SBIR - IP protection

IP Protection For DOE SBIR Awardees

• 3.2. Intellectual Property Landscape [around your innovation]

– Describe intellectual property landscape – i.e. other key patents of

competitors

– Describe the due diligence taken to confirm that company has “freedom

to operate” relative to the technology/innovation

– Company Strategy (historical and going forward) Legal counsel used

– Frequency of interaction with counsel Brief discussion of corporate IP

history (patents, copyrights, trademarks)

– Description of corporate strategy to protect IP going forward with

rationale and timeline provided

– As appropriate, indicate the other IP you may need to acquire in order to

address the market opportunity

•Dawnbreaker Webinar •1

IP Protection For DOE SBIR Awardees

Intellectual Property [IP] Considerations

•This webinar will

• (i) help you better address IP aspects of your project, and

• (ii) help you work confidently and at less cost with your IP Lawyer

•Specifically it will cover

•(i) recent Changes in the US Patent System - AIA Provisions;

•(ii) Helpful USPTO Resources available to you;

•(iii) Your Invention – find what’s new in it;

•(iv) Patent Searching Demonstration; and

•(v) Key IP Law Concepts [Patent, Trade Secret, Copyright , and

Trademark, concepts]Dawnbreaker Webinar 2

What is IP and Why Protect it?

What is Intellectual Property [IP]?

• (a) R&D Results Sense [IP sense 1]

• (b) In the Legal Sense [IP sense 2]

IP [sense 1 = property (such as an idea, invention, or process) that is derived from the work of

the mind or the intellect; also [sense 2 = an application, a registration, patent, copy right,

trademark, legal right on IP sense 1].

Why protect IP?

• 1. Boundary around your innovation/IP sense 1:

• 2. Limited Monopoly for Recovery of R&D Costs:

• 3. Good Investor Requirement:

Dawnbreaker Webinar 3


“The America Invents Act,” [AIA] [signed into law in 2011, includes major

changes to the US Patent System].

Key provisions include:

1.First-inventor-to-file:

[(i) most significant provision. (ii) changed the US patent system from a first-to-

invent system into a first-inventor-to-file system.

US Patent System Changes


Some Implications of First-to-Invent System

2. Prior Art provision What is prior art has changed significantly – so talk

to your Patent Lawyer, but in general know this:

- The scope of prior has become broader and global [now includes oral

disclosures; use and sale no longer limited to this country; and publications

no longer have to be in English].

Most common pieces of advice being given about this:

-- Be careful about publishing or disclosing your invention before filing on it;

-- Use fully written Provisional Patent applications more regularly;

-- publications by others on or about your invention will be a problem;

-- Keep good inventor notebooks

– Talk to your Patent Lawyer.


• 3. 12 months fast track option for patent processing: under this

provision, instead of the average wait time of 36 months, applicants will

have an opportunity [for a fee] to have their patent applications examined

within 12 months.

• 4. reduced backlog: [provided more money for more examiners and

better infrastructure].

• for more information on the AIA, search:

• (i) “USPTO Basics for Entrepreneurs”;

• (ii) www.uspto.gov/aia_implementation/9-29-11_maulsby-speech.pdf;]]


http://www.uspto.gov/aia_implementation/9-29-11_maulsby-speech.pdf


• 5. micro-entity status: USPTO was directed to and has developed a

micro-entity status for very small often college inventors]. [more to come

about micro-entity status]

• 6. increasing patent quality; [USPTO to develop new tools and

resources that will improve patent quality].

• 7. pro bono programs: USPTO to design new pro bono programs for

under-resourced independent inventors and small businesses. Frst

launched in Minnesota in 2011, and have expanded to other states].

• For more on AIA provisions visit:

• http://www.uspto.gov/aia_implementation/faq.jsp

• [[search: (ii) http://www.uspto.gov/blog/aia/]]Dawnbreaker Webinar 7

http://www.uspto.gov/aia_implementation/faq.jsp

http://www.uspto.gov/blog/aia/

Small Inventor Help – USPTO Resources

• President’s 2011 Directive to all Federal agencies: To improve

and speed up the transfer of R&D results from labs to the marketplace.

• (A). SBIR IP Protection Support Pilot Programs by USPTO:

• In response, The USPTO and other Agencies piloted programs to provide

SBIR awardees with IP support through the USPTO.

