
• Don't give it away !
– Avoid untimely unprotected disclosure
• Get professional help early on
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Copyright © 2010 Brooks Kushman P.C.

6. Today’s Topics
• Idea conception to patent issuance -
"patent pending“
• Subject matter - what can be patented?
• Patent (novelty) searching
• Types & content of patent applications
• How do I get a patent? – patent
prosecution procedure: costs & timing
• Issuance to enforcement - what can I
do with it?
• Selecting & dealing with patent counsel
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Copyright © 2010 Brooks Kushman P.C.

7. Intellectual Property ("IP") Issues &
Opportunities
• IP = patents, trade secrets, trademarks
& copyrights . . .
– We focus today on patents
• Question time . . .
– After our session, or
– Privately at your convenience
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Copyright © 2010 Brooks Kushman P.C.

8. Handouts
• Brooks Kushman’s IP Primer
• Info about
– BK
– Patents
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Copyright © 2010 Brooks Kushman P.C.

9. Raise Your Hand If You Have . . .
• Ever invented anything ?
• Been named in
– A patent application ?
– An issued patent ? . . . or
• Would like to be . . .!
• Been involved in research ?
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Copyright © 2010 Brooks Kushman P.C.

10. Can the Patents of Others Block Your
Activity? (“Freedom to Practice”)
• Yes - if your use
– infringes another's valid patent &
– is unauthorized by the patent holder
• Ignorance may be blissful
– but is not an excuse . . .
• USPTO issues about 4500 utility
patents per week – there are now over
8 million U.S. patents
• Heads-up . . . be aware . . . . !
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Copyright © 2010 Brooks Kushman P.C.

11. What Can Be Patented - Patentable Subject
Matter - Examples
• Medical devices
– A catheter
• Process
– A method for using a catheter
• Chemical composition
– A drug
• Useful improvements
– You name them!
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Copyright © 2010 Brooks Kushman P.C.

12. What Does A Patent Look Like ?
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Copyright © 2010 Brooks Kushman P.C.

13. Judging A Book By Its Cover . . .
• US Patent 7,641,682
• Issued January 5, 2010
• Scope - defined by its claims
• Owner
• Inventors
– One inventor is named in over 30 US
patents
• Why so many, one wonders . . . .?
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Copyright © 2010 Brooks Kushman P.C.

14. Why Seek A Patent?
• Recognition
• Reward - $$$
• Acquire rights to
– Exclude others
– Sell the patent outright
– Grant a license in return for monies
(royalties) paid to you
– Settle a dispute: a bargaining chip
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Copyright © 2010 Brooks Kushman P.C.

15. Policy Behind Patents – US Const. Art I, Sec. 8
– “. . . promote the progress of science
– . . . by securing for limited times
– . . . to inventors
– . . . the exclusive right
– . . . to their discoveries . . . “
• The bargain
– You disclose your invention to Uncle Sam . . .
– Uncle Sam grants you a period of exclusivity
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Copyright © 2010 Brooks Kushman P.C.

16. Main Types Of Utility Patent Applications
• Provisional
• Non provisional
– Original
– Continuation
– Continuation-in-Part
• Secret until published 18 months after
filing
– Can withdraw from publication
– But no foreign protection
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Copyright © 2010 Brooks Kushman P.C.

17. Prior Art
• If an invention is described in the “prior art”,
no valid patent may issue
• Prior art is all info available to the public in
any form before a given date that might be
relevant to a patent’s claims of originality
• Consider your own prior art
– Beware of premature disclosure
• Speeches, published papers, sale, use, etc
• Don't shoot yourself in the foot !
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Copyright © 2010 Brooks Kushman P.C.

18. Nuts & Bolts - How Do I Get A Patent - What Can I
Do Then?
• Let’s break it up into two periods . .
– Idea (invention) conception to patent
issuance
– Issuance to enforcement
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Copyright © 2010 Brooks Kushman P.C.

19. Conception To Issuance
• Birth of the invention – Conception
– “[T]he formation in the mind of the inventor of a
definite and permanent idea of the complete and
operative invention as it is to be applied in
practice . . ."
– "[C]onception is established when the invention is
made sufficiently clear to enable one skilled in the
art to reduce it to practice without extensive
experimentation or inventive skill. . ."
• Disclosure of the invention is evidence of
conception: what & when
– To others - in confidence !
– To patent counsel
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Copyright © 2010 Brooks Kushman P.C.

