SECURING, ENFORCING, AND AVOIDING …...copyrights, trade secrets, and unfair competition, and is...

SECURING, ENFORCING, AND AVOIDING INFRINGEMENT OFU.S., INTERNATIONAL, AND FOREIGN

PATENTS, TRADEMARKS, AND COPYRIGHTS;SECURING TRADE SECRETS; AND AVOIDING UNFAIR COMPETITION

This paper contains general information about patents, trademarks,copyrights, trade secrets, and unfair competition, and is intended to make thereader aware of issues in intellectual property law. Because there are exceptionsto many, if not all, of the rules mentioned in this paper, and because laws and ruleschange frequently, the reader should discuss his particular situation with a patentattorney before making any decision regarding his intellectual property rights andresponsibilities.

Charles C. Garvey, Jr., Patent Attorney**Gregory C. Smith, Patent Attorney*

Seth M. Nehrbass, Patent AttorneyVanessa M. D'Souza, Patent AttorneyJulia M. FitzPatrick, Patent Attorney**

Mackenzie D. Rodríguez, Patent AttorneyJulie Rabalais Chauvin, Patent Attorney

Fabian M. Nehrbass, Patent Attorney

GARVEY, SMITH & NEHRBASS, PATENT ATTORNEYS, L.L.C.Three Lakeway Center, Suite 32903838 North Causeway Boulevard

Metairie, LA 70002; U.S.A.Tel.: 504-835-2000; Fax: 504-835-2070

e-mail: [email protected] www.neworleanspatents.com

Northshore Office:No. 7 Boston Commons832 East Boston Street

Covington, Louisiana 70433, U.S.A.Tel: (985) 635-6892; Fax: (985) 635-6972

*Northshore office**Northshore office also

US patent law has recently changed. Please check with us about first-inventor-to-file changes and the importance of filing patent applications early.

© 1998-2018 Garvey, Smith & Nehrbass, Patent Attorneys, L.L.C.

mailto:[email protected]

http://www.neworleanspatents.com

PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSCAVEAT: This paper contains general information about patents, trademarks, copyrights, and trade secrets,and is intended to make the reader aware of issues in intellectual property law. Because there are exceptionsto many, if not all, of the rules mentioned in this paper, the reader should discuss his or her particularsituation with a patent attorney before making any decision regarding his or her intellectual property rights

5 and responsibilities.CONTENTS:

Patents. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21. Deadline for Filing a U.S. Patent Application. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22. Utility patents. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2(a) Ownership, Assignment, and Licensing. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 310(b) Disclosure to the Patent Attorney. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3(c) Patentability Search and requirements for patentability. . . . . . . . . . . . . . . . . . 4(d) Patent Application. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7(e) Duty of Disclosure. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9(f) Publication of Applications and Provisional Rights. . . . . . . . . . . . . . . . . . . . . 915(g) Claims. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10(h) Reissue Patents (Broadening Claims). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10(i) Patent Prosecution. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11(j) Patent Issue. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12(k) Small Entities and Micro Entities. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1220(l) Patent Maintenance Fees. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12(m) Representation of Inventors. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12(n) Patent Enforcement. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13

(1) Marking. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13(2) Infringement and Infringers. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1325(3) Exception to Infringement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14(4) Remedies. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14(5) Time Limit for Bringing Suit. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14(6) False Marking. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14(7) Avoiding Infringement. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1430

(o) Foreign Patents. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15(1) Filing Deadline. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15(2) PCT Patent Applications. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15

(3) Publication of Applications and Provisional Rights. . . . . . . . . . . . . . . . . 16(4) Request for Examination.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1635(5) Costs of Obtaining Foreign Patents, including Annuities.. . . . . . . . . . . . 16(6) Patentable Subject Matter and Obviousness Determinations. . . . . . . . . . 17(7) Oppositions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17(8) Revalidation Patents. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17(9) Marking. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1740

(p) Provisional Patent Applications.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17(q) Invention Marketing Companies. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18(r) Freedom-to-operate search . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 193. Design patents.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 204. Plant patents. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2045Trademarks. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20Copyrights. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26Trade Secrets. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28Unfair Competition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30

© 1998-2018 GARVEY, SMITH & NEHRBASS, PATENT ATTORNEYS, L.L.C. (504) 835-2000; fax (504) 835-2070, WWW.PATENTS.GSPERMISSION IS HEREBY GRANTED TO MAKE UNALTERED COPIES OF THIS PAPER, PROVIDED THIS COPYRIGHT NOTICE APPEAR THEREON.

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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSMiscellaneous. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30Intellectual Property Inventory. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32

INTRODUCTION:5 A U.S. patent gives one the right to exclude others from making, using, offering to sell, or selling

the patented invention in the United States, or importing the patented invention into the United States, fora limited amount of time. A trademark is a word, name, phrase, design, smell, or sound used to distinguishone's goods or services from those of one's competitors. A copyright protects architectural, artistic, musical,and literary works, including computer software, against copying. A trade secret is information that derives

10 independent economic value from not being generally known to and not being readily ascertainable byproper means by other persons who can obtain economic value from its disclosure or use, and is the subjectof efforts that are reasonable under the circumstances to maintain its secrecy. Unfair competition includesfalse advertising, dilution of a famous trademark, conspiracy to restrain trade, and unfair methods ofcompetition and unfair or deceptive acts or practices in the conduct of any trade or commerce.

15 In general, a person or company should get all other persons and companies who might developintellectual property of any kind on behalf of that person or company to sign an agreement to assign allintellectual property created for the person or company to the person or company. We can prepare such anagreement for you. A. PATENTS

20 There are three kinds of U.S. Patents:Utility patents (the most common, there are over eight million);Design patents (over seven hundred thousand); andPlant patents (over twenty-five thousand).

1. Deadline for Filing a U.S. Patent Application:25 In general, a U.S. patent application should be filed as soon as possible after an invention is made.

A U.S. patent application should be filed before any non-confidential disclosure of the invention is made.If foreign patent protection is desired, a U.S. patent application must be filed before any non-confidentialdisclosure of the invention is made. However, if one is not interested in foreign patents, there is a one-yeargrace period for filing a U.S. patent application on an invention measured from the time that the invention

30 is first put on sale, put in public use, is described in a printed publication, or is disclosed in any manner non-confidentially, anywhere in the world, but only if the activity involves the inventor filing the patentapplication or someone who learned the invention from him (if done by anyone else, any of these activitiesprecludes a valid patent issuing to the filer of the patent application). If the U.S. patent application is notfiled within the one-year grace period, it will not be possible to obtain a valid U.S. patent on the invention.

35 A U.S. patent application can claim priority of a patent application filed in the U.S. or anothercountry if filed within 12 months of the filing date of the earlier application (or up to 2 months later if thedelay in filing was unintentional).

Also, a U.S. patent application can claim priority of a prior U.S. patent application if the secondapplication is filed while the first is still pending, and a priority claim is made within 16 months of filing

40 of the first application or four months of filing of the second application, whichever is later. The priorityclaim can be made later upon payment of a surcharge.2. Utility Patents

A utility patent gives one the right to exclude others from making, using, offering to sell, or sellingin the United States or importing into the United States "any new and useful process, machine, manufacture,

45 or composition of matter, or any new and useful improvement thereof". 35 U.S.C. §§ 101, 271. A U.S.patent has a term beginning on the date the patent issues and ending 20 years from the date of filing of thepatent application (or of the first parent application, if the patent issues on a continuation or continuation-in-part application). The term of U.S. patents which were in force on June 8, 1995 or which issue after June8, 1995 on patent applications filed prior to June 8, 1995 is 17 years from date of issue or 20 years from date


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSof filing, whichever is longer. 35 U.S.C. § 154.

This section contains an overview of the process of patenting an invention, beginning with the initialdisclosure document.

Obtaining a utility patent is a time consuming process. Most patent applications issue as patents 1½5 - 3 years after filing. Obtaining a patent can be relatively costly. The expenditure of time and money should

be measured as an investment against the commercial value of the invention. The inventor will only profitif the patent claims adequately cover a commercially acceptable product and the product is successfullymarketed. Typically, the obtaining of a patent alone will not guarantee financial rewards. The costof attempting to obtain a patent is basically a function of the complexity of the invention, the closeness of

10 the prior art, and the nature of "actions" issued by the Patent Examiner. Not all patent applicationsultimately issue as patents.

(a) Ownership, Assignment, and Licensing(1) Employment Contracts and Shop Rights May Limit One's Patent Rights

Many companies now require their employees to sign employment contracts which include a clause15 which provides that all inventions made by the employee and related to the business of the company must

be disclosed to the company and belong to the company. If that provision is valid and enforceable, and theinvention falls within the scope of the provision, the invention may belong to the employer. See, e.g.,Shamrock Technologies Inc. v. Medical Sterilization Inc., 14 U.S.P.Q.2d 1728 (Fed. Cir. 1990).

Under a doctrine known as "shop rights", if an invention is made by an employee with a company's20 tools or materials on company time, the company may be able to make it and use it for its own benefit

without compensating the employee. United States v. Dubalier Condenser Corp., 289 U.S. 178, 188, 17U.S.P.Q. 154, 158 (1933).

Before one goes to the time, trouble, and expense of filing a patent application, one should have apatent attorney review the situation and any employment agreement to make sure that the inventor, and not

25 the inventor’s employer, owns the invention and that the employer cannot make the invention without theemployee's permission. In appropriate circumstances, it may be possible to obtain a waiver from theemployer.

(2) InventorshipIt is sometimes difficult to determine who should be named as inventors in a patent application. If

30 all potential inventors work for the same company and have an obligation to assign to the same company,this is generally not a difficult problem, as any errors can relatively easily be corrected. When dealing withinventions which might include input from employees from more than one company or from otherwiseunrelated individuals, it is wise to have a written agreement before any inventing occurs as to who will ownany inventions. For example, two companies may jointly develop an invention, but agree beforehand that

35 one will own the invention, or that each will have the right to exploit the invention in a differentgeographical area or a different market. If an oilfield service company would like to develop a quick-connect coupling for use with wireline tools with a machine shop, the oilfield service company mightrequire the machine shop to assign any inventive input it might make to the service company, or the twocompanies might agree that the service company would have exclusive rights to the invention in the oilfield,

40 and that the machine shop would have all other markets (such as connections for pneumatic power tools).Keep in mind that, in the U.S., any co-owner of a patent has the right to exploit the invention without

accounting to the other co-owners. Thus, if in the example given in the previous paragraph, the machineshop's employees made inventive input to the quick-connect coupling, absent a written agreement themachine shop could sell the coupling to competitors of the service company. Also, a co-owner of a patent

45 can license patent rights to others without sharing the license fees with his co-owners.(b) Disclosure to the Patent AttorneyAfter the inventor conceives an invention, a written disclosure should be prepared for the first

meeting with the patent attorney. The disclosure document ideally involves both drawings and a writtendescription which incorporates a parts list. Photographs of any prototype or working model can be attached


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSto the disclosure document. Explain the advantages of the invention over prior similar devices or methods.A suggested disclosure form is attached at the end of this paper. Ideally, the disclosure to the patentattorney would be sufficient to file as a provisional patent application (see Section 1(p) below).

Inventors, especially those whose job duties require them to keep track of and report inventions5 (also, inventions made with federal funds must usually be reported to the federal government), should keep

a diary in a bound notebook (or on a computer) of their progress, including unsuccessful as well assuccessful attempts (knowledge of what will not work can sometimes be as valuable as knowing what willwork). This information should be made available to the patent attorney before a patentability search isperformed or a patent application is prepared.

10 (c) Patentability Search and requirements for patentabilityAn earlier issued U.S. or foreign patent or published patent application, or an earlier printed

publication, a prior invention, a prior sale, or a prior public use or disclosure can prevent the obtaining ofa patent, or narrow the scope of patent coverage available. Some limits on patentability are contained in35 U.S.C. § 102 and 35 U.S.C. § 103 reproduced below:

15 35 U.S.C. § 102. Conditions for patentability; novelty and loss of right to patent(for U.S. patent applications filed before March 16, 2013) A person shall be entitled to a patent

unless -(a) the invention was known or used by others in this country, or patented or

described in a printed publication in this or a foreign country, before the invention thereof20 by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or aforeign country or in public use or on sale in this country, more than one year prior to thedate of the application for patent in the United States, or

(c) he has abandoned the invention, or25 (d) the invention was first patented or caused to be patented, or was the subject of

an inventor's certificate, by the applicant or his legal representatives or assigns in a foreigncountry prior to the date of the application for patent in this country on an application forpatent or inventor's certificate filed more than twelve months before the filing of theapplication in the United States, or

30 (e) the invention was described in--(1)(A) an application for patent, published pursuant to section 122(b), by another filed in the UnitedStates before the invention by the applicant for patent, except that an international application filedunder the treaty defined in section 351(a) shall have the effect under this subsection of a nationalapplication published under section 122(b) only if the international application designating the

35 United States was published under Article 21(2)(a) of such treaty in the English language; or(B) a patent granted on an application for patent by another filed in the United States before theinvention by the applicant for patent, except that a patent shall not be deemed filed in the UnitedStates for the purposes of this subsection based on the filing of an international application filedunder the treaty defined in section 351(a); or

40 (f) he did not himself invent the subject matter sought to be patented, or(g)(1) during the course of an interference conducted under section 135 or section 291,

another inventor involved therein establishes, to the extent permitted in section 104, that before suchperson's invention thereof the invention was made by such other inventor and not abandoned,suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in

45 this country by another inventor who had not abandoned, suppressed, or concealed it. In determiningpriority of invention under this subsection, there shall be considered not only the respective datesof conception and reduction to practice of the invention, but also the reasonable diligence of onewho was first to conceive and last to reduce to practice, from a time prior to conception by the other.


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSFor US patent applications with an effective filing date after March 15, 2013: § 102. Conditions

for patentability; novelty

(a) Novelty; prior art. A person shall be entitled to a patent unless--

(1) the claimed invention was patented, described in a printed publication, or in public

5 use, on sale, or otherwise available to the public before the effective filing date of the

claimed invention; or

(2) the claimed invention was described in a patent issued under section 151 [35 USCS §

151], or in an application for patent published or deemed published under section 122(b)

[35 USCS § 122(b)], in which the patent or application, as the case may be, names

10 another inventor and was effectively filed before the effective filing date of the claimed

invention.

(b) Exceptions.

(1) Disclosures made 1 year or less before the effective filing date of the claimed

invention. A disclosure made 1 year or less before the effective filing date of a claimed

15 invention shall not be prior art to the claimed invention under subsection (a)(1) if--

(A) the disclosure was made by the inventor or joint inventor or by another who

obtained the subject matter disclosed directly or indirectly from the inventor or a joint

inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed

20 by the inventor or a joint inventor or another who obtained the subject matter disclosed

directly or indirectly from the inventor or a joint inventor.

(2) Disclosures appearing in applications and patents. A disclosure shall not be prior art

to a claimed invention under subsection (a)(2) if--

(A) the subject matter disclosed was obtained directly or indirectly from the inventor

25 or a joint inventor;

(B) the subject matter disclosed had, before such subject matter was effectively filed

under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or

another who obtained the subject matter disclosed directly or indirectly from the inventor

or a joint inventor; or

30 (C) the subject matter disclosed and the claimed invention, not later than the effective

filing date of the claimed invention, were owned by the same person or subject to an

obligation of assignment to the same person.

(c) Common ownership under joint research agreements. Subject matter disclosed and a claimed

invention shall be deemed to have been owned by the same person or subject to an obligation of

35 assignment to the same person in applying the provisions of subsection (b)(2)(C) if--

(1) the subject matter disclosed was developed and the claimed invention was made by,

or on behalf of, 1 or more parties to a joint research agreement that was in effect on or

before the effective filing date of the claimed invention;

(2) the claimed invention was made as a result of activities undertaken within the scope

40 of the joint research agreement; and

(3) the application for patent for the claimed invention discloses or is amended to

disclose the names of the parties to the joint research agreement.