• For example visit:

• http://www.uspto.gov/inventors/index.jsp [with segments on Patents for

inventors; Trademarks for inventors; Inventors assistance; Education and

Information; Scam Prevention; Pro Se and Pro Bono; Current Events; State

Resources; and Inventor Eye magazine]


http://www.uspto.gov/inventors/index.jsp


• (B). Under Such USPTO Pilot Programs:

– USPTO has been providing IP educational services through its (GIPA)

Global IP Academy;

– USPTO has been offering monthly webinars on an array of IP topics;

– USPTO has provided a new IP Awareness Assessment Tool to SBIR

awardees (the Tool helps inventors and companies assess their

domestic and international IP strategies.) - the Tool went to a first group

of 20 awardees in 2011 and now can be found at:

http://www.uspto.gov/inventors/assessment/results.html.[I recommend it]

– For more details on USPTO resources:

– [[search: (i) www.uspto.gov/news/pr/2011/11-61.jsp ]]


http://www.uspto.gov/inventors/assessment/results.html

http://www.uspto.gov/news/pr/2011/11-61.jsp


• In addition to the Pilot Programs, the USPTO also provides:

• 1. Small Entity Status Cost savings:

• Under a new “micro-entity” [M/E] status created by the AIA under (i) a

University researcher or (ii) a holder of 4 patents or less with an income 3

times below the national average gross income, will get a reduction of 75%

from large entity USPTO fees. This means Utility patent fees are as follows:

large entity [L/E] = $2,560; small entity [S/E] = $1,280 and M/E = $640.

• 2. Stopfakes.gov Website: a website for helping small businesses better

identify and address their IP protection needs. The website is part of a

government-wide effort to curb IP crime and strengthen IP enforcement-

both at home and overseas.



• 3. Other USPTO Programs For Small Inventors include:

• (a) Computer training modules on the USPTO Web site.

• (b) Podcasts on the iTunes system. The computer-based training

module, "Concept to Protection," has proven to be very popular.

• (c) Webcasting presentations to University businesses/entrepreneurs.

• (d) Receiving and responding to inventor questions via a dedicated

mailbox: [email protected]

(e) Toll-free number for independent inventors (1-800-786-9199)

• (f) Ombudsman program for small business concerns.


mailto:[email protected]


• (g) Education Conferences: Annual Independent Inventors conference at

the USPTO campus [brings inventors, IP and business experts together].

• (h) Patent For License Notice: For a small fee [$25] the USPTO will

publish a “patent for licensing or sale notice” in its Official Gazette.

• (i) Trademark Assistance Center: The USPTO Trademark Assistance

Center helps applicants on trademark matters and, in particular, on

understanding the trademark searching, prosecution and maintenance

processes.



• (j) USPTO Hotline: a hotline (1-866-999-HALT) under the Strategy for

Targeting Organized Piracy (STOP) initiative for protecting IP rights in the

US and abroad. It’s managed by attorneys with expertise in Worldwide IP

protection.

• (k) Intellectual Property Awareness Campaign (IPAC) "IP Basics"

programs, offered nationwide to small businesses. They include

presentations on how to protect and enforce patents, trade secrets,

trademarks, domain names, and copyrights domestically and internationally.



• (l) USPTO China "Roadshows" offered to businesses, mostly small

businesses that lack resources and expertise .

• (m) Web-based seminars on a full range of IP topics that are tailored to IP

issues most critical to small inventors.

• (n) Web-based Tutorials: USPTO with the SBA provides Web-based "IP

Training Tutorials" through the STOPFakes.gov Website.

• (o) USPTO Depository Libraries: a network of USPTO in key cities.

• (q) First Action Interview Pilot: An applicant is entitled to an interview with

the patent Examiner prior to the first office action on the merits in a new

utility application.

• [this ends the AIA/USPTO Resources segment] 14

Your Invention, Your IP, What’s Invention, What’s IP

• An invention: An “innovative product/service”

• that could be determined to be “novel/new”, “useful”

• and “not obvious”. The outcome or result

• of your SBIR/STTR project can thus be an invention.

• That is created from Intellect.

• Thus = it is Intellectual Property [IP sense 1]

• So what is Intellectual Property [IP]?

• (a) R&D Results Sense [IP sense 1]

• (b) In the Legal Sense [IP sense 2]

• How can you tell if your product/service is indeed new/novel/original, i.e.innovative, an invention?