20. Patent Searches
• Types
– Novelty: is my invention new (define your niche)?
– Infringement: is my patent infringed by someone else?
– Freedom to practice: can I make, use or sell without
infringing the patents of others?
• Why search?
– Know the mines in the minefield!
– Formulate design-around strategies if needed
– Prepare for meetings with investors
• Timing – ideally, not just once – periodically watch
• Cost
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Copyright © 2010 Brooks Kushman P.C.

21. Anatomy of a Patent Application
• Prior art & unsolved problems
• Summary of Invention & how it solves
them
• Drawings
• Claims
– Avg claims per patent = 15 - 20
• Costs
– Attorney (scrivener)
– Patent draftsman (drawings)
– U.S.P.T.O (filing, issue & maintenance)
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Copyright © 2010 Brooks Kushman P.C.

22. When To File The Patent Application
– The new America Invents Act
• Be the first inventor to file
• Contrast: the first to invent gets
the valid patent
– The 1 year US grace period
• Absolute novelty requirement
elsewhere
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Copyright © 2010 Brooks Kushman P.C.

23. Duty Of Candor
• “Each individual associated with [filing & prosecuting
a patent application] has a duty of candor and good
faith in dealing with the USPTO . . . to disclose . . .
all information known to that individual to be material
to patentability“
• Inequitable conduct arises if the information was
material to patentability & withheld with an intent to
deceive the USPTO
• Examples
– Prior use, sale, disclosure, derivation (copying),
known prior art (omitted or mischaracterized)
• Adverse consequences: patent is unenforceable
• Practice tip: be up-front with patent counsel &
USPTO!
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Copyright © 2010 Brooks Kushman P.C.

24. PTO Examination Of The Application
• The Examiner considers compliance with these requirements
• Written description
• Enablement
• Best mode
– Novelty: he does his own search
– Non obviousness
• More than a trivial advance
• Sequence: Application; Office Action; Amendment; Final OA;
RCE
– Avg actions per disposal - 2.5
• Examiner interviews (there are 6865 examiners)
– Telephonic
– In-person
• Average “patent pending” period is 41 months
• Total pending non-provisional utility patent apps = 1.1 million
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Copyright © 2010 Brooks Kushman P.C.

25. Issuance
• Term
– 20 years after filing
• Maintenance Fees
– Due 4, 8, 12 years post-issuance
• Geographic Scope
– US
• Foreign Protection
– Seek within 1 year of US filing
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Copyright © 2010 Brooks Kushman P.C.

26. Issuance To Enforcement - What Can I Do With
My Patent?
• Right to
– Exclude others
• Sell the patent outright
• License
– Others pay you for the right to use your patented
invention
• Cross license to
– acquire something of use
– settle a dispute
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Copyright © 2010 Brooks Kushman P.C.

27. Dealing With A Patent Attorney
• How to select – it’s like choosing a doctor . . .
• Things to ask
– Professional qualifications & affiliations
• Prior litigation and licensing experience?
• Real world business experience?
– Process details
– Timing
– Seek estimate of entire project cost
– Written engagement agreement
– Alternative billing arrangements ?
– Contingent fee representation ?
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Copyright © 2010 Brooks Kushman P.C.

28. Opinion Practice - Types & Timing - Patent Watch
Services
• Novelty
– Is my invention new?
– Seek opinion early
• Consider design-around alternatives
• Infringement (Defensive)
– Will my use infringe another's patent (Freedom to
Practice)?
– Seek opinion before you commit
• Infringement (Offensive)
– Does a competitor infringe my patent?
– Seek opinion early & watch periodically
• Keep eyes open & an ear close to the ground
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Copyright © 2010 Brooks Kushman P.C.

29. Entrepreneurial Considerations
• Define & protect your invention
– Patent search
– File patent application(s)
• Only then might the investor or company take
you seriously
• Prototyping
• Funding
– Valuation
• Business plan
• Exit strategy
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Copyright © 2010 Brooks Kushman P.C.

30. Money - How To Fund The Project
• Funding models
– Pay with your own funds
– Seek an investor
• He provides $$$$
• He receives a piece of the action
• You relinquish at least some control
– Patent attorney contributes services or
money for equity
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Copyright © 2010 Brooks Kushman P.C.

31. Quickening The Investor's Interest
• Non-disclosure (confidentiality) agreements
• Have patent protection in process or in place
• The Pitch
– Timing
• When?
– Content
• Persuasively articulate the unsolved problems in prior
approaches
• Descripe & depict your invention
• Explain how the invention solves un-met needs
• Invite patent counsel to invest . . . ?
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Copyright © 2010 Brooks Kushman P.C.