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS (d) Patents and published applications effective as prior art. For purposes of determining whether

a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such

patent or application shall be considered to have been effectively filed, with respect to any

subject matter described in the patent or application--

5 (1) if paragraph (2) does not apply, as of the actual filing date of the patent or the

application for patent; or

(2) if the patent or application for patent is entitled to claim a right of priority under

section 119, 365(a), or 365(b) [35 USCS § 119, 365(a), or 365(b)], or to claim the benefit

of an earlier filing date under section 120, 121, or 365(c) [35 USCS § 120, 121, or

10 365(c)], based upon 1 or more prior filed applications for patent, as of the filing date of

the earliest such application that describes the subject matter.".

35 U.S.C. § 103. Conditions for patentability; nonobvious subject matter

A patent for a claimed invention may not be obtained, notwithstanding that the claimed

15 invention is not identically disclosed as set forth in section 102 [35 USC § 102], if the

differences between the claimed invention and the prior art are such that the claimed invention as

a whole would have been obvious before the effective filing date of the claimed invention to a

person having ordinary skill in the art to which the claimed invention pertains. Patentability shall

not be negated by the manner in which the invention was made.

20 Under 35 U.S.C. Section 102, certain activity, public use, sale, offer of sale or publication can

prevent a patent from being obtained. With the changes to 35 U.S.C. Section 102, for US patent

applications with an effective filing date after March 15, 2013, any such activities will bar a patent if

they have been done prior to the effective filing date of the invention, with a limited exception for

disclosures which can be traced directly or indirectly to the inventor within a year before the effective

25 filing date. Even if obtained, the patent can be declared invalid later by a court of law because of prior

use, sale, offer of sale, or publication. Thus, inventors should file their patent application as soon as

possible and certainly within one year of any activity that might arguably be a bar under 35 U.S.C. § 102

including, for example, sales, offers of sale, quotations, invoices, receipts, drawings or blueprints

distributed to others, sales releases, newspaper articles, bids, displays or shows such as trade shows,

30 demonstrations, test marketing, advertising, or the like. These examples are illustrative. If in doubt,

consult a patent attorney.

A patentability search is designed to obtain copies of the most pertinent patents available. The

preliminary patentability search is only about 80% percent accurate for several reasons. Some prior

publications are not properly classified in the U.S. Patent and Trademark Office; some publications that

35 contain relevant information are not a part of the records of the Patent and Trademark Office. Not all

pending United States patent applications are publicly available. Therefore, there is always the

possibility that another patent will issue later which will have an effect on the patentability of an

invention (see 35 U.S.C. § 102 (reproduced above)). It is difficult for the Patent and Trademark Office

to insure that all of these patents are properly classified for searching. Patentability searches are

40 designed to get as much information as possible for the amount of money involved. It is always possible

that a closer reference could be found by expending a substantially higher amount of money. Typically,

several thousand dollars would be required for a very comprehensive search of all possible art areas.


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSSince this is higher than the usual cost of applying for a patent, the patentability search is generally

restricted to computer searching.

Inventors who wish to do some investigating on their own before paying to have a patentability

search performed by a professional searcher can search on the Internet by visiting the site at

www.freepatentsonline.com (this site is user friendly and allows for one to download the patents in a pdf5

format), or the site at www.uspto.gov (this site has images of all U.S. Patents and the full text of all

U.S. Patents from 1976 through the present) or the site at http://ep.espacenet.com (this site has over 45

million patents from over 70 countries). This is time-consuming, and will not likely tell the inventor

whether the invention might be patentable - it might only let the inventor know that there is a patent

10 exactly like their invention. If the invention is a product, an inventor may want to start the searching at

Amazon.com, then conduct a search of the internet in general, and finally try the patent websites.

Regardless of the results, a patent attorney should still be consulted before a final decision is made on

whether or not to file a patent application. Also, if the search does not reveal any patents which, in the

opinion of the patent attorney, render the invention unpatentable, a search by a professional searcher

15 should be performed before a patent application is prepared.

A patentability search is conducted to give an indication of whether an invention might be

patentable. It is not designed to determine whether practicing an invention might infringe another

patent. To get an indication of whether one can practice an invention without infringing another patent

(or a published patent application), a freedom-to-operate search should be conducted (see Section 1(r)).

20 (d) Patent Application

If the patentability search reveals no reference which exactly discloses or anticipates the

invention, and if the patents disclosed in the search do not overly restrict available patent coverage, the

inventor may desire to pursue a patent. A patent application must be prepared and filed in the U.S.

Patent and Trademark Office. The application usually includes a written description of the invention,

25 one or more sheets of drawings having figures which disclose the invention by showing its component

parts and construction, the government filing fee, and the legal protection sought in the form of one or

more patent claims. The drawings are extremely important, and should accurately show the invention.

Once the application is received and accepted by the Patent and Trademark Office, the Patent and

Trademark Office assigns the patent application a filing date and serial number.

30 Technical requirements of a patent application are set forth in 35 U.S.C. § 112, reproduced

below:

35 U.S.C. § 112. Specification

(a) In General. - The specification shall contain a written description of the invention,

and of the manner and process of making and using it, in such full, clear, concise, and

35 exact terms as to enable any person skilled in the art to which it pertains, or with which it

is most nearly connected, to make and use the same, and shall set forth the best mode

contemplated by the inventor or a joint inventor of carrying out his invention.

(b) Conclusion. - The specification shall conclude with one or more claims particularly pointing

out and distinctly claiming the subject matter which the inventor or a joint inventor regards as

40 his invention.

(c) Form. - A claim may be written in independent or, if the nature of the case admits, in

dependent or multiple dependent form.


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http://www.freepatentsonline.com

http://www.uspto.gov

http://ep.espacenet.com

PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS(d) Reference in Dependent Forms. - Subject to subsection (e), a claim in dependent form

shall contain a reference to a claim previously set forth and then specify a further limitation of

the subject matter claimed. A claim in dependent form shall be construed to incorporate by

reference all the limitations of the claim to which it refers.

5 (e) Reference in Multiple Dependent Form. - A claim in multiple dependent form shall

contain a reference, in the alternative only, to more than one claim previously set forth and then

specify a further limitation of the subject matter claimed. A multiple dependent claim shall not

serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be

construed to incorporate by reference all the limitations of the particular claim in relation to

10 which it is being considered.

(f) Element in Claim for a Combination. - An element in a claim for a combination may be

expressed as a means or step for performing a specified function without the recital of structure,

material, or acts in support thereof, and such claim shall be construed to cover the corresponding

structure, material, or acts described in the specification and equivalents thereof.

15 If the invention has been made, one good way to comply with the requirements of the subsection

(a) of 35 USC Section 112 is to list all parts used in the invention by name, manufacturer, and part

number, then to explain how, if one could improve the invention as much as the inventor contemplates,

one would modify that parts list. The description should be detailed enough to allow one of ordinary

skill in the relevant technology to make the invention without undue experimentation.

20 To allow latitude when claiming the invention, it is useful to include in the patent application

ranges of ingredients, sizes, capacities, or other physical properties of the invention. It may also be

useful to include lower limits and/or upper limits. One may also wish to express relationships between

various elements of the invention. It is useful to include various ranges (such as a preferred range

(broader), a more preferred range (tighter), and a most preferred range (tightest)), so that, if patents are

25 found which indicate that one of the broader ranges is anticipated or obvious, it might be possible to

restrict the claims to one of the tighter ranges and still get a patent on the invention. For example, if the

ideal percentage of element A is 25%, one might disclose that the amount of element A in the invention

is, by weight, 1%-50%, preferably 10%-40%, more preferably 20%-30%, and most preferably about

24%-26%. As another example, one might state that element B is at least twice as long as element C,

30 more preferably at least four times as long, and most preferably at least six times as long. As a third

example, one might state that the resistance of an element is less than 1 million ohms, preferably less

than 500,000 ohms, more preferably less than 250,000 ohms, and most preferably less than 100,000

ohms. Also, one may wish to generalize a bit - instead of merely mentioning that a certain plastic (such

as PVC) could be used to make the invention, one could state that any relatively flexible, non-

35 electrically conductive material could be used, such as flexible, non-electrically conductive plastic, such

as polybutylene or PVC, and preferably PVC. When one describes an element of an invention, one

should think about why that element is made of a certain material, and try to think of other materials

which could work almost as well, and perhaps list them as alternative materials.

An inventor should also disclose to a patent attorney the background of the invention, including

40 the problem that the invention solves, other technologies to which the teachings of the invention might

be applied, how the industry in which the invention is used might change and how the change may affect

the applicability of the invention, and how competitors of the inventor will likely try to copy the

teaching of the invention while attempting to avoid infringement of the claims of the patent application.


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSIn the U.S., one ultimately must choose trade secret protection or patent protection - one cannot

disclose just part of an invention and keep the preferred way to make it a trade secret - the best mode

disclosure requirement of 35 U.S.C. Section 112(a) prohibits this. However, strictly commercial

information (such as which supplier of identical products has the best prices, or how most effectively to

5 market an invention) need not be disclosed in a patent application.

When possible, include S.I. (metric) units as well as English.

(e) Duty of Disclosure

The inventor and others who may benefit from a patent have a duty to tell the Patent and

Trademark Office any information which might affect the patentability of an invention (see 35 U.S.C. §

10 102 and § 103 in part 2(c) above). This duty is spelled out in 37 C.F.R. § 1.56, which reads in part as

follows:

Each individual associated with the filing and prosecution of a patent application has a duty of

candor and good faith in dealing with the Office, which includes a duty to disclose to the Office

all information known to that individual to be material to patentability as defined in this section.

15 The duty to disclose information exists with respect to each pending claim until the claim is

cancelled or withdrawn from consideration, or the application becomes abandoned ... [N]o patent

will be granted on an application in connection with which fraud on the Office was practiced or

attempted or the duty of disclosure was violated through bad faith or intentional misconduct ...

[I]nformation is material to patentability when it is not cumulative to information already of

20 record or being made of record in the application, and

(1) It establishes, by itself or in combination with other information, a prima facie case

of unpatentability of a claim; or

(2) It refutes, or is inconsistent with a position the applicant takes in:

[i] Opposing an argument of unpatentability relied on by the Office[,] or

25 [ii] Asserting an argument of patentability.

A prima facie case of unpatentability is established when the information compels a conclusion

that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard,

giving each term in the claim its broadest reasonable construction consistent with the

specification, and before any consideration is given to evidence which may be submitted in an

30 attempt to establish a contrary conclusion of patentability.

In general, a document disclosing all material information of which an inventor is aware must be

filed (preferably with the application). The inventor should discuss this with a patent attorney before

filing a patent application.

(f) Publication of Applications and Provisional Rights

35 U.S. patent applications are published 18 months from the priority date (usually the U.S. filing

date or the U.S. provisional patent application filing date), unless the patent applicant files a statement

with the patent application that he has not filed and will not file a corresponding patent application in a

country which publishes patent applications. 35 U.S.C. § 122. If the patent applicant files such a

statement, then fails to notify the U.S. Patent and Trademark Office within 45 days of filing in a country

40 which publishes patent applications, the U.S. patent application will become abandoned. 37 C.F.R. §

1.213(c).

Most countries, including the United States, grant provisional rights to patent applications upon

publication of the application, subject to a later grant of a patent on the published patent application.


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSFor infringement of claims which are substantially identical to those in a published U.S. patent

application, the damages are a reasonable royalty. 35 U.S.C. § 154.

Under 37 C.F.R. § 1.11(a), the files of published U.S. patent applications are open to public

inspection. Some U.S. patent applicants who will not file a corresponding patent application in a

5 country which publishes patent applications may choose to keep the invention secret if no patent issues

by filing a non-publication request when filing the U.S. patent application.

Inventors wishing provisional patent rights earlier than 18 months from the priority date can

request that their patent applications be published early.

(g) Claims

10 The claims of a patent define the scope of an invention. There are two types of claims -

independent and dependent. 35 U.S.C. § 112. The independent claims should be broad enough to cover

all variations on the invention without being so broad that they cover devices or products which existed

before the invention or which would have been obvious at the time the invention was made. The

dependent claims add more details to an independent claim, and thus are narrower than an independent

15 claim. They are included in the application so they can be incorporated, if necessary into the

independent claim during prosecution (see next section) to make the independent claim patentable.

After the patent issues, if the independent claim is found to be too broad, the dependent claims may be

narrow enough to be valid.

The independent claims of a patent are very important. In general, in order for one to infringe a

20 utility patent, he must make, use, offer to sell, sell, or import into the U.S. a device or method having

every element of at least one independent claim of the patent.

Sometimes one invention may require more than one independent claim. For example, assume

that the only vehicles having wheels are bicycles and tricycles, and then someone invents an automobile

having four wheels. One independent claim might be:

25 "1. A vehicle having wheels and having a motor connected to the wheels for turning the

wheels."

This claims the motorized aspect of the invention. A second independent claim might be:

"2. A vehicle having four wheels."

This second claim claims the number of wheels that the vehicle has and one would argue to the

30 Examiner that the four wheels provide more stability than a two- or three-wheeled vehicle.

Sometimes the true scope of the invention is not realized by the inventor or the patent attorney

when the patent application is written, and the independent claims may be more narrow than necessary.

Sometimes the independent claims are narrowed during patent prosecution to get them allowed, so that a

costly and time-consuming appeal from the Examiner's decision does not need to be taken. If the

35 application is allowed, the inventor should carefully review the independent claims to insure that they

are sufficiently broad for the inventor's purpose. If they are not, he should consider filing a continuation

application, before the first application issues as a patent, in an attempt to obtain broader independent

claims. Sometimes it is easier to get broader claims in a continuation application after a first patent has

issued than it would have been in the original application.

40 (h) Reissue Patents (Broadening Claims)

If a patent is invalid for, among other things, having claims which are too narrow, it may be

possible to reissue the patent to correct the error. 35 U.S.C. § 252. Applications to reissue a patent with

broader claims must be filed within two years of the issue date of the patent. If an inventor realizes


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSwithin two years that his claims may not be broad enough to cover competing devices, then he should

consult with a patent attorney regarding reissuing the patent.

(i) Patent Prosecution

Once the patent application is filed, several months will probably pass before the U.S. Patent and

5 Trademark Office first acts on the application. There are a number of reasons for this delay in acting

upon the patent application. The delays relate to the fact that the case must be processed through several

offices before it finally reaches an Examiner in the particular technology area that reviews applications

relating to the subject matter of the invention. When the individual Examiner finally gets the

application, the Examiner puts it on a docket which contains a number of cases the particular Examiner

10 is handling. The Examiner must handle all of the other cases on his or her docket before the inventor's

patent application can be reviewed. It may be six months to one year before the Examiner issues a first

Office Action. In some art areas where patent applications are being filed in great numbers, the Patent

and Trademark Office may not act on the case for a time period of two years or more. If copying of the

invention is occurring, a "Petition to Make Special" can be filed so that the application gets examined

15 ahead of other applications.

The majority of patent applications are rejected in the first Office Action. A rejection simply

means that the Examiner has made a search of the prior art (prior patents and publications), has located

one or more patents which the Examiner feels are very close to the invention, and feels that the claims

are not patentable. This does not necessarily mean that the applicant will not obtain a patent. In most

20 cases, it simply means that the Examiner's Office Action must be answered explaining the differences

between the invention and the prior patents found by the Examiner and disclosing to the Patent

Examiner advantages of the invention and problems which are solved by the invention.