Use our Upside Down Technology Tree Analysis:To identify and technically name parts and aspects

of a product/service that are “novel”, “new”, and “original”..


TECHNOLOGY TREE [= TECHNOLOGY LANSCAPE]

Product / Service

C1 C2 C3

E1

X1

X2

Z1

E2

Z2

P = Product [L1]

C = Components [L2]

E = Elements [L3]

X = Characteristics [L4]

Z = Attributes [L5] Note that more than likely there are already various versions of your product out

there that have different blue Cs, Es and Xs. These should be seen as forming the technical landscape around your

innovative Product/service. Patents covering such various versions form the IP landscape.]

Old [state-of-art]

New/Novel

Your Invention – Components and Elements

• “P ” Product: - machine, compound, process, system, software

application [e.g. Fuel cell]

• “Cs” Components [C1-C3]: - Parts/units/constituents/steps/modules[e.g. power generation section of P],

• “ Es ” Elements [E1-E2]: - subparts/subunits/ingredients/sub-

steps/algorithms [anode, cathode, electrolyte, hydrogenation catalyst of C]

• “Xs” Characteristics [X1-X2]: - Chemical, mechanical, physical or

other characteristics/activity/algorithm-type [non-sulfur odorant of E],

• “Zs” Attributes [Z1-Z2]: - Further limitations/ranges of characteristics[butane gas, palladium, of X].

Your Invention – Result/Outcome Of Your Project

To recap:

-You can use the Technology Tree analysis above to identify what’s “new”,

“novel”, or “original” in the outcome/result [product/service] of your project.

-If the Technology Tree analysis shows that your “product/service” includes a

new/novel/original C, E, X or Z , then note the appropriate and commonly

accepted technical terms in the industry for such new C, E, X or Z.

What to do with what’s new in your invention

If you have an invention that includes a new C, E, X or Z , how does that help you?

(A) Patent Search: [from the Technology Tree analysis, use the identified commonly

accepted technical terms for the new C, E, X or Z to conduct a patent search in order:]

(i) to validate the newness and novelty of your innovative product or service,

(ii) to identify competition to it,

(iii) to identify any blocking patents to efforts, and

(iv) to assess the IP landscape in general

(v) to effectively address IP topics in section 3.2.

(B) IP Protection: [Use the same technical terms with your Patent Counsel] to secure

IP protection on your invention.


Searching IP Information in Patent Documents

The IP Information that you will be searching for is contained in

Patent Documents.

• Patent documents are stored in searchable Patent databases,

e.g. USPTO.gov, Google Patents, Patent Lens etc.

• Each patent document as we will learn shortly is comprised of

different “fields” that contain different types of information

about the “invention”, inventors, owners, dates, etc.

• The most important of these fields include: (i) Title [of the

invention]; (ii) Abstract [of the invention]; (iii) Claims [of the

invention]; (iv) Patent No.; (v) Inventors; (vi) Assignee; etc.


Patent Searching “what’s new in your invention”

• Patent Searching Demonstration:

• Use the technical terms that describe the new C, E, X or Z from your

technology tree analysis.

• E.G. From above, (1) “Fuel cell”; (2) “hydrogenation catalyst”; (3)

“butane gas”; (4) palladium;

• USPTO.GOV Searchable Patent Database

• -- Quicksearch [of full text patents]

• Term 1, Term 2, each w/a dropdown window of Patent fields Document field

-- [Search in the fields] (i) Title; (ii) Abstract; (iii) Claims

-- [also demonstrate searching under]:

Assignee Name [Toyota];

Inventor Name [Aoyama]; Patent Number [8,153,332].

• -- Pdf copies easiest to get from Google.com/patents 21

Types of innovative Products

There are 3 main Types of innovative products/services [IP sense 1] :

– Type (a) inventions [inventions consist mainly of innovations in useful,

machines, systems, materials, compositions, formulations, methods and

processes, including some software]. [inventions are protectable with patent

law or trade secret law]

– Type (b) works of authorship

– [works of authorship include all software, literary, artistic and design works]

[these are protectable with Copyright law]; &

Type (c) Unique names/marks [these include marks, logos,

and words/names] [these are protectable with Trademark law].

