The document summarizes information about intellectual property protection for a hypothetical startup called Widget 2.0. It discusses the inventors developing a new improved widget and starting a partnership without employees. It then provides an overview of patent, trademark, and copyright protection and costs for Widget 2.0 to consider, including filing a provisional patent application, conducting trademark searches, and obtaining copyright assignments from designers. Budget options ranging from $500 to $15,000 are presented.

1. © 2012 E.H.Schierman
ELIZABETH HERBST SCHIERMAN
US Patent Attorney Based on Presentations for Idaho Technology Council
and Univ. Idaho College of Law, Business Law Ass’n

2.  Widget 2.0:
 Inventors have developed a new and
improved widget 
 Started a partnership
 No employees
 Hired designers for:
 Logo
 Website
 Product packaging
 Expecting big sales
Instructions:
in U.S. and oversees Lots and lots and lots of fine print
The hypothetical is meant to be purely fictitious.
Any similarity to real inventions, businesses, etc. is unintended

3.  Inventions
 Article of Manufacture
 Process
 Machine
 Composition of matter
 Ornamental design for
article of manufacture
 Plants
In Widget 2.0 World:
 Patent Types, e.g.: (1) Article – the widget
 Utility (2) Process – method of making
(3) Composition – polymer from
 Design which widget is made
 Plant

4.  Symbols indicating
source,
origin,
sponsorship, or
endorsement
of goods or services
 E.g.: Product name, business name, logo
 Note: Trademarks often used in domain names
(www.trademark.***), but the domain name is not necessarily a
trademark In Widget 2.0 World:
(1) Plain word mark: WIDGET 2.0
(2) Stylized mark:
Note: www.widget.*** - not a trademark

5.  Work of original authorship fixed in
tangible form
 E.g.: packaging, website design, source code,
photographs, advertisements In Widget 2.0 World:
(1) Product packaging design
(2) Website design
(3) Logo design
Instructions:
Lots and lots and lots of fine print

6.  U.S. Patents:
 Invent
 File Patent Application w/ U.S.P.T.O.
 …wait years (~3 yrs, avg.)…
CREATION OF
 Receive issued U.S. patent
PATENT RIGHTS
 (Pay maintenance fees)
 This is the ONLY path to establishing patent rights for an invention

7.  Trademarks:
POTENTIAL
 Use in commerce in distinctive CREATION OF
manner COMMON LAW
 Optionally… TRADEMARK RIGHTS
 File Trademark Application (before or after starting use)
 w/ State CREATION OF
REGISTERED
 w/ U.S.P.T.O.
TRADEMARK
 …wait months (~11 mos., avg.)… RIGHTS
 Receive Trademark Registration
 (Renew Registration every 5-10 years)

8.  Copyrights:
 Fix creative work in tangible form
 File Copyright Application
w/ U.S. Copyright Office CREATION OF
COPYRIGHT RIGHTS
 …wait a few months
(2.5 – 6.5 mos., avg.)
CREATION OF
 Receive Registration Certificate
ABILITY TO SUE FOR
COPYRIGHT
INFRINGEMENT
Note: Registration is not a prerequisite to having copyright
rights, but it is prerequisite to take legal action against an
infringer.

9.  (Utility) Patents:
 Rights: Exclusive right, in the U.S. to:
 Make,
 Use,
 Sell,
 Offer to sell, and
 Import
the patented invention as claimed
 Duration: 20 years from earliest filing date (except provisional
filing date)

10.  (Utility) Patents:
 Value of Formal Protection:
 ONLY means to acquire patent rights &
stop others from making/using/ selling/importing the patented
invention
 Can stop patent infringement
 Something to license – get royalties?
 Something to assign – sell business?
 Collateral for loans/investments – build business?
 Clarify ownership

11.  Trademarks:
 Rights: Exclusive right, within area*,
to stop junior users from adopting or using marks likely to cause
confusion
 Common law: *area = area of actual use
 State Registration: *area = all of State
 Federal Registration: *area = all of U.S.
 Duration – For as long as it is used (registrations maintained)

12.  Trademarks:
 Values of Formal Protection:
 Expands constructive area of use – broader trademark rights
 Avoids conflict? – easier for others to discover your rights
 Something to license – start franchises?
 Something to assign – sell business?
 Clarifies ownership
 Easier to stop cyber squatters?