The Examiner's Office Action can be a rejection based upon anticipation (35 U.S.C. § 102) or

based upon obviousness (35 U.S.C. § 103). If the rejection is based upon anticipation, the Patent and

25 Trademark Office is simply saying that an earlier issued U.S. patent or publication exactly discloses the

invention sought to be patented. If the invention is rejected based upon 35 U.S.C. § 103 (obviousness),

the Examiner is basically stating that the differences between the invention sought to be patented and the

prior patents found by the Examiner are obvious differences to a person skilled in the art.

Rejections based on obviousness can often be overcome by pointing out to the Patent and

30 Trademark Office the differences between the invention sought to be patented and the references cited

by the Patent and Trademark Office. Sometimes affidavits of non-obviousness can be submitted to the

Patent and Trademark Office, such as for example that of an expert witness, discussing differences

between the invention and the prior art patents, and the problems solved by the invention. Also,

commercial success and copying by others are indicators of non-obviousness of an invention, and

35 affidavits attesting to this can be filed to support patentability of an invention.

A response to each Patent and Trademark Office action is in the form of legal and technical

arguments to the Examiner, hoping to convince the Examiner to change his or her position and issue the

patent. Frequently, the claims are amended as part of the response. The Examiner can issue several

Office Actions, each requiring a response. This issuing of several Office Actions and the requirement

40 that each one be answered with an appropriate response can complicate and raise the cost of patent

prosecution. Sometimes, it may be necessary to refile the patent application with new claims in an

attempt to better define the scope of the coverage sought. Examples of complicated patent prosecutions

are available for inspection at our office. We have for example obtained patents which involved not


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSonly the answering of several Office Actions, but also have required the refiling of the application one

or more times in order to gain allowance of a patent with claim coverage of desired scope.

(j) Patent Issue

After the Examiner has indicated that the patent application is allowed, a formal Notice of

5 Allowance is issued and an issue fee must be paid. The patent issues usually one or two months after

the issue fee is paid. U.S. patents are available online at www.uspto.gov.

A U.S. Patent expires twenty years from the filing date of the patent application (or from the

filing date of the parent patent application, if the patent application was a continuing patent application)

if the patent application was filed on or after June 8, 1995. The term of patents issuing on patent

10 applications filed prior to June 8, 1995 is 17 years from the date of issue of the patent or 20 years from

the date of filing of the patent application, whichever is longer. 35 U.S.C. § 154.

In some circumstances (typically for delays in the Patent and Trademark Office or at the Food

and Drug Administration), a patent term can be extended. 35 U.S.C. § 155-156.

In some patent applications filed after June 7, 1995, it is advisable to respond to Office Actions

15 from the U.S. Patent and Trademark Office as soon as possible, since the term of any patent issuing on

these applications is measured from the filing date of the patent application, instead of the issue date of

the patent.

(k) Small Entities and Micro Entities

A small entity is an individual, a non-profit organization, or a business having fewer than five

20 hundred employees. Reduced government fees (usually 1/2) may be paid if the inventor has not licensed

or assigned and is under no obligation to license or assign the patent rights to anyone who would not

qualify as a small entity. 35 U.S.C. § 41(h); 37 C.F.R. § 1.9. In general, a micro entity is an institution

of higher education, an employee of an institution of higher education, or a person who has not filed

more than four US full patent applications and had a household income of less than 3 times the national

25 median in the previous year (so less than about $150,000 in 2011). Greatly reduced government fees

(usually 1/4) may be paid if the inventor has not licensed or assigned and is under no obligation to

license or assign the patent rights to anyone who would not qualify as a micro entity. 35 U.S.C. § 123;

37 C.F.R. § 1.29.

(l) Patent Maintenance Fees

30 U.S. patents are not renewable. However, to keep a U.S. patent in force, patent maintenance fees

must be paid according to the following schedule: 3½ years from date of issuance, 7½ years from date

of issuance, and 11½ years from date of issuance. The inventor should keep a record of the issue

date of his or her patent and the date upon which each of these fees must be paid. If the fees are

not timely paid, the patent will expire. 35 U.S.C. § 41(b).

35 If one notices that the deadline has passed, he should contact a patent attorney immediately to

see if the patent can be saved. Depending on the circumstances, it may be possible to revive a patent,

even after the grace period. 35 U.S.C. § 41(c).

You may wish to use Computer Patent Annuities to monitor deadlines and pay maintenance fees.

Their address and phone number are as follows:

40 Computer Patent Annuities, Inc.

225 Reinekers Lane, Suite 400

Alexandria, VA 22314

Phone: 703-739-2234; Fax: 703-739-2815, [email protected].


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS(m) Representation of Inventors

Preparation of a patent application which will issue into a valid, enforceable patent is a difficult

job which really should not be attempted by most inventors. To best protect an invention, an inventor

should hire a patent practitioner who is registered to represent inventors before the U.S. Patent and

5 Trademark Office. If the inventor does not do an adequate job, at best he will have to rewrite the

application; at worst, if his application does not comply with 35 U.S.C. § 112 (see above) and his

invention is on sale, in public use, is described in a printed publication, or is otherwise non-

confidentially known (see 35 U.S.C. § 102, above) more than one year before he discovers the failure to

comply with § 112, he may lose the right to obtain a patent on his invention.

10 In general, to represent inventors before the U.S. Patent and Trademark Office, one must possess

an engineering or scientific university degree and pass an exam administered by the U.S. Patent and

Trademark Office. 35 U.S.C. § 31. A patent practitioner need not be an attorney, and an attorney

cannot represent inventors before the U.S. Patent and Trademark Office without passing the exam and

being registered by the U.S. Patent and Trademark Office. 35 U.S.C. § 31, 33; 37 C.F.R. § 10.10.

15 If an inventor is determined to represent himself, he should consult The Inventor's Desktop

Companion, a book by Richard Levy, an inventor and successful marketer of inventions. The book is

recommended by knowledgeable people in the field of intellectual property, including a former

Commissioner of Patents and Trademarks and the Executive Director of Intellectual Property Owners, a

well respected inventors' organization. The book can also be of interest to inventors who do hire patent

20 attorneys.

Since patent rights are potentially very valuable, and since most patent attorneys do not charge

for initial consultation, even if an inventor is planning to file a patent application by himself, he should

first consult with a patent attorney.

(n) Patent Enforcement

25 (1) Marking

Once a U.S. Patent issues on an invention, all goods covered by the patent should be marked

"U.S. Patent" followed by the patent number or by indicating that they are patented and listing a web

page where the patent numbers are listed. 35 U.S.C. § 287. If the patent owner or his licensees fail to

so mark, then the patent owner will only be able to recover damages occurring after the infringer was

30 notified of the infringement. 35 U.S.C. § 287(a).

(2) Infringement and Infringers

A patent infringer is a person who, without authority, makes, uses, offers to sell, or sells any

patented invention, within the United States, or imports the patented invention into the United States,

during the term of the patent. 35 U.S.C. § 271(a). One who actively induces infringement is liable as an

35 infringer. 35 U.S.C. § 271(b). A person who "sells a component of a patented machine, manufacture,

combination or composition, or a material or apparatus for use in practicing a patented process,

constituting a material part of the invention, knowing the same to be especially made or especially

adapted for use in an infringement of such patent, and not a staple article or commodity of commerce

suitable for substantial noninfringing use, shall be liable as a contributory infringer" 35 U.S.C. § 271(c).

40 The sale or use in the U.S. of a product made overseas by a process claimed in a U.S. patent is an

infringement of the U.S. patent. 35 U.S.C. § 271(g). Subsection (f) of 35 U.S.C. § 271 concerns

activity in the U.S. and in foreign countries:


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS(1) Whoever without authority supplies or causes to be supplied in or from the United States all

or a substantial portion of the components of a patented invention, where such components are

uncombined in whole or in part, in such manner as to actively induce the combination of such

components outside of the United States in a manner that would infringe the patent if such

5 combination occurred within the United States, shall be liable as an infringer.

(2) Whoever without authority supplies or causes to be supplied in or from the United States any

component of a patented invention that is especially made or especially adapted for use in the

invention and not a staple article or commodity of commerce suitable for substantial

noninfringing use, where such component is uncombined in whole or in part, knowing that such

10 component is so made or adapted and intending that such component will be combined outside

of the United States in a manner that would infringe the patent if such combination occurred

within the United States, shall be liable as an infringer.

35 U.S.C. § 271(f).

(3) Exception to Infringement

15 The use of an invention in an aircraft, vessel, or vehicle only temporarily in the U.S. is not an

infringement of a U.S. patent claiming the invention. 35 U.S.C. § 272. Paris Convention, Art. 5ter.

In general, one who commercially uses a business method more than one year before a U.S.

patent application is filed for the method can continue to use the method without infringing the patent

which issues on that patent application. 35 U.S.C. § 273.

20 (4) Remedies

A patentee can get damages for infringement of an issued patent which shall be no less than a

"reasonable royalty," along with interest and costs. The damages can be tripled and attorney fees

awarded if the infringement is willful. 35 U.S.C. §§ 284, 285. Bott v. Four Star Corp., 807 F.2d 1567,

____, 1 U.S.P.Q.2d 1210, 1213 (Fed. Cir. 1986). An injunction against future infringement can also be

25 granted. 35 U.S.C. § 283. For infringement of claims which are substantially identical to those in a

published U.S. patent application, the damages are a reasonable royalty. 35 U.S.C. § 154.

(5) Time Limit for Bringing Suit

A patent infringement suit should be filed within 6 years of the beginning of infringement, as no

recovery can be had for infringement of a patent occurring more than 6 years before the filing of suit.

30 35 U.S.C. § 286. A suit for infringement of claims in a published U.S. patent application must be filed

within 6 years after the issue date of the patent. 35 U.S.C. § 154. Any efforts to enforce intellectual

property rights (whether by letter, a lawsuit, or threating telephone calls) can result in a lawsuit

challenging the validity of the intellectual property rights.

(6) False Marking

35 Anyone who, with deceptive intent, falsely indicates that a product he is selling is patented or is

the subject of a pending patent application, can be punished with a monetary fine and/or be sued for

damages. 35 U.S.C. § 292.

(7) Avoiding Infringement

Infringement can be literal or under the doctrine of equivalents. In literal infringement, one

40 reads the patent claims (the numbered paragraphs at the end of the patent) and compares them to the

device or method accused of infringement. If everything in at least one independent claim is in the

device or method, the infringement is literal. However, even if the device or method is not identical to

the device or method described in an independent claim, there may nonetheless be infringement under


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSthe doctrine of equivalents. If an accused product performs "substantially the same function in

substantially the same way to obtain the same result" as a patented product and there is "proof of

insubstantial differences between the claimed and accused products" there is infringement under the

doctrine of equivalents. Hilton Davis Chemical Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 35

5 U.S.P.Q.2d 1641 (Fed. Cir. 1995) One charged with infringement of a patent should consult with a

patent attorney immediately and obtain a written, well reasoned opinion that there is no infringement or

that the patent is invalid. Ryco Inc. v. Ag-Bag Corp., 857 F.2d 1418, ____, 8 U.S.P.Q.2d 1323, 1331-32

(Fed. Cir. 1988). If a competent patent attorney is not able to provide a written, well reasoned opinion

that there is no infringement or that the patent is invalid, then the charged activity should be

10 discontinued or a license from the patent owner should be obtained.

(o) Foreign Patents

(1) Filing Deadline

A U.S. Patent only prevents others from making, using, selling, or offering for sale the patented

invention in the United States or importing the patented invention into the U.S. 35 U.S.C. § 154. If

15 patent protection is desired in foreign countries, a U.S. patent application should be filed before there is

any non-confidential disclosure of the invention and foreign applications must be filed within a year of

the U.S. filing. Usually a separate application must be filed in each of those separate countries.

However, some filings can be done as a group; for example, an application can be filed in the European

Patent Office (EPO) which covers over twenty European countries. Also, applications can be filed for a

20 Eurasian patent, which covers several former members of the Soviet Union, an OAPI patent, which

covers several African countries, or for an ARIPO patent, which covers several African countries.

A number of events could prevent the filing of patent applications in foreign countries. For

example, most foreign countries have a requirement of "absolute novelty" where a publication or public

use of the invention anywhere in the world can prevent the filing of a patent application in that country.

25 Thus, if foreign coverage of the invention is sought, foreign filings should be discussed with the patent

attorney at the earliest possible date, preferably at the time the U.S. patent application is filed and

certainly before any publication or public use of the invention. In many countries, the same filing date

afforded the U.S. patent application can be obtained for the foreign application, if the foreign application

is filed within one year of the U.S. application (6 months in the case of a design patent application).

30 Paris Convention, Art. 4. Generally, as long as the invention has been kept secret, the deadline for filing

foreign patent applications is the day before the U.S. patent issues (which is usually two months after

the issue fee is paid).

(2) PCT Patent Applications

Over 140 countries (including the U.S., Canada, Mexico, Australia, most countries in Europe,

35 many countries in the Far East, and the member countries of the EPO, Eurasian Patent Convention,

OAPI, and ARIPO, but not Taiwan or many Latin American countries) are members of the Patent

Cooperation Treaty (PCT) (see 35 U.S.C. §§ 351-376). If one would rather not spend thousands of

dollars per country by a particular deadline, but thinks that he may wish to take the gamble within a year

or two, he might consider filing a PCT application. By filing a PCT application, one can secure the right

40 to file patent applications in individual foreign countries, up to 30 months from the date the PCT

application is filed (or from the date of the first U.S. application, if priority is claimed), in member

countries and in the EPO, OAPI office, ARIPO office, and Eurasian Patent Office. This is probably the

best option if one wants to obtain foreign patent protection, but is not sure where the invention may be


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETScommercially successful. The PCT applicant will still need to pay tens of thousands of dollars to obtain

foreign patent protection at a later date.

(3) Publication of Applications and Provisional Rights

PCT applications (as are most patent applications) are published 18 months from the priority

5 date (usually the U.S. filing date). Thus, if one files a PCT application or other foreign application, he

will not be able to keep the invention a trade secret if the U.S. patent does not issue, because the

invention will be made publicly known by the publication of the PCT or foreign applications. Thus, one

must choose, sometimes before knowing whether an invention may be patentable, between possible

foreign patent protection and trade secret protection (please see the section below on trade secrets).

10 Most countries, including the United States, grant provisional rights to patent applications upon

publication of the application, subject to a later grant of a patent on the published patent application.

For example, if a patent application is published, and the claims of the published patent application

remain in the application when it issues as a patent, then if an infringer makes something covered by the

claims before the grant of the patent, the patent holder, once the patent issues, can sue the infringer for

15 post-publication, pre-grant, infringement. In the case of the EPO, however, the patent applicant must

translate the claims into an official language of the country in which the infringement is taking place,

and either deliver a copy of the translated claims to the infringer or make the translation publicly

available at the national patent office of the country.

(4) Request for Examination

20 Many foreign countries require an applicant to request examination of the patent application

within a predetermined time period after filing. At that time, amendments to the application can be

made. If the request is not timely filed, the application becomes abandoned.

(5) Costs of Obtaining Foreign Patents, including Annuities

In general, it costs several thousands of dollars per country to obtain patent protection, from the

25 time of filing the patent application through the expiration date of the patent; most countries require the

payment of annual maintenance fees (annuities) to keep patents (and in some countries, patent

applications) in force. In some cases, the cost of the annuities exceeds the cost of initially obtaining the

patent.

Government fees for filing a PCT application are currently around $2,000-3,000 for the initial

30 filing.