22

Types of IP Protection Laws

4 Types of IP laws for protecting the different types of IP sense 1:

(i) Patent law and (ii) Trade Secret law,

Both are used for protecting inventions

[i.e. type (a) innovative products/services]

(iii) Copyright law for protecting

[i.e. type (b) products/services]; and

(iv) Trademark law for protecting

[i.e. type (c) unique names/marks].

23

Global IP Systems

IP Systems Globally:

Globally basically each country has its own IP laws, and its own IP Systemsimplementing its Laws

IP Importance:

Globally, IP is very important; As such, every major government or jurisdiction has

an IP system with necessary elements and necessary IP Offices which typically

consist of:

– A Copyright Office [for copyright law]

– A Patent Office [for patent law]

– A Trademark Office [for trademark law]

The American IP System includes:

(a) A Copyright Office and

(b) A Patent and Trademark Office [USPTO]; with elements that include (i)

Examiners, (ii) Patent lawyers, (iii) Patent Agents, (iv) a well established

patenting process, and (v) a Patent Appeals Court with expert judges, etc.24

Types of innovative Products, IP Laws, IP Systems

(A word about the Jurisdiction or Reach of IP laws,

e. g. Patent Laws, of each Country)

IP Laws Jurisdiction:

Because each Country has its own separate Patent Laws and IP system, if an

inventor wants to have patent rights on an invention in different Countries, a

patent application on such invention must be filed, processed and issued in

each such different Country as a separate patent grant that will be good only in

such Country.



Trademark law – protects [type (c) IP] unique names/marks:

A trademark, identified by the symbols ™ [when not yet registered] and ® [when

registered], is a distinctive sign or indicator used by a business (i) to identify that

the products and/or services being offered under that mark to consumers

originate from a particular source, and (ii) to distinguish such products or

services from those of other companies.

Trademark law gives the owner of the trademark the right to prevent others

from creating and using similar names or marks that are likely to confuse

consumers.

The trademark process is as follows: Create name or mark; search it or have it

searched for newness and distinctiveness; use & mark it with ™; register it with

the Trademark Office; then use & mark it with ® after grant).


http://en.wikipedia.org/wiki/Trademark_symbol

http://en.wikipedia.org/wiki/Registered_trademark_symbol




Copyright law – for protecting [type (b) IP] Works of authorship :

Copyright law gives the creator/author of an original work or software exclusive rights

in the work or software that are good for a certain time period, after which time the

exclusive rights expire and the work is said to enter the public domain.

The exclusive rights typically include the right:

– to produce or reproduce copies including electronic copies;

– to sell or distribute those copies;

– to import or export the work or it copies

– to create derivative works thereof (i.e. works that are based on or adapt

the original work)

– to perform or display the work publicly;

– to sell or assign these rights to others

– to transmit or display by radio or video;

The US Copyright process is as follows: create the work; mark it with ©, author’s name

and year; then register and deposit a copy with Copyright Office).



Trade Secret Law – for protecting [type (a) IP Inventions, plus others:

Trade Secret law is State Law. In NYS, a trade secret is any information used

in a business:

– that gives business actual or potential commercial advantage over

competitors; and

– that is kept secret; is otherwise not

– publicly available;

– and competitors do not commonly know or use.

Is something a trade secret - factors to consider:

– value to the business and its competitors

– effort or money expended in developing it;

– ease or difficulty of others to properly duplicate it;

– extent it is known outside of the business;

– extent it is known in the business (number of persons); and

– extent of steps or measures taken to guard its secrecy.28


(Trade Secret Law cont’d)

Measures required to maintain trade secrets:

- employ Physical and Notice measures;

- have a written IP Secrecy policy & communicate it.

- keep trade secret information under lock and key;

- track physical custody and movement of trade secrets.

- use confidential disclosure agreements, CDA’s;

- use signs to warn would-be and actual accessors.

Notice measures: (these are measures that put persons who come acrossinformation on notice that the information is to remain secret).

Physical security measures: (these prevent persons with no need-to-know fromever coming in contact with the information).



(A word about Invention Secrecy – common to Patent Law and Trade Secret Law)

Other Steps for Keeping Inventions Secret:

(A). Use CDA (Confidential Disclosure Agreement) or NDA (Non-DisclosureAgreement),

CDA / NDA is:

– A legal contract or agreement between a company and a third party (a)that allows the company to share its intellectual property (IP) with thethird party whose input the company needs, and (b) that binds the thirdparty to keep and use the IP confidentially and not to disclose such IP toanyone else without written permission of the company.