13.  Copyrights:
 Rights: Sole right to
 Reproduce;
 Adapt to create derivative works;
 Distribute copies by sale, rental, lease, lending;
 Perform/display publicly
 Duration:
 Generally: Life of author + 70 years
 Work Made for Hire: Earlier of 120 yrs after creation or 95 yrs after
publication
 Values:
 Can stop copyright infringers

14.  Copyrights:
 Values:
 Statutory damages ($750-$150,000)
… if copyright registered w/i 3 mos. of publication or before
infringement begins
 Required before lawsuit to stop copyright infringer
 Clarifies ownership In Widget 2.0 World:
 Something to license/assign Important – because the
hired designers (independent
 Eases licensing? contractors) may own the
copyright rights absent an
assignment to the business.

15.  U.S. Utility Patents:
 Application Preparation:
 ~$2,000-$15,000+
 Filing Fees:
 Nonprovisional: $1,260 ($630 s.e.)
 (or, 1st, Provisional: $250 ($125))
 Prosecution: ~ $2,000-$15,000+
 Issue Fees: ~$1,770 ($885)
 Maintenance Fees: ~$1,130 ($565);
~$2,850 ($1,425); ~$4,730 ($2,365)
 TOTAL – over period of ~ 20 years
~$18,000 ($12,000) – $35,000 ($30,000)

16.  Utility Patent – Avg. Complexity
Start with Nonprovisional
$12,000
Nonp. Prep
$10,000
& Filing
Large Entity
Small Entity
Cost Incurred
$8,000
Maintenance Fees
$6,000 Totals over 20 year period:
Prosecution to ~ $27,000 large entity
$4,000 Allowance ~ $17,000 small entity
$2,000
$0
0 2 4 6 8 10 12 14 16 18 20
Time (years)

17.  Utility Patent – Avg. Complexity
Start with Provisional
$12,000
Prov. App. Prep & Filing
$10,000
Nonprov. App. Prep & Filing
Cost Incurred
$8,000 Large Entity
Maintenance Fees
Small Entity
$6,000
Totals over 21 year period:
Prosecution to ~ $30,000 large entity
$4,000
Allowance ~ $18,000 small entity
$2,000
$-
0 2 4 6 8 10 12 14 16 18 20
Time (years)

18.  Trademarks:
 Common Law: Free
 State Registration:
 ID Sec’y State Fees: $30
 Prep. Cost: ~$200-$500
 Renewal: $30 every 10 years
 Federal Registration:
 USPTO Fees: $275-$375
 Prep. Cost: ~$200-$500
 Prosecution: ~$200-$500
 Renewal: ~$300-$500 @ 5 years and every 10 years thereafter

19.  Copyrights
 Initial Creation: Free
 Registration:
 Application Fees: $35-$65
 Maintenance: $0

20.  To File Patent Application:
 U.S. Patent Protection: 1 year from
1st public disclosure* – not extendable
 *may include sales, offers for sale, public
use, publications, presentations, non-confidential
discussions, etc.
 U.S. Patent System changing in March 2013!!
 1st Inventor to File Application
 No more 1 year grace period on public use, offers for sale, or
otherwise making invention available to public ??
 Most other countries: No grace period;
Barred from patent if application not filed
before public disclosure

21.  To File Trademark Application:
 None – as long as trademark is in use

22.  To File Copyright Application:
 Generally, none until copyright expires (decades)
 Generally - Life of author + 70 years
 Work Made for Hire: Earlier of 120 yrs after creation or 95 yrs
after publication
 However, to get statutory damages –
3 months from publication or before infringement begins

23.  Considerations:
 Does business’s success rely upon any of:
 Unique product/services?
 Good reputation in a highly-competitive market?
 Selling easily-copied creative work?
 Is the IP the business uses owned by someone else
(e.g., employees, independent contractors)?
 Is the business going to grow into other markets, states, countries?
 Will the business be sold or franchised?
 Does the business want to leverage its assets
for funding?