Because of the relatively high cost of obtaining patent protection in other countries, and because

the expectation of return on the investment is lower than in the U.S. (due to smaller population per

country and the difficulty of enforcing foreign patents), we usually do not recommend filing of foreign

patent applications except by companies which are already doing business in the foreign countries or

35 which can find a business partner or business partners in the countries. For example, a European patent

based on a U.S. patent application costs on the order of $40,000 to obtain (including government fees

and translation costs) and on the order of $5,000 per year to keep in force. A U.S. patent, on the other

hand, costs on the order of $10,000 to obtain and maintain over its lifetime. Correspondingly, a

European patent may cost an inventor over $100,000 during its 20 years-from-filing lifetime.

40 Considering that the U.S. population is over half (about 60% of) the population covered by a European

patent, the U.S. patent is a much better value for the inventor (a European patent costs on the order of 10

times as much, but covers not even double the population). Unless the inventor is fairly certain that he

or she will make a lot of money in Europe, a European patent may not be an advisable investment.


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSUsually, if a U.S. inventor has several inventions, it is more advisable to file U.S. patent applications on

all of them rather than spending the same amount of money getting foreign patents on just one.

(6) Patentable Subject Matter and Obviousness Determinations

Permissible subject matter of patents varies from country to country. For example, while U.S.

5 patent law allows patenting of medical procedures as methods, the laws of many foreign countries do

not. However, in many countries (including Great Britain), a medical method, such as a surgical

procedure or a method of treating an illness with a particular pharmaceutical composition, is not

patentable, but the pharmaceutical composition, even if previously known, can be claimed specifically

as a medicine for treating a particular disease (if that use of the pharmaceutical composition was not

10 previously known).

Also, patentability requirements, such as how non-obvious an invention needs to be to be

patentable, vary from country to country.

(7) Oppositions

Many foreign countries have an opposition period after grant of a patent - in the EPO, for

15 example, the public has nine months after grant within which to institute an opposition proceeding and

argue to the Patent Office that the patent should not have been granted. The US now has a similar

procedure.

(8) Revalidation Patents

Some (usually relatively small or undeveloped) countries allow registration of patents obtained

20 in foreign countries.

(9) Marking

As in the U.S., many foreign countries allow greater recovery of damages from an inventor if the

invention as sold is marked with the number of the patent which covers it.

(p) Provisional Patent Applications

25 Provisional patent applications do not require claims or a declaration of the inventor, and they

require about a $100 government filing fee (about $200 for large entities) as opposed to about a $500

government filing fee (about $1000 for large entities) for a regular patent application.

The provisional patent application does not start the 20-year-from-filing term, but it can be relied

on for priority in a later, complete, patent application filed within a year (but only to the extent of what

30 it discloses). Under the Paris Convention, the provisional patent application can be relied on for priority

in foreign countries as well.

A provisional application is not a substitute for a full patent application - rather, it is to be used

in conjunction with a regular, full patent application. It can be useful for: (1) establishing an early

priority date for full patent applications (the U.S. and most foreign countries have a "first-to-file" rule -

35 if several different inventors file patent applications on the same invention, the inventor with the earliest

priority date typically gets a patent - in the US in some instances an early public disclosure can be relied

on for priority in a patent application filed within a year); (2) insuring to some extent against unknown

potentially patent-barring events (such as an offer of sale, a public use, or a publication or disclosure

anywhere in the world describing the invention) which may occur after the provisional patent

40 application is filed, but before the full patent application is filed; (3) effectively extending the term of a

U.S. patent by one year (from 20 to 21 years); (4) allowing an inventor who has no interest in foreign

patents to mark his invention "patent pending" while he markets it; and (5) insuring to some extent

against potentially patent-barring events (such as an offer of sale, a public use, or a publication or


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSdisclosure anywhere in the world describing the invention) made by or through the inventor which may

occur less than a year before the provisional patent application is filed, but more than a year before the

full patent application is filed.

Provisional patent applications are not examined; they are automatically abandoned one year

5 from the date of filing.

If the invention is not fully supported and disclosed in a provisional application, that provisional

application may be of little or no value. A provisional application prepared by an inventor should never

take the place of a complete, attorney-prepared patent application. If the provisional application is

missing critical written description or detail in the drawings, it may not be sufficient to afford priority to

10 the inventor in a later patent application. The more complete a provisional patent application is, the

more useful it is. Ideally, a provisional patent application would contain as much information as a

regular, full patent application.

If patent protection based on the provisional patent application is desired, within a year of the

filing date of the provisional application, a full patent application describing and claiming the invention

15 must be filed. In order to assure that foreign patent rights are preserved, it is preferable that the full

patent application be filed before any non-confidential disclosure of the invention is made. If the

invention was disclosed non-confidentially or put on sale before the provisional application was filed,

then the full application should be filed within a year of the date of the disclosure or placing on sale.

An inventor who wishes to get patent pending protection for his invention as quickly as possible

20 would: (1) immediately file a provisional patent application; (2) quickly have an expedited

patentability search run; (3) have a more extensive patent application, which takes into account the

results of the patentability search, prepared and filed on an expedited basis; and (4) file a PCT

application (see Section 2(o)(2) above) and perhaps other foreign applications within a year of the

provisional patent application filing date. Depending in part upon the technology involved, the activity

25 in that technological field, the inventor's resources, and the potential value of the invention, such a

course of action can range from extremely prudent to bordering on extravagant. This is not a

recommended course of action for everyone - however, everyone should be aware of this possibility so

that an informed decision to forego it can be made.

(q) Invention Marketing Companies

30 In general, we recommend that inventors stay away from invention marketing companies that

charge on the order of $1,000 or more. A Wall Street Journal article reported that one company that

advertised nationally had admitted that over the previous seven years only 18 of 2,219 of its customers

actually licensed their idea to a manufacturer, and of these only "some" made a profit. Invention

marketing companies typically charge about $800 for an initial report and $5,000 to $10,000 for a

35 contract to attempt to find a licensee. Some charge much more than this. They usually do not obtain

patent protection on the invention. The general counsel of the Industrial Biotechnology Association (not

an invention marketing company) in Washington, D.C. is quoted in a Time magazine article as stating:

"A patent is the single most important item in the industry today. Without it, no company would invest

or invent." It seems clear that no company will be willing to license an invention unless patent

40 protection is available for the invention.

The invention marketing companies typically prepare a written description of an invention which

is sent to their customers to be resent to potential manufacturers of the invention. By sending out


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSunsolicited information about one's invention, one may destroy his chance of obtaining a U.S. patent

(see 35 U.S.C. § 102, above) or foreign patents (see section 2(o), above). Thus, in addition to wasting

thousands of dollars by dealing with an invention marketing company, one may also lose his right to

obtain patents and thus lose out on any chance of making money with his invention.

5 Inventors can find potential buyers or manufacturers of inventions without paying thousands of

dollars by consulting the internet.

While it is not our practice to recommend any particular invention marketing company, we are

aware of some which appear to be worth investigating: Kessler Corporation in Fremont, Ohio (419)

332-6496; Lambert & Lambert in Minneapolis, Minnesota (651) 552-0080. We understand that Kessler

10 Corporation accepts all inventions submitted to it, and charges a relatively modest fee to market

inventions; we understand that Lambert & Lambert charges a small nominal fee in order to evaluate

one’s invention, and is only later compensated if it obtains a licensing deal for the inventor.

A good resource for inventors is Innovative Product Technologies, Inc., an inventor assistance

company (tel. (352) 373-1007, www.inventone.com).

15 If one is intent on hiring an invention marketing company, he should first ask for a written report

of its track record with previous customers. 35 U.S.C. Section 297 requires invention promoters to

provide the following information in writing, prior to entering into a contract for invention promotion

services:

(1) the total number of inventions evaluated by the invention promoter for commercial potential

20 in the past 5 years, as well as the number of those inventions that received positive evaluations,

and the number of those inventions that received negative evaluations;

(2) the total number of customers who have contracted with the invention promoter in the past 5

years, not including customers who have purchased trade show services, research, advertising, or

other nonmarketing services from the invention promoter, or who have defaulted in their

25 payment to the invention promoter;

(3) the total number of customers known by the invention promoter to have received a net

financial profit as a direct result of the invention promotion services provided by such invention

promoter;

(4) the total number of customers known by the invention promoter to have received license

30 agreements for their inventions as a direct result of the invention promotion services provided by

such invention promoter; and

(5) the names and addresses of all previous invention promotion companies with which the

invention promoter or its officers have collectively or individually been affiliated in the previous

10 years.

35 35 U.S.C. § 297 provides for lawsuits based on violations of this statute and for complaints about

invention promoters to be made to and publicized by the Patent and Trademark Office.

(r) Freedom-to-operate search

A patentabililty search often turns up patents which may be infringed by practicing the

invention. However, the main purpose of a patentability search is to see whether the searched invention

40 is patentable. A more comprehensive freedom-to-operate search can be performed (this examines only

patents currently in force and pending published patent applications). Freedom-to-operate searches can

cost as little as around $1000 for a relatively quick electronic search via the internet to around $10,000


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSor more to have a more comprehensive search conducted. No freedom-to-operate search is perfect, and

no one can ever guarantee that you will not infringe someone's patent, no matter how diligent a search is

performed.

3. Design Patents

5 Design patents give the patentee the right to exclude others from making, using, or selling the

patented design. The design must be for an article of manufacture (such as a car or chair), and not for a

wallpaper pattern, for example (which may be copyrightable). A design patent lasts fifteen years

(fourteen if filed before May 13, 2015), 35 U.S.C. § 173, and does not require the payment of

maintenance fees. 35 U.S.C. § 41(b).

10 4. Plant Patents

35 U.S.C. § 161:

"Whoever invents or discovers and asexually reproduces any distinct and new variety of plant,

including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated

plant or a plant found in an uncultivated state, may obtain a patent therefor..."

15 The term of a plant patent is twenty years from date of filing. 35 U.S.C. §§ 161, 154. No

maintenance fees are required. 35 U.S.C. § 41(b).

Plants not patentable under 35 U.S.C. § 161 (for example, because they are not asexually

reproducible) may be protectable by the Plant Variety Protection Act (7 U.S.C. §§ 2321 - 2582); also, in

some cases a plant can be the subject of a utility patent.

20 B. TRADEMARKS AND SERVICE MARKS

A trademark is any name, word, phrase, design, color, smell, or sound used to distinguish one's

goods from those of his competitors. A service mark is a similar mark used in connection with the

services rendered by an owner of the mark. 15 U.S.C. § 1127.

To protect one's ownership rights in a mark, it should be registered. If it is used in interstate or

25 international commerce, it may be registerable in the U.S. Patent and Trademark Office. 15 U.S.C. §

1051. Otherwise, it may only be registerable in individual states. More detailed information on federal

registration of a mark follows.

Before adopting a mark, a trademark search can be performed to determine whether the mark is

available in the area of intended use for the intended goods or services. If the search turns up a

30 conflicting mark that might be a problem, a new mark can be chosen before a lot of resources are spent

in advertising and registration of the mark. Alternatively, one might negotiate with the owner of the

conflicting mark for a license or assignment of the conflicting mark.

A trademark search can consist of a quick look through listings of trademarks by international

class, or a computer search of federal and state trademark registrations and federal registration

35 applications, or a comprehensive search of the foregoing resources and other commercial databases,

including telephone books and some business directories. Some people choose not to conduct a search

because, for example, the mark is so arbitrary that the likelihood of finding a conflicting mark is so

slight that the cost of a search is not warranted, or because the cost of the search is a significant

percentage of the loss to be occasioned if a conflicting mark is found. One can never be sure that a

40 search, no matter how comprehensive, will find all potentially conflicting marks. Also, different courts

have different standards for how far one needs to go before adopting a trademark.


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSThe U.S. Patent and Trademark Office now posts its searchable trademark database on the

Internet at www.uspto.gov. The Louisiana Secretary of State has trademark information available at

www.sec.state.la.us/crpinq.htm. Before adopting a trademark or service mark, one should conduct a

quick search on the Internet (using the two above sites and a search engine such as www.dogpile.com)

5 to see if the mark is being used by another in a way that will limit one's use of the mark.

In general, there are four types of marks: generic, descriptive, suggestive, and arbitrary.

Examples are as follows:

Generic - "aspirin" for acetylsalicylic acid and "escalator" for moving stairs (both were at one

time registered trademarks);

10 Descriptive - "Speedy" for fast modems for computers;

Suggestive - "Brilliant" for floor polish;

Arbitrary - "Speedy" for gemstones.

Marks which are suggestive or arbitrary are typically registerable, absent some other potential defect or

conflict. Marks which are descriptive may be registered if they have become distinctive of an

15 applicant's goods (usually, a declaration is needed to prove this to the trademark examiner, and

sometimes survey evidence is necessary). Generic marks are not registerable, and if registered, the

registration may be cancelled.

1. Federal Definitions

A trademark is a word, name, symbol, or device, or any combination thereof, used by a person,

20 or which a person has a bona fide intention to use, in interstate or international commerce to distinguish

his or her goods from those manufactured or sold by others. 15 U.S.C. § 1127. For example, Coca-

Cola® is a federally registered trademark for soft drinks.

A service mark is a mark, similar to a trademark, for services. Titles, character names, and other

distinctive features of radio or television programs are considered to be service marks. 15 U.S.C. §

25 1127. A commonly known federally registered service mark is SPRINT® for telecommunications

services.

A certification mark is a mark used by a person other than its owner to certify regional or other

origin, material, mode of manufacture, quality, accuracy, or other characteristic of the persons, goods, or

services, or that the work or labor on the goods or services was performed by members of a union or

30 other organization. 15 U.S.C. § 1127. Roquefort® is a certification mark for blue cheese coming from

Roquefort, France.

A collective mark is a trademark or service mark used by the members of a cooperative,

association, or other collective group or organization. 15 U.S.C. § 1127. Marks indicating membership

in a union, an association, or other organization are examples of collective marks.

35 2. Federal Registration on the Principal Register

In general (see 15 U.S.C. § 1052(a)-(d) for more details), a mark can be registered on the

principal register of the U.S. Patent and Trademark Office unless it is confusingly similar to another

mark or:

(1) Merely descriptive or deceptively misdescriptive;

40 (2) Primarily geographically descriptive or deceptively geographically misdescriptive; or

(3) Primarily merely a surname. 15 U.S.C. § 1052(e).


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSNevertheless, if the mark has become distinctive of a person's goods in interstate or international

commerce, it is registerable. Substantially exclusive and continuous use as a mark in interstate or

international commerce for five years is evidence of distinctiveness, whether the use is by the person or

by related companies. 15 U.S.C. § 1052(f).

5

It is sometimes best to secure a domain name after conducting a trademark search but before

filing a federal trademark application, as sometimes others will review new trademark applications, buy

domain names, and offer to sell them to the trademark applicant.

3. Processing in the Trademark Office

10 If the application is based on actual use in interstate commerce, it is possible that no further costs

will be incurred after filing. However, if the application is filed before use in interstate commerce

begins, or the trademark examiner raises objections to the application, it might be necessary to spend

more money to get the mark registered. Sometimes the application may even need to be refiled, if, for

example, the trademark examiner cannot be convinced that the advertising or labels in use at the time of

15 filing are adequate under the trademark laws as specimens of use.

Even if a mark is registerable, it can sometimes be difficult to convince the Patent and

Trademark office that it is. Thus, sometimes it is necessary to respond to objections of the Patent and

Trademark Office before a registration is granted. Sometimes, in rare cases, it proves impossible to

convince the Patent and Trademark Office to grant a registration on an application. In some cases, the

20 application can be filed with more information or at a later date, and the registration will then be

granted.

Even if the Trademark Office believes that a mark is entitled to registration, a member of the

public may disagree. A mark, once approved by the Trademark Office, is published for opposition.