30


(Invention Secrecy – common to Patent Law and Trade Secret Law cont’d)

Other Steps for Keeping Invention Secret:

(B). Use Employment Agreement Clause:e.g. “During his/her employment, the undersigned shall disclose and assign

to the Company all inventions, discoveries, concepts, developments and

innovations, conceived in whole or in part by the undersigned or through

assistance of the undersigned, directly or indirectly; whether conceived or

developed during working hours or not, which:

(a)Result from company work or any work performed on behalf of Company;

or which

(b)Relate in any manner to the existing or contemplated business of the

Company, or which

(c)Result from the use of the Company's time, material, employees, or

facilities.”

31


(Let’s now take a closer look at Patents and Patent Law – focus of SBIR IP Issues)

Patent Law – for protecting [type (a) IP Inventions :

A patent is a grant for a set period of time made by a government to an

inventor of a claimed aspect of a technology that confers upon that

inventor the right to EXCLUDE all others from making, having made,

using, or selling technology/product with that aspect.

A patent as such is an IP right that can be transferred from one person

or company to another; bought and sold;

assigned; or licensed - exclusively

or non-exclusively.

32


(Patents and Patent Law cont’d)

A patent document is:

(a) physical evidence of a patent grant;

(b) it contains a lot of useful information in different parts and fields [title;

number; inventor name; assignee name; filing date; issued date; abstract;

drawings; references cited; background; summary; detailed description;

claims];

(c) it is stored in and can be searched from searchable databases

[USPTO.gov; Google.com/patents; etc.]33


US Patent Process

(For getting a patent on an invention):1. inventor develops invention;

2. keeps invention confidential/secret – i. e. no public disclosure;

3. files [at USPTO] a Regular Patent Application or first files a ProvisionalPatent application followed by filing Regular application within 12 months;

4. Foreign counter part to be filed? then it must be filed within 12 months;

5. Regular application is published at 18 months, unless PTO is paid not to;

6. Patent Examiner at Patent Office searches for “prior art” or referencesagainst claims, and examines claims of Regular application;

7. if claims are allowed, then a Patent is granted [can be maintained for 20years if periodic maintenance fees are paid], and

8. a patent document is issued on the invention.

The USPTO charges different fees for filing, publication, search,examination, issuance and maintenance. [see USPTO.gov, patent fees].

34



Regular Patent Application:

(a) is a strictly formalized and formatted document that is intended

to graphically and descriptively disclose and claim in its claims

what an inventor regards as his/her invention;

(b) it is filed with the Patent Office;

(c) the same is filed with foreign Patent Offices;

(d) it is examined;

(e) its claims can be amended to arrive at allowable forms thereof;

(f) its contents in the end are the contents of the patent document if

and when a patent is granted on the final examined form of its

claims.




Provisional Applications: [US, Utility only]

– Established in 1995 by the US, a provisional patent application islow-cost ($260/$130 = total) vs. ($2,560/$1,280/$640) = filing,searching, examination, issue fees); has a12 month-life; an inventorcan choose to file it first on his/her invention before having to file aregular patent application on the same invention 12 months later.

– The provisional patent application gives the inventor one additionalyear of protection or grace period – which may be enough time totest market his invention before investing in the cost of a regularpatent application.

– Provisional Applications are automatically abandoned one year afterfiling, and the regular utility application filed on any number of themshould claim benefit of their filing dates.




Maintenance Fees:

Although the life of patent can be as long as 20 years,

maintenance fees must be paid periodically (3.5, 7.5 and

11.5 years) in order to keep the patent alive or else it

goes abandoned, and therefore unenforceable.

37

US Patent Laws – Patent Document


Parts of a patent document (as we saw earlier, include) :

(1) Front page [Title; Patent Number; Inventor Name; Inventor

Address; Assignee Name; Assignee Address; Filing Date; Issue

Date; Abstract; References]; (Government Interest statement)

[--]

(2) Background of the Invention [--];

(3) Summary [--];

(4) Drawings [--];

(5) Detailed Description [--]; and

(6) Claims [for legal meaning of claims, rely on Patent Attorney and courts].