32. Patent Protection Abroad
• One application for many countries
• Procedure
– Patent Cooperation Treaty (PCT) filing
– Direct national entry
• Cost
• Timing
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Copyright © 2010 Brooks Kushman P.C.

33. Recap - We've Touched On . . .
• Subject matter - what can be patented?
• Patent searching - novelty & infringement
• Types & content of patent applications
• Procedure – patent prosecution - costs & timing
• Enforcement - what can I do with my patent?
• Selecting & dealing with a patent attorney
• Entrepreneurial acts - due diligence
• Foreign filing
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Copyright © 2010 Brooks Kushman P.C.

34. Conclusion
• Have more questions been raised than
answered?
• Can take your questions now or
privately later
• Thank you for participating . . .!
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Copyright © 2010 Brooks Kushman P.C.

35. William G. Abbatt
1000 Town Center, 22nd Floor
Southfield, Michigan 48075
Phone: 248.358.4400
wabbatt@brookskushman.com
Copyright © 2010 Brooks Kushman P.C.

36. Four Major Areas of
Intellectual Property Law
• Trademark law, which protects words, names, and
symbols used by manufacturers and businesses to
identify their goods and services.
• Copyright law, which protects original "works of
authorship."
• Patent law, which protects new, useful, and
"nonobvious" inventions and processes.
• Trade secret law, which protects valuable
information not generally known that has been kept
secret by its owner.
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37. Trademark Law
• Trademarks and service marks are
words, names, symbols, or devices
used by manufacturers of goods and
providers of services to identify their
goods and services, and to distinguish
their goods and services from goods
manufactured and sold by others.
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38. Availability of Protection
• Trademark protection is available for
words, names, symbols, or devices that
are capable of distinguishing the
owner's goods or services from the
goods or services of others.
• Cannot be:
- Descriptive
- Likely to cause confusion
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39. Federal and State Law
• For trademarks used in commerce, federal
trademark protection is available under the
federal trademark statute, the Lanham Act.
• Many states have trademark registration
statutes that resemble the Lanham Act, and
all states protect unregistered trademarks
under the common law (non statutory law) of
trademarks.
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40. Obtaining Protection
• Patent and Trademark Office
Registration
• State Agencies
• Common-law trademark
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41. Typical Issues
• Choosing a mark
• International Protection
• Use of trademarks in domain names
and “key word” advertising
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42. Copyright Law
Copyright protection is available for any
“original works of authorship."
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43. Types of Works Protected by
Copyright Law
• Literary works
• Musical works
• Dramatic works
• Pantomimes and choreographic works
• Graphic art
• Motion pictures and other audiovisual works.
• Sound recordings
• Computer code
• Screen shots
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44. Obtaining Copyright
Protection
• Copyright protection arises
automatically when an "original" work of
authorship is "fixed" in a tangible
medium of expression.
• Registration with the Copyright Office is
optional (but you have to register before
you file an infringement suit)
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45. Scope of Protection
• Copyright protects against "copying" the
"expression" in a work as opposed to the idea
of the work. The difference between "idea"
and "expression" is one of the most difficult
concepts in copyright law.
• Protection of the "expression" is not limited to
exact copying. Copyright infringement
extends to new works which are "substantially
similar."
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46. Exceptions to Copyright
Protection
• Fair Use
• Public Domain
• Facts and ideas
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47. Typical Issues
• Using independent contractors to
create works
• Using open source software
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48. Trade Secrets
“Trade secret” means information, including a formula,
pattern, compilation, program, device, method,
technique, or process, that is both of the following:
(i) Derives independent economic value, actual or
potential, from not being generally known to, and not
being readily ascertainable by proper means by, other
persons who can obtain economic value from its
disclosure or use.
(ii) Is the subject of efforts that are reasonable under the
circumstances to maintain its secrecy.
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49. Typical Issues
• Nondisclosure Agreements
- When do you use them?
- How long is the term of nondisclosure?
- Include in employee policies?
• How are you protecting your trade
secret information from disclosure?
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50. Questions?
Jeremy D. Bisdorf
Jaffe Raitt Heuer & Weiss, P.C.
201 S. Main Street, Suite 300
Ann Arbor, MI 48104
(248) 727-1386
jbisdorf@jaffelaw.com
www.jaffelaw.com
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