Anyone who believes that he will be injured by federal registration of the mark may oppose the

25 registration within a short period of time. The trademark applicant and the opposer then present

evidence and arguments in favor of their positions, and the Trademark Trial and Appeal Board decides

who wins.

Even after a mark is registered, a member of the public can institute a cancellation proceeding to

cancel the registration. The cancellation petitioner has a heavier burden than does the opposer before

30 the registration issues.

Beware of unscrupulous companies that send invoices every time a federal trademark application

is filed, tricking some applicants into paying for listings which are not necessary and not helpful. Some

companies also send invoices when a renewal is due in a federal trademark registration, but only send in

response to payment forms that must be submitted by the registrant. Any requests for payment from any

35 entity should be sent to us for review.

4. Supplemental Register

A mark which is not registerable on the principal register may be registered on the supplemental

register if it is capable of distinguishing the applicant's goods or services from those of another. 15

U.S.C. § 1091. No application for registration on the supplemental register can be made on the basis of

40 an intent to use the mark. 15 U.S.C. §§ 1051(b), 1094.

5. When a Trademark Application Can be Filed

An application to register a mark on the principal register can be filed:


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS(1) By the owner of the mark any time after actual, bona fide, use of the mark in interstate or

international commerce, 15 U.S.C. § 1051(a); or

(2) When a person has a bona fide intent to use the mark in interstate or international

commerce. 15 U.S.C. § 1051(b). When a filing is made on the basis of an intent to use, the applicant

5 must file a verified statement with a fee that the mark is in use in interstate commerce within six months

of the notification that the mark is registerable. This time period can be extended an additional six

months automatically upon paying a fee to the United States Patent and Trademark Office, and for good

cause for up to three years from the date of notification that the mark is registerable. 15 U.S.C. §

1051(d).

10 An intent-to-use application can be converted to a regular application if use of the mark is made

while the application is pending. 15 U.S.C. § 1051(c).

6. Benefits of Filing an Application for Registration on the Principal Register

The filing of an application to register a mark on the principal register constitutes constructive

use of the mark, conferring a nationwide right of priority, on or in connection with the goods or services

15 specified in the registration which ultimately issues, against any other person except for a person whose

mark has not been abandoned and who, prior to the filing:

(1) has used the mark; or

(2) has filed an application to register the mark which is pending or which has resulted in

registration of the mark; or

20 (3) has filed a foreign application to register the mark and has, within six months thereafter,

filed an application in the United States which is either pending or has resulted in registration. 15

U.S.C. § 1057(c).

Thus, it is a good idea for someone who is planning to use a mark, but will not do so

immediately, to file an intent-to-use application right after a search is performed to determine the

25 availability of the mark. In this way, the chance of someone else acquiring superior rights to the mark is

minimized.

7. Benefits of Registration on the Principal Register

Registration of a mark on the principal register is constructive notice of a registrant's claim of

ownership of the mark. 15 U.S.C. § 1072.

30 A certificate of registration of a mark on the principal register is prima facie evidence of:

(1) The validity of the registered mark;

(2) The registration of the mark;

(3) The registrant's ownership of the mark; and

(4) The registrant's exclusive right to use the registered mark in interstate commerce on or in

35 connection with the goods or services specified in the certificate. 15 U.S.C. § 1057(b).

This prima facie evidence becomes conclusive when the registrant's right to use the mark

becomes incontestable (see next section). 15 U.S.C. § 1115.

A further benefit of registration of a mark on the principal register is that the registration is a

complete bar, with respect to the registered mark, to a state or common law dilution action against the

40 registrant. 15 U.S.C. § 1125. Thus, the registration can act as a shield against some potential litigation.

8. Incontestability of Right to Use Mark Registered on the Principal Register


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSUnless a mark registered on the principal register is or becomes generic (like the mark "aspirin"

has become in the U.S.) the right of the registrant to use the mark in interstate commerce in connection

with the goods or services specified in the mark becomes incontestable if:

(1) The mark is used continuously in interstate commerce for a five-year period after

5 registration;

(2) There has been no final decision adverse to the registrant's claim of ownership of the

mark for the goods or services or to register the mark or keep it on the principal register;

(3) There is no pending proceeding involving the rights in the Patent and Trademark Office

or in a court; and

10 (4) The registrant files an affidavit within a year following the five-year period specifying

the goods or services which have been continuously used and stating the facts in paragraphs (1), (2), and

(3) above. 15 U.S.C. § 1065.

9. Keeping Registration From Being Canceled; Renewing Registration

A certificate of Registration lasts ten years from date of issue if, between the fifth and sixth years

15 after issue, the registrant files an affidavit stating that:

(1) The goods or services recited in the registration (all or only specified ones) are in current

use; or

(2) Non-use of the mark is due to special circumstances (for example, shortage of parts

needed to manufacture the goods) and not due to any intention to abandon the mark. 15 U.S.C. § 1058.

20 If the affidavit is not filed within six years from the date of issue, the registration will be

cancelled, 15 U.S.C. § 1058;

a similar affidavit must be made within twelve months preceding the tenth year after issue, and every ten

years thereafter. 15 U.S.C. § 1059. There is a limited grace period for failure to meet these deadlines.

The Patent and Trademark Office should always be informed of the trademark owner's current

25 address.

10. Notice of Registration as Prerequisite to Damages

Once a mark is registered on the principal or supplemental register, the registrant should display

with the mark "®", or the words "Registered in the U.S. Patent and Trademark Office" or "Reg. U.S.

Pat. and Tm. Off."; otherwise, unless the registrant can prove that an infringer had actual notice of the

30 registration, the registrant cannot recover profits or damages from the infringer. 15 U.S.C. § 1111. A

registrant can recover from an infringer of his registered mark: (1) The infringer's profits; (2) The

registrant's damages; and (3) Court costs. 15 U.S.C. § 1117. If the infringement was intentional, the

registrant will recover from the infringer: (1) Three times the profits or damages; and (2) Reasonable

attorney fees. 15 U.S.C. § 1117.

35 There are substantial criminal penalties (up to fifteen years in prison and a $5,000,000 fine) for

knowingly using a counterfeit of a mark registered on the principal register. 18 U.S.C. § 2320.

Any efforts to enforce intellectual property rights (whether by letter, a lawsuit, or threating

telephone calls) can result in a lawsuit challenging the validity of the intellectual property rights.

11. Licensing and Assignment

40 A mark can be licensed for use by another, as long as the mark owner exercises sufficient

supervision to insure that the quality of the goods on which the licensed mark is used is consistent with

those of the owner. 15 U.S.C. § 1055.


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSA mark is assignable in writing with the good will of the business in which the mark is used. An

intent-to-use application cannot be assigned prior to actual use of the application, except to a successor

to the ongoing and existing business of the applicant. 15 U.S.C. § 1060.

12. Representation of Trademark Owners

5 Any attorney licensed to practice law in the United States can represent trademark owners in

trademark cases before the U.S. Patent and Trademark Office. 37 C.F.R. § 10.14.

13. Famous Marks

A federal anti-dilution statute prevents commercial use of a famous mark by another, even in

association with unrelated goods or services. 15 U.S.C. Section 1125(c).

10 14. Avoiding Infringement

In general, one commits trademark infringement when one uses a copy or a confusingly similar

variation of a trademark belonging to another in a manner which is likely to cause confusion as to the

source of the goods on which the copy or confusingly similar variation is used. There are several factors

which courts consider in determining what is "likelihood of confusion". A few are the similarity of the

15 goods involved, the trade channels, and the fame (or lack thereof) of the allegedly infringed trademark.

One charged with trademark infringement should consult immediately with an attorney

experienced in trademark matters and obtain a written, well reasoned opinion that there is no

infringement. If a competent attorney experienced in trademark matters is not able to provide a written,

well reasoned opinion that there is no infringement, then the charged activity should be discontinued.

20 Sands, Taylor & Wood Co. v. The Quaker Oats Co., 978 F.2d 947, ___ , 24 U.S.P.Q.2d 1001, 1013-14

(7th Cir. 1992).

14. International and Foreign Trademark Registrations

There is a deadline of six months from the date of filing an application to register a trademark in

the U.S. Patent and Trademark Office to file trademark registrations in foreign countries claiming

25 priority of the U.S. filing date. However, if priority is not claimed, the application can be filed at any

time.

Trademark laws vary from country to country; most allow applications to be filed without proof

of prior use; many allow registration without proof of use. The potential harm to businesses planning to

do business overseas is that they may find that their trademark is already registered in a foreign country

30 by someone who learned of the business's plans to do business in that country. The business may then

be forced to negotiate with the holder of the registration on its mark or use a different mark in that

country. It is thus prudent to file trademark registration applications in foreign countries of interest prior

to announcing plans to do business in those countries. In some countries, use is not enough to establish

priority in that country - the first entity to apply to register the mark gets the registration.

35 It is possible to file a single registration application which covers several countries. For

example, 15 European countries recently implemented a program whereby a trademark registration

covering all 15 countries in up to three international classes can be obtained by filing a single

application. The countries currently are Austria, Belgium, Denmark, Finland, France, Germany, Greece,

Ireland, Italy, Luxembourg, the Netherlands, Portugal, Spain, Sweden, and the UK. The cost for filing

40 the application is on the order of $3,000, not much more than filing in a single foreign country.

A single trademark application can be filed in the U.S. and is effective in over 70 countries

which are members of the Madrid Union.


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSTypically, actual use must be made (and sometimes proof of use must be submitted to the

trademark office) within five years after the mark is first registered. As in the U.S., trademark

registrations in most foreign countries must be renewed every ten years.

State Trademark Registrations

5 One can usually register marks used in a particular state, whether or not they are registerable on

the principal or supplemental register of the United States Patent and Trademark Office, with the

Secretary of State of that state. This gives the registrant some limited advantages (in Louisiana see La.

Rev. Stat. §§ 51:211 - 51:300).

C. COPYRIGHTS

10 1. Scope of Protection

A copyright owner has the exclusive right to do and to authorize the following:

to reproduce the copyrighted work in copies or phonorecords, to sell or lease the work, to prepare

derivative works based upon the work, to perform the work publicly, and to display the work publicly.

17 U.S.C. § 106. A U.S. author's copyright is recognized and respected by the eighty-one members of

15 the Berne Convention for the Protection of Literary and Artistic Works, without the need for registration

in each country. Berne Convention, Art. 5(2).

2. Works Protected by Copyright

"Copyright protection subsists in original works of authorship fixed in any tangible medium of

expression, now known or later developed, from which they can be perceived, reproduced, or otherwise

20 communicated, either directly or with the aid of a machine or device. Works of authorship include the

following categories:

(1) literary works;

(2) musical works, including any accompanying words;

(3) dramatic works, including any accompanying music;

25 (4) pantomimes and choreographic works;

(5) pictorial, graphic, and sculptural works;

(6) motion pictures and other audiovisual works;

(7) sound recordings; and

(8) architectural works." 17 U.S.C. § 102(a).

30 3. Notice, Registration, and Enforcement

Due to recent changes in copyright laws, copyright protection is now virtually automatic,

without the need to place a copyright notice on or to register the work. 17 U.S.C. §§ 302, 401(a),

407(a). However, there are certain advantages to placing the notice on the work and registering the

work with the Library of Congress. For example, infringers cannot claim innocent infringement if the

35 notice is prominently displayed on all published copies of the work. 17 U.S.C. § 401(d). If the work is

registered within three months of first publication or prior to commencement of infringement by others

of the copyright (whichever last occurs), the copyright owner can collect statutory damages and attorney

fees, even if no actual damages can be proved. 17 U.S.C. §§ 412, 504, 505.

The notice of copyright in a work should include the copyright symbol (©), the word

40 "copyright", or the abbreviation "copr.", followed by the year of first publication and the name of the

owner of the copyright. 17 U.S.C. § 401.

A copyright in a work must be registered before a suit for infringement of the work can be filed.

17 U.S.C. § 411.© 1998-2018 GARVEY, SMITH & NEHRBASS, PATENT ATTORNEYS, L.L.C. (504) 835-2000; fax (504) 835-2070, WWW.PATENTS.GSPERMISSION IS HEREBY GRANTED TO MAKE UNALTERED COPIES OF THIS PAPER, PROVIDED THIS COPYRIGHT NOTICE APPEAR THEREON.

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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSSuit for copyright infringement must be filed within 3 years of the infringement. 17 U.S.C. §

507. Anyone who violates the exclusive rights of a copyright owner is an infringer. 17 U.S.C. § 501.

Remedies for infringement include an injunction against future infringement, 17 U.S.C. § 503,

impoundment and disposition of infringing articles, 17 U.S.C. § 503, and the copyright owner's choice

5 of either actual damages and additional profits of an infringer or statutory damages. 17 U.S.C. § 504.

While treble damages are not available, unlike in the case of trademark and patent infringement

lawsuits, statutory damages are flexible enough to accomplish the same result in most cases. See 17

U.S.C. § 504(c). Further, as in the case of trademark infringement, willful copyright infringement is a

criminal offense. 17 U.S.C. § 506; 18 U.S.C. § 2319. It is considered "fair use" (see 17 U.S.C. § 107),

10 not copyright infringement, to tape a program or movie broadcast on television, as long as it is being

taped only for "time shifting" (viewing at a later time) and not for "librarying" (adding to a collection to

be viewed over and over). See Sony Corporation v. Universal City Studios, 464 U.S. 417 (1984).

Any efforts to enforce intellectual property rights (whether by letter, a lawsuit, or threating

telephone calls) can result in a lawsuit challenging the validity of the intellectual property rights.

15 4. Copyright Duration and Renewal

For works created after 1977 (or created before but neither registered nor published), the term of

a copyright is the life of the last-surviving author plus 70 years (or in the case of an anonymous work,

pseudonymous work, or a "work made for hire" (see 17 U.S.C. § 101), the term is 75 years from the year

of first publication) and no renewal of the copyright is necessary or permitted. 17 U.S.C. § 302. In

20 general, for works created and copyrighted prior to 1978, the term is 28 years from the date the

copyright was originally secured; if the copyright has never been renewed, then it can be renewed

within one year prior to the expiration date of the original copyright term or it will be renewed

automatically; the renewal term is 47 years. 17 U.S.C. § 304. If the renewal is requested in an

application, then the copyright owner of the renewal term may be different from the person who would

25 own the renewal term if it is renewed automatically (e.g., an heir of the author may be entitled to the

renewal term if he makes a written application for renewal; otherwise, the owner of record (perhaps an

assignee of the author) would be entitled to the renewal term if the copyright is renewed automatically).

5. Transfer of Copyright - Work-for-Hire Caveat

When one sells a work of art or literary work, for example, one transfers ownership only of the

30 particular copy sold - the copyright remains the property of the artist or author unless expressly agreed

otherwise. 17 U.S.C. § 202. Businesses commissioning art for catalogs, brochures, or websites should

be careful in the wording of the contract for the commission - the purchase of the art for one catalog

does not automatically mean that the art can be used in subsequent catalogs. See 17 U.S.C. §§ 101, 201;

Community for Creative Non-Violence v. Reid, 109 S. Ct. 2166, 10 U.S.P.Q.2d 1985 (1988). One

35 should get all subcontractors working on a potentially copyrightable project (such as a brochure,

catalog, video, software, website, etc.) to sign an agreement to assign all copyrights to him; otherwise,

he may not be able to later reproduce the work. The agreement should include the right to access to

source code in the case of software.

6. Rescission of Agreement Regarding Renewal Copyrights

40 It may be possible to rescind an assignment or license of a renewal copyright if the assignment

or license was made prior to 1978 (see 17 U.S.C. § 304).