24.  Prioritize Patent Protection as High if:
 Unique product (or method/composition/etc.)
is an important asset
 Someone with skill in the field of art could
copy the product (or method/composition)
 Competition likely to grow or copy upon examining the product (or
method/composition)
 There is even a slight possibility that the business may want patent
protection
 (Because patent rights may be forever lost if the
business/inventor waits too long to file
a patent application)

25.  Prioritize Trademark Protection as High if:
 Reputation is principle selling point
 Market is highly competitive
 Trademark (business name, product name, logo, etc.)
may be something that a competitor might think of on its own
 Business wants to stop others from registering website addresses
(domain names) using the trademark
 Business wants to franchise or license others to use the trademark
 Business knows of another who started using a similar trademark
after business adopted its trademark

26.  Prioritize Copyright Protection as High if:
 Profits rely upon sales or licensing of creative work
 Business sells a software product and wants to stop others from
copying the code
 Business knows of copying of its creative work by another and the
copying is hurting the business

27. Instructions:
Lots and lots and lots of fine print
 Widget 2.0 Hypothetical:
 With $15,000 budget:
1) Patent search online - $0
2) Nonprov. Patent App. Prep w/ Search - $10,000
-Widget article; Method of making; & Composition
3) Nonprov. Filing: - $630
4) Trademark Search for WIDGET 2.0 - $800
5) File Trademark App. for WIDGET 2.0 - $850
6) Get design copyrights assignments from designers
& register copyrights - $600
TOTAL: $12,880
 Start saving for prosecution of trademark application in ~6 mos. &
patent application in ~2+ yrs

28. Instructions:
Lots and lots and lots of fine print
 Widget 2.0 Hypothetical:
 With $5,000 budget:
1) Patent search online - $0
2) Prov. Patent App. Prep w/ Search - $3,875
3) Prov. Filing - $125
4) Trademark search for WIDGET 2.0 - $800
5) Get copyrights in logo design, website design, and
product packaging assigned from designers - $200
TOTAL: $5,000
 Start saving for nonprov. patent app. costs w/i 6 mos.-1 yr. & for
filing federal trademark application

29. Instructions:
Lots and lots and lots of fine print
 Widget 2.0 Hypothetical:
 With $500 budget:
1) Patent search online - $0
2) Independent Prov. Filing - $125
3) Trademark search online - $0
4) Get copyrights in logo design, website design, and
product packaging assigned from designers - $200
TOTAL: $325
 Start saving for nonprov. patent app. costs w/i 6 mos.-1 yr. & for
filing federal trademark application

30. Instructions:
Lots and lots and lots of fine print
 Find reliable guidance early!
 Don’t delay in creating an IP Protection Plan
 There is more than one type of IP protection
 Budget for an on-going IP protection process
 A business’s time and effort can save it money if it:
 Trains employees/contractors to keep good records
 Provides its IP att’y with all information without delay
 Responds on time to the Patent/Trademark/Copyright Office
 Quality counts! Get it right the first time!
 Mistakes cost money and can mean
permanent loss of rights

31. Find me on:
LinkedIn: Twitter:
www.linkedin.com/in/EHSchierman @EHSchierman
Elizabeth Herbst Schierman
US Patent Attorney
The information in this presentation is of a general nature. It is not directed to any specific circumstance
and should not be taken as legal advice. © 2012 E.H.Schierman