Intellectual Property 101

INTELLECTUAL PROPERTY 101

INTELLECTUAL PROPERTY 101Sponsored by SmartUp Presented By Yuri L. Eliezer, Esq.Intellectual Property Attorney

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About MeGeorgia Tech Electrical EngineerGeorgia State LawyerRegistered Patent AttorneyEntrepreneur:In Practice since 2005Co-Founded SmartUpPartner at FOUNDERS LEGAL (Bekiares Eliezer LLP)

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How This Presentation May Help YouYou Have Rights! Use them or lose them! In todays economy, intangible assets constitute nearly 80% of corporate value.Investors look for Intellectual PropertyCompetitors look for Intellectual PropertyYour Goal:Identify how your assets can be securedLeverage Intellectual Property Law to secure those assetsThink BIG!May not seem important to you today, but you need to take the right steps today!

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Overview of Two-Day WorkshopIP 101:Patents Trademarks Copyrights - Trade SecretsSoftware What Protection is available?Steps to take in order to Secure Your IPTiming Deadlines - FormalitiesSharing your IP RightsPartners - Joint-Ownership LicensingNDAs

FEDERAL LAW (MORE PROTECTION THAN STATE LAW)PATENT LAWProtection for your Innovation TRADEMARK LAWProtection for your Brand and ReputationCOPYRIGHT LAWProtection of your Artistic Works and AuthorshipTRADE SECRET LAWProtection for your Secrets

Federal Jurisdiction:

Are there any lawyers in the house?

Contractual BenefitsBeyond Civil RemediesCriminal PenaltiesMore Leverage and Enforceability to Your Agreements5

The Fruits of Your GeniusBreaking it down into CategoriesIdeas and Inventions(Patents)Artistic Works(Copyrights)Brand and Reputation(Trademarks)Confidential Information(Trade Secrets)

Time and Money developing your business model, your brand, your products, your designs, your creationsNow Prevent others from benefiting from your hard work.

Copyright:Somehow software made it in to this category.

Trademarks:Source IdentifierNot just Names, Logos, Slogans - Designs, SoundsProtects Company's from leaching of the Reputation Built by your Company

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What Type of IP Protection?

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Trademark Basics

Add: Class Distinction

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What Is A Trademark?A source identifier that indicates that this product was made by you.Anything a businesses uses to distinguish its goods from those of another:Name / Logo / SloganPackagingDesignSoundScentConsumers use trade symbols to identify goods and services and the attributes that go along with them.

9Quality Control! Your Goods = Your Quality = Every time.

Why do we have Trademark Law?Quality ControlProtection from Consumer ConfusionProtection from Unfair Competition

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Trademark BasicsThe more distinctive a mark, the greater protection provided under the law. FandangoMarks that must acquire secondary meaning:Descriptive marks PIZZA RESTAURANTGeographic marks NEW YORK PIZZAGeneric marks Not protectable under trademark law they describe the basic nature of the good or service, e.g. Apple Co. for a company selling apples.

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Trademark BasicsTrademarks last the lifetime of the product/service...But Trademarks can be lost If not enforced Government Gives you a Badge, Use it or Lose it!If they become generic by improper useA [your trademark here] brand [product or service]Famous Generic Trademarks Allen wrench, aspirin, bikini, formica, frisbie, cola, granola, hoagie, dry ice, windsurfer, windbreaker, rollerblades (almost), white-out, Zamboni, zipper.Find more Generics at www.answers.com/topic/genericized-trademark.

12Trademark is a Badge to become an enforcer. You must enforce it yourself! If you run into problems, the Judicial system will support you only if youve been showing a consistent pattern of enforcenemnt.

Typical Trademark MistakesPicking a bad mark and sticking with itSearches should always be done prior to selecting a mark.Your trademark need not, and probably should not, be your business name.Domain name issues!Waiting to File Federal RegistrationLoss of rights if someone files before youWaiting to Enforce your TM rightsFast enforcement saves money (infringer has less money invested so more likely to adopt different mark) and prevents loss of rights from non-enforcementCan put Rights on Hold 1(B) Filing

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Patent Basics

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Types of Patents

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Requirements for PatentabilityTo be patentable, an invention must be:Useful (35 U.S.C. 101)New (35 U.S.C. 102)Non-Obvious (35 U.S.C. 103)Must be the First to File!

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Utility Patents What is Patentable?Any new and useful:process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.20 Year Term!Gives you a long time to enforce!Put Competitors on Notice, Enforce when you have the money!

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Design Patents What is Patentable?Covers ornamental features on an article of manufactureSubstantial overlap with copyright (sculpture), trademark (e.g., logos in soles of shoes) and trade dress (e.g., Coca-Cola fluted bottle)14 year term

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What is Not Patentable?Abstract Ideas/Mathematical Algorithms in and of themselves, not a thingNatural Occurring Phenomena Laws of NatureYou must know how to MAKE and USE your invention, even if its only a conceptual understanding.

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A Patent is a Right to Exclude Others!