7. Mechanics of Obtaining a Copyright Registration


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSThe process for obtaining a copyright registration on a work is relatively simple, and persons

with more time than money may wish to consider registering their copyrights themselves. The most

conservative route, however, when the work is potentially valuable or there are multiple works to be

registered (in some circumstances, several unpublished works can be registered with a single application

5 - see page 9 of Circular 1: Copyright Basics available from the Copyright Office), is to have an

experienced attorney register the work. Sometimes even an experienced attorney will run into problems

when attempting to register a copyright in a work. Simply applying for a copyright registration is no

guarantee that a registration will issue, though in the great majority of cases, one does.

For information about copyrights authors may wish to contact: Copyright Office, Library of

10 Congress, Washington, D.C. 20559, Tel.: (202) 707-3000, web site: http://lcweb.loc.gov/copyright/.

8. Avoiding Infringement

In general, copyright infringement occurs when one, without the permission of the copyright

holder, reproduces the copyrighted work in copies or phonorecords, sells or leases the work, prepares

derivative works based upon the work (such as a movie based on a book, or a sculpture based on a

15 photograph), performs the work publicly, or displays the work publicly. 17 U.S.C. § 501. In copyright

law, "copy" does not mean the same thing as "exact duplicate". Rather, the "copy" in copyright merely

means that the original work was viewed or observed by the infringer, and the infringer made another

work which took copyrightable expression from the original work. What is considered to be

"copyrightable expression" is not always easy to determine. See, for example, the reproductions of

20 wallpaper and poster attached at the end of this paper. There was held to be no copyright infringement

in the case of the wallpaper, but in the case of the poster (arguably more different looking), the court

found that there was copyright infringement.

Copying of a newsletter for internal use in a company or in a law office can be copyright

infringement. Pasha Publications Inc. v. Enmark Gas Corp., 22 U.S.P.Q.2d 1076 (N.D. Tex. 1992).

25 Copying of an article in a journal for internal use in an oil company is copyright infringement.

American Geophysical Union v. Texaco Inc., 60 F.3d 913, 35 U.S.P.Q.2d 1513 (2d Cir. 1995).

One charged with copyright infringement should consult immediately with an attorney

experienced in copyright matters and obtain a written, well reasoned opinion that there is no

infringement. If a competent attorney experienced in copyright matters is not able to provide a written,

30 well reasoned opinion that there is no infringement, then the charged activity should be discontinued.

D. TRADE SECRETS

1. Definition

"Trade secret" means confidential information, including a formula, pattern, compilation,

program, device, method, technique, or process, that derives independent economic value, actual or

35 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. Examples of trade secrets

include customer lists, formulas for chemicals, the design of apparatus to perform a method, and the fact

that a particular company is conducting research in a particular area. To be considered a trade secret,

the information must be the subject of reasonable (but not necessarily fool-proof) efforts to maintain its

40 secrecy.

Reasonable efforts to maintain secrecy have been held to include efforts that are "reasonable

under the circumstances," and include advising employees of the existence of trade secrets, limiting

access to trade secrets on a "need to know" basis, and controlling plant access. Importantly, courts have© 1998-2018 GARVEY, SMITH & NEHRBASS, PATENT ATTORNEYS, L.L.C. (504) 835-2000; fax (504) 835-2070, WWW.PATENTS.GSPERMISSION IS HEREBY GRANTED TO MAKE UNALTERED COPIES OF THIS PAPER, PROVIDED THIS COPYRIGHT NOTICE APPEAR THEREON.

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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSheld that public disclosure of information through display, trade journal publications , advertising, or

other carelessness can preclude protection.

2. Scope of Protection

Trade secrets are protected by statute in some states (in Louisiana, for example, the legislature

5 has adopted the Uniform Trade Secrets Act, codified at La. Rev. Stat. §§ 51:1431-39; Tennessee Statute

39-14-138 defines trade secrets) and by case law in others. About forty states have adopted the

Uniform Trade Secrets Act. Other states have common law to protect trade secrets. For example, Texas

has developed its own law of trade secrets.

According to the official comments to the Uniform Trade Secrets Act, proper means of learning

10 a trade secret include:

(1) Discovery by independent invention;

(2) Discovery by "reverse engineering", that is, by starting with the known

product and working backward to find the method by which it was developed. The

acquisition of the known product must of course, also be by a fair and honest means, such

15 as purchase of the item on the open market for reverse engineering to be lawful;

(3) Discovery under a license from the owner of the trade secret;

(4) Observation of the item in public use or on public display;

(5) Obtaining the trade secret from published literature.

Improper means could include otherwise lawful conduct which is improper under

20 the circumstances; e.g., an airplane overflight used as aerial reconnaissance to determine

the competitor's plant layout during construction of the plant. E.I. du Pont de Nemours &

Co., Inc. v. Christopher, 431 F.2d 1012 (CA5, 1970), cert. den. 400 U.S. 1024 (1970).

Because the trade secret can be destroyed through public knowledge, the unauthorized

disclosure of a trade secret is also a misappropriation.

25 Comment (a) to § 1 of the Uniform Trade Secrets Act.

Improper means of learning a trade secret include theft, bribery, misrepresentation, breach, or

inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means.

Uniform Trade Secrets Act, § 1(1). The Uniform Trade Secrets Act provides for injunctive relief to

prevent use of an improperly discovered trade secret. The Act also provides for damages for actual loss

30 suffered by the secret holder. Further, the trade secret holder may also recover for unjust enrichment of

the person misappropriating the trade secret. Uniform Trade Secrets Act, §§ 2 and 3.

The best way to protect a trade secret is to keep it secret. The fewer people who know of the

secret, the less chance there will be that it will be improperly discovered by others. When disclosing a

trade secret to another, one should always get the other person to sign an agreement to keep the trade

35 secret confidential. Also, one should make sure that the person receiving the trade secret knows what

information is considered to be a trade secret. A good way to do this is to make all disclosures in

writing and to mark each writing "Confidential".

Trade secret protection can be useful when one wishes to protect information which is not

patentable or copyrightable. An invention, such as a method of manufacturing, which may not be

40 patentable because it may be considered to be obvious in view of the prior art may nonetheless be

protected if it can be kept a trade secret. Likewise, a customer list, which could not be patented because

it is not an invention or copyrightable because there is not enough original authorship to warrant


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETScopyright protection, can be protected by keeping it a trade secret. Thus, trade secret protection fills in

some of the gaps left by other types of intellectual property law.

Another advantage of trade secret protection is that as long as the material is maintained in

secrecy, there is no limit on the length of the protection. Hence, while patent protection will expire in a

5 set time, a trade secret can be potentially be held in perpetuity. The formula for Coca-Cola® brand soft

drink, perhaps the most famous (and valuable) trade secret in the world today, is a classic example of a

successful trade secret. Had the formula been disclosed in a patent, the protection would have expired

by now. However, as a trade secret, the formula of Coke® brand soft drink will be protected for as long

as it has value and is held in secrecy.

10 3. Avoiding Violations of Trade Secret Laws

One charged with trade secret violations should consult immediately with an attorney

experienced in trade secret matters and obtain a written, well reasoned opinion that there is no violation.

If a competent attorney experienced in trade secret matters is not able to provide a written, well reasoned

opinion that there is no violation, then the charged activity should be discontinued. Violation of trade

15 secret laws in some states (such as Tennessee and Texas) is a criminal offense, punishable by fine or

imprisonment, or both. Federal trade secret laws provide for criminal penalties of up to 15 years in

prison and a $10,000,000 fine (see 18 U.S.C. Sections 1831-1839).

E. UNFAIR COMPETITION

1. Definition

20 "Unfair competition" includes acts proscribed by 15 U.S.C. Sections 1-36 (Sherman Act, Wilson

Tariff Act, Clayton Antitrust Act, and Robinson-Patman Act), 41-58 (Federal Trade Commission Act),

1125 (Section 43 of the Lanham Act), and 1451-1461 (Fair Packaging and Labeling Act), and those

proscribed by La. Rev. Stat. Sections 51:331-337, 350, 361-371, 411-413 (Unfair Trade Law), 421-427

(Unfair Sales Law), 461, 461.1, and 51:1401-1418 (the Louisiana Unfair Trade Practices and Consumer

25 Protection Act ("LUTPA"), Louisiana's version of the Unfair Trade Practices and Consumer Protection

Law, sometimes informally known as the "baby FTC act"), and similar laws.

Proscribed acts include false advertising (15 U.S.C. Section 1125(a) and (b)), dilution of a

famous trademark (15 U.S.C. Section 1125(c)), conspiracy to restrain trade (15 U.S.C. Section 1) and

unfair methods of competition and unfair or deceptive acts or practices in the conduct of any trade or

30 commerce (15 U.S.C. Section 45 and La. Rev. Stat. Section 51:1405). In general, mere negligence is

not enough to support an unfair competition claim (488 So. 2d 202, infra)

Under LUTPA (which is akin to the Federal Trade Commission Act, but with an intrastate, rather

than interstate, bent), "unfair methods of competition and unfair or deceptive acts or practices in the

conduct of any trade or commerce are ... unlawful." Courts in Louisiana have held that conduct is

35 "unfair" when it involves fraud, misrepresentation, deception, breach of fiduciary duty, "offends public

policy," is immoral, unethical, oppressive, unscrupulous, substantially injurious to consumers or

business competitors.

A threat of unfounded trade secret litigation brought in bad faith can be a violation of Section 1

of the Sherman Act (15 U.S.C. Section 1). CVD, Inc. v. Raytheon, 769 F.2d 842, 227 U.S.P.Q. 7 (1st

40 Cir. 1985). In general, requiring a licensee to agree to buy unpatented goods in order to be able to

license a patent is prohibited by antitrust laws. 15 U.S.C. Section 1.

Violations of Unfair Competition Laws


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSRemedies for unfair competition include recovery of actual damages, attorney fees and costs. If

the court finds the unfair or deceptive method, act or practice was knowingly used, the court may award

three times the actual damages sustained.

F. MISCELLANEOUS

5 INSURANCE COVERAGE FOR INTELLECTUAL PROPERTY LAWSUITS

In some cases, a business's commercial general liability insurance policy will provide a defense

and pay damages in intellectual property litigation. The coverage is usually under the "advertising

injury" clause of the policy. Recently, due to the addition of an offer of sale of a patented product to

acts constituting patent infringement, the policy, in appropriate cases, will cover patent infringement

10 litigation, in addition to copyright, trademark, and unfair competition litigation. See generally Simpson,

Fred, "Old Insurance Coverage Gets New Life from Recent Federal Legislation," Insurance Litigation

Reporter, p. 174-181 (April 1996). Also, there are companies which insure against infringement by

their customers and/or infringement of their customers' patents. You should inform your patent attorney

as quickly as possible about possible coverage, as prompt written notice of claims is often required by

15 insurance companies.

EXPORTING U.S. GOODS AND SERVICES

Intellectual property laws vary from country to country. Before attempting to export U.S. goods

or services, one should consult with a patent attorney experienced in international intellectual property

law. The proposed export activities should be discussed with an intellectual property lawyer in the

20 country of destination before substantial preparation is made to export. The exporter should be

concerned not only with protecting his goods or services in the country, but also making sure that he

does not infringe any intellectual property rights of others in the target country (the United Kingdom, for

example, has unusual copyright laws which make illegal activities which are legal in most other

countries).

25 FOR MORE INFORMATION

Because this paper contains information relative to deadlines that could adversely affect U.S.

and/or foreign patent rights, please carefully read it and retain a copy in your records for future

reference.

You may also wish to read "Marketing Your Invention," a publication available from the

30 American Bar Association, 750 North Lake Shore Drive, Chicago, Illinois 60611. Other information

regarding patents and trademarks is available from the U.S. Patent and Trademark Office, Washington,

DC 20231, 800-786-9199, http://www.uspto.gov/. The U.S. Patent and Trademark Office, Washington,

DC 20231 publishes a pamphlet entitled "Basic Facts about Trademarks" which includes the forms

necessary to file a simple federal trademark registration application. The Copyright Office will send an

35 Information Kit to law firms upon request. This kit is about an inch thick and contains all of the current

forms and circulars used in the Copyright Office.

Inventors interested in starting a business might benefit from consulting with SCORE - Service

Corps Of Retired Executives, who can be reached at www.score.org or 800-634-0245 (in the New

Orleans area call 504-589-2356).

40 Most legislation regarding patents can be found in title 35 of the United States Code.

Regulations regarding patents can be found in Chapter I, parts 1, 5, 10, and 15, Chapter IV, and Chapter

V of 37 C.F.R.


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSMost legislation regarding federal registration of trademarks can be found in title 15 of the

United States Code, in sections 1051 through 1127. Regulations regarding trademarks can be found in

Chapter I, parts 2, 6, 10, and 15 of 37 C.F.R. Information regarding state trademarks can usually be

found in the statutes of the particular states. In Louisiana, the state trademark law is codified at La. Rev.

5 Stat. §§ 51:211-51:300.

Most legislation regarding copyrights can be found in title 17 of the United States Code.

Regulations regarding copyrights can be found in Chapters II and III of 37 C.F.R.

In most states, information regarding trade secret law can usually be found in the statutes of the

particular states. About forty states have adopted the Uniform Trade Secrets Act. In Louisiana, the

10 Uniform Trade Secrets Act is codified at La. Rev. Stat. §§ 51:1431-39. In those states which do not

have legislation on trade secrets, one must rely on digests or consult a publication such as Corpus Juris

Secundum.

Intellectual Property Inventory

It is important for a business to periodically review its intellectual property and procedures for

15 identifying and securing its intellectual property, as well as ensuring that there are procedures in place to

prevent the inadvertent infringement of the intellectual property rights of others. We suggest that at a

minimum the following be prepared and reviewed at least once per year with a patent attorney:

a listing of all trademarks of the business, including trademark applications and trademark

registrations and deadlines, and electronically stored evidence of proper use of the trademarks on the

20 goods and/or services with which the trademarks are used;

an agreement with whoever controls the website of the business that the business owns or at least

has a license to use all copyrighted content on the website, and the business has all information

(including passwords) and electronic files necessary to revise the website and move the domain name

and website to another provider if desired;

25 an agreement with all employees that they will keep confidential information and trade secrets of

the business and its customers/clients confidential, along with a description of what information is

considered to be confidential or a trade secret;

an agreement with all employees that they will not use at the business any confidential

information or trade secrets of others (including former employers);

30 an agreement with all employees who are involved in or likely to be involved in developing

inventions for the business, requiring those employees to assign inventions relating to the business to the

business;

a listing of all trade secrets of the business, and a password-protected electronic file which

includes in detail the trade secrets of the business to enable someone else to practice the trade secret (or

35 two files protected with different passwords, each file having half of each trade secret);

a listing of all inventions owned by the business, and any deadlines for filing patent applications

on the inventions;

a listing of all patent applications and patents with upcoming deadlines;

a listing of all copyrights of the business, and electronically stored copies of all works in which

40 the business owns copyrights;

notices to be posted at the place of business reminding employees of their obligation to keep

trade secrets of the business and its customers/clients confidential;


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSan agreement with whoever prepares software for the business that the business will own the

copyright in the software and receive all electronic files necessary to reproduce and revise the software

(including source code), or at least that the business has a license to reproduce and revise the software

and receives all electronic files necessary to reproduce and revise the software (including source code).

5

If you have any questions, please contact us.

The advice and opinions contained in this paper are those of the authors, and not necessarily

those of their clients.

We cannot ever guarantee success, no matter how much it seems to us that a client will prevail.

10 Also, there are many activities can lead to a client being sued, and we would be happy to discuss with

our clients all possible scenarios which we might contemplate. Please let us know if you would like for

us to do so.

© 1998- 2018 GARVEY, SMITH & NEHRBASS, PATENT ATTORNEYS, L.L.C.Suite 3290, 3838 North Causeway Boulevard, Metairie, LA 70002

15 Tel.: 504-835-2000; Fax: 504-835-2070

E-mail: [email protected]; www.neworleanspatents.com

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mailto:[email protected]

http://www.neworleanspatents.com

PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSINVENTION DISCLOSURE - RECORD OF INVENTION

(use additional sheets, if necessary - please call with any questions)

(1) Title of Invention _______________________________________________

(2A) Inventor

5 Citizenship

Preferred Contact Address

(Street, City, State, Zip)

Phone Number __________________________ Fax Number __________________________

e-mail _______________________________

10 Potential obligation to assign to employer or another? ________________ If so, list potential assignee

___________________

(2B) Co-Inventor Citizenship

(if any)

Preferred Contact Address

15 (Street, City, State, Zip)

Phone Number __________________________ Fax Number __________________________

e-mail _______________________________

Potential obligation to assign to employer or another? ________________ If so, list potential assignee

___________________

20 (2C) List additional co-inventors (if any) on a separate page

(3) Date the idea first came to mind (e.g., January 13, 1999, around summer 2003,

before 15 April 2006, etc.)

(4) With whom and when was the idea first discussed _____________________________________

List all others (if possible) with whom the idea was discussed, and date of discussion:

25 ____________________________________________________________________________________

(5a) Date on which the idea was first reduced to

writing in whole or in part (attach this written material) ________________________________

(5b) Date on which a drawing of the invention was first made

(attach this drawing) ________________________________

30 (6a) Date first construction of the idea of the invention was started (if at all)

PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS(6b) Date construction complete (if applicable)

(7a) Has this or a similar invention been disclosed in a printed publication or a talk, or has it been sold

or offered for sale, or has it been used in public? (any patent applications should

be filed before any of these events or any non-confidential disclosure of the invention if foreign patents

5 are desired, - any U.S. patent application should be filed within 12 months after the first of these events)

(7b) If so, provide date and all other details (and contact a patent attorney immediately if any one of

these events occurred more than 9 months ago).

(8) Attached to this record of invention should be a complete disclosure of the invention. Ideally, this

should include drawings, photographs (if available), a parts list (including manufacturer and model

10 number of parts actually used and of parts which are preferred), ranges of materials or characteristics of

the invention, alternative materials, and a description of how the invention operates, including reference

(by number) to each part on the parts list. Specify each advantage of the invention over prior similar

devices or methods that the inventor is aware of. List prior publications, prior patents, or prior uses or

sales that the inventor is aware of which might limit the scope of a patent on the invention. Consider

15 and discuss uses of the invention other than the originally intended use.

(9) List any patent applications filed in foreign countries, by country, serial number, and filing date:

_____________________

(10) Are you interested in filing foreign patent applications? ( _____ Yes) ( _____ No) ( _____

Unsure).

20 Should you apply for a patent, you will be required to sign a declaration under oath that you believe that

you are the original inventor of a claimed invention in the application.

Date _____________________________

Signature of Witness (Not a party to the invention - optional):

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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS


PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS

Outline for developing and reporting Corporation-owned inventions

1) If the invention might include an inventor who is not a Corporation employee, make sure that there is an

agreement with that inventor or his company that will cause the invention to be assigned to the Corporation (see

Section 2(a)(2) of paper).

5 2) Inventors should keep a diary in a bound notebook (and/or on a computer) of their progress, including

unsuccessful as well as successful attempts (see Section 2(b) of paper). If the invention has been made, list all

parts used in the invention by name, manufacturer, and part number, then explain how, if one could improve the

invention as much as the inventor contemplates, one would modify that parts list. The description should be

detailed enough to allow one of ordinary skill in the relevant technology to make the invention without undue

10 experimentation. Include in the disclosure ranges of ingredients, sizes, capacities, or other physical properties of

the invention. In appropriate cases, include lower limits and/or upper limits, express relationships between

various elements of the invention, include various ranges (such as a (broader) preferred range, a (tighter) more

preferred range, and a (tightest) most preferred range), generalize and/or list alternative materials (see Section 2(d)

of paper). Go over this diary with your supervisor at least once per quarter (and preferably once per month -

15 select a date in advance and meet, regardless of how busy you are that day).

3) Explain the advantages of the invention over prior similar devices or methods.

4) Disclose to the patent attorney anything which might limit the scope of a patent on the invention (see Sec. 2(e)

of paper).

5) Inventors who wish to do some investigating on their own can do searching on the Internet by visiting the site

20 at http://www.freepatentsonline.com/search.html (this site includes patents and applications from the US and

other countries - I recommend that you check all the boxes before searching) and/or www.uspto.gov (this is the

web site of the U.S. Patent and Trademark Office - it now has the full text and images of all U.S. Patents and

published U.S. Patent Applications from 1976 through the present online, and images of all U.S. patents and

published U.S. Patent Applications) and/or the site at http://ec.espacenet.com/ (this site has U.S. Patents and many

25 foreign and international patents and applications, viewable in Adobe). The information from this search can be

used to improve the invention or may show that the invention is impractical for reasons not previously considered

by the inventor (see Section 2(c)).

6) If the invention may provide a contract win (i.e., a customer will award a contract to the Corporation due to the

technology), royalty income (i.e., others may pay the Corporation for the right to use the invention), or help avoid

30 litigation (the invention might be cross-licensed to a holder of a patent which the Corporation would like to use),

file a provisional patent application as soon as possible. When determining whether to file a provisional patent

application, consider the amount of money spent by the Corporation developing the invention - I believe that it is

usually prudent to spend a little more money to secure the invention for the Corporation.

7) If it appears that the likely benefit of having foreign patents will outweigh the cost of obtaining foreign patents

35 (see Section (2)(o)(5) of paper), have a patentability search conducted and file a full U.S. patent application as

soon as possible (in this way, hopefully a U.S. patent examiner will begin examination before the deadline for

filing foreign patent applications claiming priority of the provisional patent application). If the invention still

appears to be patentable a year after the provisional patent application is filed, file a PCT application; if the

invention still appears to warrant foreign patents, enter the national phase in desired countries 30 months after

40 filing the provisional patent application.


http://ec.espacenet.com/

PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS8) If it appears that the cost of obtaining foreign patents will likely outweigh the benefit of having foreign

patents, file a provisional patent application about every three months (or whenever a significant development is

made). Once every 12 months, conduct a patentability search and file a full U.S. patent application claiming

priority of all provisional patent applications filed within the preceding 12 months and claiming priority of all

5 prior co-pending full U.S. patent applications (in appropriate cases). In general, I prefer to seek patent protection

on ten inventions in the U.S. than to obtain a European patent on a single invention.

9) An inventor who wishes to get as much protection for his invention as quickly as possible would: (1)

immediately file a provisional patent application; (2) quickly have an expedited patentability search run; and (3)

have a full patent application, which takes into account the results of the patentability search, prepared and filed

10 on an expedited basis, along with a request to publish the patent application as soon as possible. Depending in

part upon the technology involved, the activity in that technological field, the inventor's resources, and the

potential value of the invention, such a course of action can range from extremely prudent to bordering on

extravagant. I do not recommend this course of action for everyone - I simply believe that everyone should be

aware of this possibility so that an informed decision to forego it can be made.


PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSAttorney Profiles

The following is a brief description of the practice and background of each of the Firm's

attorneys (all of whom are patent attorneys and are licensed to practice law in Louisiana, except where

noted otherwise below).

5 Charles C. Garvey, Jr. has over 30 years experience in intellectual property law. Chuck has

developed a well-rounded practice including litigation, prosecution before the Patent and Trademark

Office and client consultation on technology related issues. He has acted as lead counsel in several

intellectual property law lawsuits, particularly patent suits. His office practice includes preparing

technology transfer agreements and providing legal opinions on the state of the art, patentability and

10 other intellectual property issues. Chuck obtained a J.D. and Bachelors degree in Civil Engineering from

Louisiana State University and is a Registered Professional Engineer in Louisiana.

Gregory C. Smith has over 30 years experience in intellectual property law as an attorney and

lecturer. Greg's practice concentrates on patent and trademark litigation in state and federal courts, and

patent and trademark prosecution before the U.S. Patent and Trademark Office. Greg obtained his law

15 degree from Loyola University New Orleans School of Law and a Bachelors degree in Chemistry and

English from Louisiana State University. He has lectured in law at St. Mary's Dominican College, where

he also served on the Law School Advisory Board.

Seth M. Nehrbass has been actively involved in the prosecution of patent applications since

1982, both as a patent examiner and as a patent attorney. Seth's technical background is in physics; he

20 has prepared and prosecuted patent applications in a range of technologies including chemistry,

mechanical engineering, electronics, biotechnology, medicine, and medical devices. Seth also has

experience in all phases of intellectual property litigation. He is fluent in French and Spanish and has a

working knowledge of Portuguese, Italian and German. Seth obtained a Bachelor of Science degree

(summa cum laude) from the University of Southwestern Louisiana (now the University of Louisiana at

25 Lafayette) and a law degree (cum laude) from Loyola University New Orleans School of Law where he

was on Law Review and a member of Moot Court. He is an adjunct professor in patent law at Tulane

Law School.

Vanessa M. D’Souza is a 2008 graduate of Tulane Law School where she focused on

intellectual property law. During law school, Vanessa was a member of the Tulane Journal of

30 Technology and Intellectual Property and was elected to serve as Editor-in-Chief for Volume 10. She

was also a member of the Tulane Inn of Court, Student Bar Association, and served as representative to

the American Bar Association. Her work experience includes externships with judges from the United

States District Court for the Eastern District of Louisiana, Louisiana 4th Circuit Court of Appeal, and

Louisiana 24th Judicial District Court. In 2003, Vanessa received a Bachelor of Science in

35 Neuroscience and a Business minor from Tulane University. Vanessa is licensed to practice law in

Louisiana and is registered to practice before the United States Patent and Trademark Office in patent

cases.

Julia M. FitzPatrick became a patent attorney in 2007. She graduated with High Honors in

2006 from the University of Utah, S.J. Quinney College of Law, and she received her undergraduate© 1998-2018 GARVEY, SMITH & NEHRBASS, PATENT ATTORNEYS, L.L.C. (504) 835-2000; fax (504) 835-2070, WWW.PATENTS.GSPERMISSION IS HEREBY GRANTED TO MAKE UNALTERED COPIES OF THIS PAPER, PROVIDED THIS COPYRIGHT NOTICE APPEAR THEREON.

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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSdegree in Genetics (cum laude) from the University of Georgia in 2000. During law school, she was a

member of Law Review and focused her legal studies on intellectual property law, receiving awards for

the highest grade in her Intellectual Property Survey and Patent Law Courses. Julia also received the

Extra Muros Prize for the best Note on international law for her published Note that evaluated

5 intellectual property issues in Third World Countries. While in law school, Julia also interned with the

Utah Disability Law Center and volunteered at Utah Legal Services. After receiving her law degree,

Julia clerked for a Judge on the Utah Court of Appeals for about two and a half years before returning

home to Louisiana. She additionally has experience with litigation as an attorney, a law clerk while in

law school, and a paralegal prior to law school. Julia is licensed to practice law in Louisiana and is

10 registered to practice before the United States Patent and Trademark Office in patent cases. She remains

licensed (though inactive) in Utah.

Mackenzie D. Rodríguez is a 2008 graduate of Tulane Law School, which she attended on an

academic scholarship. During law school, Mackenzie was a member of the Tulane Journal of

Technology and Intellectual Property. In 2002, Mackenzie received a Bachelor of Science in Medical

15 Laboratory Science, magna cum laude from Northeastern University, Boston. Before going to law

school, Mackenzie worked at the Scripps Research Institute, Molecular Experimental Medicine Dept., in

La Jolla, CA and taught school in Balwinsville, NY. Mackenzie is licensed to practice law in Louisiana,

Massachusetts, and New York, and is registered to practice before the United States Patent and

Trademark Office in patent cases.

20 Julie Rabalais Chauvin was born and raised in New Orleans. She has a Bachelor of Science in

Biomedical Engineering from the University of Virginia and a law degree from University of Florida

Levin College of Law. She has worked as a judicial intern in the Eastern District of Louisiana and in the

US Attorney’s Office in the Middle District of Florida. She has also worked as a research assistant at

Loyola University Law School. While in college, she was part of a team that collaborated with two

25 orthopedic surgeons at the University of Virginia Health System to develop a modified hip implant.

Before attending law school, she worked as a Research Specialist at the Medical University of South

Carolina. Julie is licensed to practice law in Louisiana and is registered to practice before the United

States Patent and Trademark Office in patent cases.

Fabian M. Nehrbass graduated in 2008 from the University of North Carolina at Chapel30 Hill with a B.S. in Biology, a minor in Chemistry, and a B.A. in Political Science. After college, Fabian

spent two years teaching English in Granada, Spain. He obtained his J.D. from LSU Law School in2013, magna cum laude. During law school, he served as a student attorney in the LSU JuvenileDefense Clinic, extern to Judge Eugene Davis of the United States Court of Appeals for the FifthCircuit, and extern to the Federal Public Defender for the Middle District of Louisiana. He was also a

35 member of the Louisiana Law Review and Order of the Coif. For four years after law school, he workedat King, Krebs & Jurgens (now King & Jurgens), primarily involved in litigation. He and his wife Leahthen spent a year traveling around the world. Upon their return, Fabian joined our firm. Fabian islicensed to practice law in Louisiana and is registered to practice before the United States Patent andTrademark Office in patent cases.

40 More information about the Firm's attorneys can be found at www.Patents.GS.


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSSETH M. NEHRBASS, PATENT ATTORNEY

Education:

Loyola University, School of Law, New Orleans, LA (J.D. Cum Laude 1990)

Law Review

5 Moot Court

Patent Academy, U.S. Department of Commerce, Arlington, VA (1983)

Patent Examiner Initial Training Course, U.S. Patent and Trademark Office, Arlington, VA (1982)

University of Southwestern Louisiana (now University of Louisiana at Lafayette), Lafayette, LA, (B.S.Summa Cum Laude 1982, Major: Physics, Minors: French and Mathematics)

10 Université Paul-Valéry, Montpellier, France (1981)

Université Catholique de l'Ouest, Angers, France (1980)

Professional Experience:

1998-Present: Patent Attorney with GARVEY, SMITH & NEHRBASS, PATENT ATTORNEYS, L.L.C., NewOrleans Office

15 Primary responsibilities include: meeting with clients and preparing and prosecutingU.S., international, and foreign patent applications on mechanical, electrical, andchemical inventions; rendering opinions regarding patentability, validity, andinfringment; litigation, including drafting pleadings, researching, preparing briefs andmemoranda, and arguing at hearings; preparing and prosecuting trademark applications;

20 trademark acquisitions; acting as an expert witness in patent infringment litigation andother intellectual property litigation; assisting clients with licensing and marketing ofinventions.

1990-1998: Patent Attorney with Pravel, Hewitt, Kimball & Krieger, New Orleans Office

1987-1990: Patent Agent with Pravel, Gambrell, Hewitt & Kimball, New Orleans Office

25 1986-87: Patent Agent with New Orleans law firm.

1982-84: Patent Examiner with the U.S. Patent and Trademark Office (Art Unit 253). Primaryresponsibility was determining the patentability of inventions in the semiconductor andelectrolytic capacitor fields.