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Typical Patent MistakesPublic Disclosure12 months in USNo grace period in many other Countries

Waiting to Get Patent ProtectionMust be the First to File! Up-Hill Battle if you are beat to the patent-filing!

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Copyrights BasicsEmphasize non-functional

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What Qualifies for Copyright Protection?Literature - Musical CompositionsSound RecordingsWhats the difference between Recordings and Musical Composition?Pictures / Paintings / Photographs / SculpturesBut not the Subject Matter therein, only the artistic renditionMotion Pictures Choreography - ArchitectureWeird Ones:Vessel HullsIntegrated CircuitrySoftware Literary Work?Functional? -> Patents!

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What does Copyright Law Protect Against?A Copyright is a property right in an original work of authorship that is fixed in a tangible medium.Protects you from unauthorized:

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COPYRIGHTSA Copyright is a property right in an original work of authorship that is fixed in a tangible medium.

Duration:Life of the author plus 70/95/120 years (a rats nest of exceptions)

Protect Non-Functional ArticlesIn general, Internationally RecognizedRegistration can be Retroactive

Our laws have changed throughout time Walk Disneys Lobby of Congress. Depends on the nature of the author (person or entity)Depends on the year the work was created (28 years, then renew)

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Copyright ConsiderationsIdeas and Concepts are not CopyrightableFill-in-the-Blank Forms Not CopyrightableCharacters, Themes, Plots do qualifyDerivative Works require Licensing!Transformative works do not require Licensing.Work-For-Hire -> Rights must still be transferred.Joint Authorship leads to disputes.Transfer rights to a single entity.

Ideas are not copyrightable, but actual characters, plots, themes, environments CAN be copyrightable.Sherlock HolmesJames BondBat Man

Derivative Works require PermissionSequel to Sherlock Holmes, using the same CharactersRoyalties

Transformative Works do not require PermissionMusic remakes, you can still recognize the song, but overall theme is new

VERY FINE LINE, UNCLEAR

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Trade Secret Basics

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What is a Trade Secret?Information, including a formula, pattern, compilation, program, device, method, technique or process that: (1) derives independent economic value, actual or potential, from not being generally known to, and not being easily ascertainable by proper means, by other persons who can obtain economic value from its disclosure or use, and (2) is the subject of efforts that are reasonable under circumstances to maintain its secrecy.

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Trade Secret ExamplesA proprietary blend of chemicals, secret ingredient (e.g. formula for Coca-Cola).A manufacturing process or know-how.A customer list.A supplier list.Inside business and financial information - Marketing plan, customer data, budgets, profit margins, forecasts, internal software, etc.

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Trade Secret BasicsMust be treated as a secret.Must be generally unknown to competitors.If stolen, you can sue for damagesDifficult cases to win without prior planningA lawsuit cant put the genie back into the bottle

35There are special ways to handle trade secretsEmployment agreementsNon-disclosure agreementsRules of accessLogs of access

LETS TEST YOUR SKILLSPerson With Most Correct Answer wins an Arduino









Transformative v. Derivative44








We were the first 1 button interface!48




What type of IP Protection?



Traffic Monitoring



Automated Vehicle




(TELEPORTATION MACHINE)



Heat-Seeking Missile

Reverse Engineer!Ease of Detection!61


What Do All of These Have in Common?ASPRINESCALATORDRY ICEHEROINVIDEOTAPETRAMPOLINE

The Leahy-Smith America Invents ActBefore First Inventor to Invent gets PatentNow First Inventor to File gets PatentPros:Places laws in conformity with International StandardCons:No More Poor Mans PatentRace to the Patent Office!Benefits larger CorporationsTwo RemediesImportance of Provisional PatentsMicro-entity Status

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Provisional PatentSaves Your Spot in Line for a Period of 1 YearLets you claim Patent-PendingMust be followed with a non-provisional patent application within 1 year

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Joint Inventorship / Joint AuthorshipEach Inventor/Author owns 100% of the rights!Prone to disputes!Solution:Form an entity with your partnersAssign the IP rights to the entityRights governed by the entity, not individualsPartnership Agreement should account for IP rights upon dissolution

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Common Misconceptions of IP LawYoure Automatically ProtectedSecuring your IP requires affirmative action and is time sensitive.You Exclusively Own the IP Rights to Employee and Sub-Contractor ProjectsIP rights must be transferred, in writing, to the Company.IP = Easy MoneyProperly managing your IP Portfolio is essential.Cyber Squatters

A.You have Rights! Use them or Lose them!Rights to your brand can be lost even stolenRights to your invention can be given away to the public, competitors, contractors, employees

B.Work-for-Hire is not always sufficient.Partners joint-ownership biggest disputes!

C.Proper Applying for Rights is required.Proper Entity Formation, organization, Structure.Proper IP Portfolio Proper Licensing Schemes

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My Contact Info

Yuri Eliezer, Esq. [email protected]@Smartup_

ATLANTA TECH VILLAGE Suite 5553423 Piedmont Road, NEAtlanta, GA 30305

To schedule a consultation with me please visit SmartupLegal.com and click consult!

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Date post:	12-Apr-2017
Category:	Law
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