Admitted to Practice:

30 Supreme Court of the United States (1999)

United States Patent & Trademark Office in patent cases (1984)

Supreme Court of Louisiana (1990)


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSUnited States District Courts for the Eastern, Middle, and Western Districts of Louisiana (1990)

United States Court of Appeals for the Federal Circuit (1990)

United States Court of Appeals for the Fifth Circuit (1990)

Notary Public, State of Louisiana (1991)

5 Professional and Other Activities:

American Bar Association:

Section of Intellectual Property Law (formerly the Section of Patent, Trademark and CopyrightLaw) (1988-Present)

Co-Chairman, Young Lawyers Committee (1998-1999)

10 Law Student Committee (Chairman, 1996-1998; Member, 1989-1998)

Co-Chairman, Annual Meeting Arrangements Committee (1993-1994)

Special Committee on the Drug Crisis (Chairman, 1990-1993)

International Treaties and Laws Committee (1994-present)

Law Student Division Liaison to the Section of Patent, Trademark and Copyright Law (1988-15 1990)

Section of Law, Science and Technology (1988-1991)

Young Lawyers Division (1990-1996)

American Intellectual Property Law Association (1992-2000)

ADR Committee (1994-2000)

20 International and Foreign Law Committee (1994-2000)

Patent Law Committee (1994-2000)

Audubon Boulevard Parkway, Inc., President (2010-2017)

East Jefferson Business Association (2008-present); Board member (2009-2017); First Vice President(2011-2012); President (2012-2013)

25 Gulf Coast Intellectual Property Association (2010-present); Vice President (2011-2013)

Jefferson Bar Association (2009-present)

Louisiana State Bar Association (1990-present)

Intellectual Property Law Section (Chair, 1999-2000; Chair-elect, 1998-1999; vice-chair,1997-1998; member, 1996-present). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSInternational Law Section (1992-1994, 1996-2000)

Section on Antitrust and Trade Regulation Law (1991-1994)

Solo and Small Firms Section (2008-present; Vice-Chair 2011-2016)

Animal Law Section (2010-2012). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Arts, Entertainment & Sports Law Section (2010-2012). . . . . . . . . . . . . . . . . . . . . . . .5

Louisiana Bar Foundation - Fellow 2009-present

Louisiana Center for Law and Civic Education

Advisory Committee Member (1996-1998)

New Orleans Bar Association (1990-present)

10 Chairman (1991-1995) and Charter Member, Intellectual Property Law Committee (1991-2015)

Chairman, Law-Related Education Committee (1995-1998)

Interim Chairman, Ad Hoc Committee on the Drug Crisis (1991-1992)

Student Member (1989-1990)

Member, International Law Committee (1996-2010)

15 Rotary International

Member, Rotary Club of New Orleans (1997-present); Newsletter Editor (2009-2010); BoardMember (2010-2012); NORFI Board Member (2016-present)

Tulane Law School

Adjunct Faculty, Patent Prosecution and Litigation Course, (1997-present)

20 Young Leadership Council

Member, International Committee (1996-2000)

PTO Q&A Board (organization which prepares questions for the patent bar exam) (1992-1993)

Practice Round Judge for Loyola Law School Moot Court Teams (1992-present)

Sigma Pi Sigma (National Physics Honor Society) (1981-present)

25 Pi Delta Phi (National French Honor Society) (1981-present)

Alpha Sigma Nu (National Jesuit Honor Society) (1989-present)

Loyola Law School Moot Court Alumni Association (1990-present)

Boy Scouts of America, New Orleans Area Council


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSDen Leader and Assistant Den Leader, Cub Scouts, Lusher School, Audubon District (1991-1991-1995)

Carrollton Booster Club, New Orleans, LA, Soccer Coach (1993-1995)

Lakeview Soccer Club, New Orleans, LA, Coach (1995-1996)

5 Volunteer Attorney, New Orleans Pro Bono Project (1992-present)

Volunteer Attorney, Louisiana Volunteer Lawyers for the Arts (1995-present)

Blood Donor.

Moderator, "Law and the Arts" (a legal educational program for artists), sponsored by the Arts Councilof New Orleans, February 1994

10 Moderator, "Patent Law Basics for the Business Lawyer," a CLE program sponsored by the AmericanBar Association Business Law Section Committee on Technology and Intellectual Property and the NewOrleans Bar Association Intellectual Property Law Committee, August 1994.

Public speaking on patent, trademark, copyright, and trade secret law, including appearances on "TheAngela Show", "It's the Law", and "John Redmann, Power of Attorney" (New Orleans television talk

15 shows), radio programs, guest lecturing at Loyola University, Loyola Law School, Tulane University,Tulane Law School, and presentations at continuing legal education programs, at association meetings,and at corporations.

Honors, Awards and Scholarships:

Certificate of Appreciation "for outstanding service as Chair of the Intellectual Property Law20 Committee," New Orleans Bar Association (1993)

Certificate of Merit for "Excellent Achievement in the Study of Trademark, Tradename and UnfairCompetition," Loyola University School of Law Student Bar Association (1989-90)

Certificate of Appreciation, ABA Law Student Division (1989)

Certificate of Merit for "Excellent Achievement in the Study of Patent Law," Loyola University School25 of Law Student Bar Association (1988-89)

West Publishing Company Hornbook Award (1986-87, 1987-88)

West Publishing Company Corpus Juris Secundum Award (1986-87)

American Jurisprudence Awards (Legal Profession (1986) and Contracts I (1986))

Full academic scholarship to study at Loyola Law School (1986)

30 Two one-month full scholarships to study French in France awarded by the Council for theDevelopment of French in Louisiana and the French government (1980 & 1981)

LSU Alumni Federation Scholarship (1978)

UNO Freshman Award (1978)© 1998-2018 GARVEY, SMITH & NEHRBASS, PATENT ATTORNEYS, L.L.C. (504) 835-2000; fax (504) 835-2070, WWW.PATENTS.GSPERMISSION IS HEREBY GRANTED TO MAKE UNALTERED COPIES OF THIS PAPER, PROVIDED THIS COPYRIGHT NOTICE APPEAR THEREON.

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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSBiography published in: Who's Who in the World; Who's Who in America; Who's Who in AmericanLaw; Who's Who in Intellectual Property; Who's Who Among American Law School Students; TheNational Deans List; Outstanding College Students of America; Who's Who Among American HighSchool Students.

5 Personal AV Preeminent® Rating - the Highest Possible Rating from Martindale-Hubbell®

Publications:

D'Souza, Vanessa M., and Seth M. Nehrbass: "Recent Legislative Changes to U.S. Patent Law",Louisiana Bar Journal, Vo. 62, No. 6, pages 470-471, April/May 2015.

Nehrbass, Seth M.: "The America Invents Act - Sea change or C change in U.S. patent law?", Briefly10 Speaking (New Orleans Bar Assn.), Fall 2011.

Nehrbass, Seth M.: “Outline for Developing and Reporting Corporation-Owned Inventions”, LoyolaIntellectual Property & High Technology Law Quarterly, Spring/Summer 1998, pp. 26-27.

Nehrbass, Seth M.: Ethics is no laughing matter, presented at a CLE program in Washington, D.C.entitled "Patent, Trademark and Copyright Law: Litigation and Corporate Practice" sponsored by the

15 American Bar Association Intellectual Property Section, March 1998.

Nehrbass, Seth M.: "Law-Related Education Committee Needs Your Help", Briefly Speaking... (NewOrleans Bar Assn.), ca. Spring 1998.

Nehrbass, Seth M.: ("Attention All Law Students - Summer Education and Networking Opportunity"),ABA SECTION OF INTELLECTUAL PROPERTY LAW CHAIR'S BULLETIN, Vol. 2 No. 6,

20 FEBRUARY 1998.

Nehrbass, Seth M.: Ethics: A laughing matter, presented at a CLE program in New Orleans entitled"Procrastinators Programs" sponsored by the New Orleans Bar Association, December 1997.

Nehrbass, Seth M.: "Law Students - Call for Volunteers", American Bar Association Section ofIntellectual Property Law CHAIR'S BULLETIN, Vol. 2, No. 2, OCTOBER 1997.

25 Nehrbass, Seth M.: "Law Students", American Bar Association Section of Intellectual Property LawCHAIR'S BULLETIN, Vol. 2, No. 1, September 1997.

Nehrbass, Seth M.: "Attention Students: TIPS FOR COMMUNICATING WITH COMMITTEECHAIRS", ABA SECTION OF INTELLECTUAL PROPERTY LAW CHAIR'S BULLETIN, Vol. 1, No. 12, AUGUST 1997.

30 Nehrbass, Seth M.: "Attention All Law Students: SUMMER EDUCATION AND NETWORKINGOPPORTUNITY" American Bar Association Section of Intellectual Property CHAIR'S BULLETIN,Vol. 1, No. 10, JUNE 1997.

Nehrbass, Seth M.: ("Attention Students"), ABA SECTION OF INTELLECTUAL PROPERTY LAWCHAIR'S BULLETIN, Vol. 1, No. 3, November 1996.

35 Nehrbass, Seth M.: "Trip to Angola Opens Eyes of New Orleans Teens", Briefly Speaking... (NewOrleans Bar Assn.), Spring 1996: 8.

Nehrbass, Seth M.: "Please Help Us Make New Orleans a Safer City", Briefly Speaking... (New© 1998-2018 GARVEY, SMITH & NEHRBASS, PATENT ATTORNEYS, L.L.C. (504) 835-2000; fax (504) 835-2070, WWW.PATENTS.GSPERMISSION IS HEREBY GRANTED TO MAKE UNALTERED COPIES OF THIS PAPER, PROVIDED THIS COPYRIGHT NOTICE APPEAR THEREON.

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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSOrleans Bar Assn.), Spring 1996: 4.

Nehrbass, Seth M.: "Trademark and Copyright Highlights of the GATT-Implementation Legislation", Briefly Speaking... (New Orleans Bar Assn.) Summer 1995:11.

Nehrbass, Seth M.: "Patent Highlights of the GATT-Implementation Legislation", Briefly Speaking...5 (New Orleans Bar Assn.) Spring 1995:6.

Nehrbass, Seth M.: Securing, Enforcing, and Avoiding Infringment of Copyrights: Copyright LawBasics for Artists, presented at "Copyright Issues for Artists", a workshop of the Entergy Arts BusinessCenter in New Orleans, December 1994.

Nehrbass, Seth M.: How to Avoid Becoming a Defendant in a Copyright Infringment Lawsuit, 10 presented at a New Orleans Bar Association Brown Bag Seminar CLE program, October 1994.

Nehrbass, Seth M.: Fundamentals of Copyright Law, presented at a CLE program entitled"Fundamentals of Intellectual Property Law" sponsored by the American Bar Association YoungLawyers Division, the ABA Intellectual Property Law Section, and the New Orleans Bar AssociationIntellectual Property Law Committee, August 1994.

15 Nehrbass, Seth M.: Securing, Enforcing, and Avoiding Infringment of Patents, Trademarks, Copyrights,and Trade Secrets, presented at the New Orleans Bar Association Procrastinators' Programs, December1993, at a CLE program entitled "What the General Practitioner Needs to Know about Patents,Trademarks, and Copyrights", Biloxi, Mississippi, July 1994, and at the New Orleans Bar AssociationProcrastinators' Programs, December 1995, during a CLE speech entitled "Recent Developments in

20 Intellectual Property Law".

Nehrbass, Seth M.: How to Keep Your Law Firm from Unwittingly Becoming a Defendant in aCopyright Infringment Lawsuit, presented at the 1993 New Orleans Intellectual Property Law Seminar: "Copyrights - 1993 and Beyond," December 1993 and at the 1994 New Orleans Intellectual PropertyLaw Seminar: "Copyrights: 1993 and Beyond - Revisited," March 1994.

25 Nehrbass, Seth M., Inventor: U.S. Patent No. 5,235,382, issued August 10, 1993 for "PhotocopyMachine Cover".

Nehrbass, Seth M.: Protecting Ideas and Creativity: Securing and Enforcing Patents, Trademarks,Copyrights, and Trade Secrets, presented to the National Association of Legal Secretaries in July 1993during a speech entitled "Protecting Ideas and Creativity".

30 Nehrbass, Seth M.: How to Protect Your Company: Securing, Enforcing, and Avoiding Infringment ofPatents, Trademarks, Copyrights, and Trade Secrets, presented to the Louisiana Chapter of theAmerican Corporate Counsel Association in New Orleans in July 1993 during a speech entitled"Copyrights, Trademarks, and Trade Secrets - How to Protect Your Company".

Nehrbass, Seth M.: General Information about Patents, Trademark, and Copyrights, and Their35 Enforcement, presented at the 1992 New Orleans Intellectual Property Law Seminar, September 1992;

The New Orleans Bar Association Procrastinators Program, December 1992; Tulane Law School's CLEby Four or More: Intellectual Property, December 1992; and the Winter 1993 meeting of theIntellectual Property Law Committee of the New Orleans Bar Association.

Nehrbass, Seth M.: "Patents, Trademarks, and Copyrights: Similarities and Differences," Briefly40 Speaking... (New Orleans Bar Assn.) Winter 1992:3.

Nehrbass, Seth M.: "ABA and PTC Section Form Special Committees on the Drug Crisis," PTCNewsletter (ABA) Winter 1991: 14.


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PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETSNehrbass, Seth M.: (various Messages from the Chair and other articles published in the sometimesquarterly newsletter of the NOBA Intellectual Property Law Committee, ca. October 1991-1995).

Nehrbass, Seth M.: (various committee reports published by the ABA Intellectual Property Law Section(Special Committee on the Drug Crisis, Annual Meeting Arrangements Committee, Law Student

5 Committee, ca. 1990-1998)).

Nehrbass, Seth M.: "Hold That Thought: Patent Law a Bright Idea," Student Lawyer, (ABA) October1989: 46.

Nehrbass, Seth M.: "Survey of Intellectual Property Law Placement Agencies," PTC Newsletter, (ABA) Spring 1989: 6.

10 Co-author (with seven others), Careers in Intellectual Property Law, a publication of the American BarAssociation Section of Intellectual Property Law (ABA 1993).

Doody, Stephen R., Seth M. Nehrbass, Gregory C. Smith, Charles C. Garvey, and H. Roy Berkenstock: Securing, Enforcing, and Avoiding Infringment of U.S., International, and Foreign Patents, Trademarks,and Copyrights; Securing Trade Secrets; and Avoiding Unfair Competition (1998).

15 Nehrbass, Seth, Marilyn Maloney, and Marjorie Esman: Ethics and Malpractice Avoidance, presentedby the authors at a CLE program entitled "Intellectual Property" sponsored by Tulane Law School CLEin September 1997 in New Orleans.

Fox, David L., Charles C. Garvey, Seth M. Nehrbass, and Gregory C. Smith: Securing, Enforcing, andAvoiding Infringment of U.S., International, and Foreign Patents, Trademarks, and Copyrights;

20 Securing Trade Secrets; and Avoiding Unfair Competition, presented by Seth Nehrbass at a CLEprogram entitled "Intellectual Property" sponsored by Tulane Law School CLE in September 1997 inNew Orleans.

Krieger, Paul E. and Seth M. Nehrbass: Have Patent Damage Awards Gotten Out of Hand?, presentedby Paul Krieger at the Third Annual Continuing Legal Education Program in conjunction with the

25 National Inventors Hall of Fame Induction Ceremonies in April 1993 in Akron, Ohio.

Nolan, Sandra M. and Seth M. Nehrbass: A 'Primer' on Patents, presented by Sandra Nolan during aCLE program entitled "Patent Law Basics for the Business Lawyer" sponsored by the American BarAssociation Business Law Section Committee on Technology and Intellectual Property and the NewOrleans Bar Association Intellectual Property Law Committee, August 1994.

30 Personal:

Born: November 10, 1960 in Lafayette, LA. Two sons - Gabriel (1984) and Fabian (1986). Married toMary Elizabeth Dennis (2000).

Languages:

Fluent in Spanish and French; some Italian, some German and some Portuguese.

35 Interests:

Sailing, gardening, photography, traveling, fishing and hunting.

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