US Patent Laws – Patent Document

39

US patent Law – Patent Searching

Patent Searching Process:

1. Select a patent document database [USPTO.gov; Google Patents];

2. Search new C, E, X terms from Technology Tree analysis of your invention;

3. Search key inventor/patent/assignee information from your due diligence;

4. In USPTO.gov use QuickSearch and appropriate patent document fields;

5. Identify patent numbers and obtain pdf documents with drawings;

6. Read and study results for applicable relevance.

IP Landscape: When you do due diligence literature and patent searches, you

will find various versions of your product/service that have different Cs, Es

and Xs [per the technology tree analysis]. These various versions form the

technical landscape for your Product/service. Patents covering such various

versions form the IP landscape. Study patents, - terms each patent claims (i. e.

what it excludes others from doing), when it issued, and who owns it. 40

IP Protection – Getting Started (IP Review)

(Given what you now know – what’s next, where do you begin in addressing your IP issues )

(I suggest)

You start with the technical aspects of your innovative product/service;

--- do a “Technology Tree analysis”; develop technical terms for what is “new” in

your product/service;

--- conduct a patent search of such terms, of inventors and of competitors.

– From the patent searching results, answer the following questions: what

were the closest patents found, and what do they tell you; is there already

an existing patent on your product/service?

• If not, have you filed, will you file, a patent application for it?

• If yes, who currently owns that patent [inventor, assignee]?

• if your company does not own it, do you have a license from the

current assignee/owner, - e.g. University ?41

IP Protection – IP Review Cont’d

(So given what you now know – IP wise, where should you be now )

Where should you be?:

Well, you should be :

– You should be at the point where you have done due diligence (literature and

patent) searches on the novelty and innovation of your product .

– You should be at the point where you know the technology landscape and

the IP landscape around your product;

– You should be at the point where you have identified any IP rights on the IP

landscape that you MUST have in order to be allowed to commercialize your

product; and

– You should be at the point where you have decided on a strategy and a plan

for protecting the IP in your product; and

– You should be at the point where you are working with a Patent Lawyer.42

Understanding the Patent Landscape

(Some closing comments)

Blocking Patents; licensing strategy:

1. Your position on the IP landscape MAY force you to adopt a Licensing strategy.

2. For example, if you have invented a run-flat cord arrangement improvement to

radial tires, and have received a patent [B2] on the radial tire improvement, but this

is at a time when Goodyear still has active patents [B1] on radial tires in general,

you should know that you cannot go ahead and start making your B2 patented

improved radial tires without a license on patent B1 from Goodyear.

3. However, also know that Goodyear cannot start

making your improved radial tires without

a license on your patent [B2].

4. The solution to you

and Goodyear is to pursue a Licensing strategy.43

Understanding the Patent Landscape

(Some closing comments cont’d)

“Publish vs. Patent” Tension:

- When it comes to commercialization of University developed inventions,

please recognize that there is a cultural “publish vs. patent” tension between

Academia and the business world.

– Know once an invention is published, you can no longer file a patent

application on it in most jurisdictions around the world, and in the US you only

have a 12 month grace period before you can also no longer be ale to file.

– So please “file before you publish”.

– Also remember that University inventions that are patented and assigned to

the University [even if you are the inventor] must be licensed from the

University.44

Patent Protection Costs


Your SBIR/STTR Project Budget & Patent Costs:

Patent protection costs may/are NOT allowed as an SBIR

project budget item (but patent protection is expected and is

necessary for enabling you to deal favorably with potential

partners/competitors/investors).


This not Legal Advice


Major Caveat:

This whole presentation is merely an awarenessintroduction to some SBIR/STTR relevant IP information.

It is not intended, and it is clearly not legal advice.

You are strongly advised to seek advice from appropriateIP counsel (trademark, copyright, patent).

46

Conclusions

(In Conclusion)

In order to effectively work with your Patent Lawyer to protect the IP from

your SBIR/STTR project work, you need to:

– be familiar with IP Systems, laws and concepts;

– be familiar with USPTO Helpful IP resources & info for

inventors;

– Understand your invention and take some actions yourself.

The Patent Laws and Process slides in this presentation deliberately

include as well as integrate some of the key IP process terms and

concepts for you.

Patent searching is important and required - you should practice it.47

Bottom Line

IP Protection [is like a Property Boundary] and so it is very important – Obtain it!

No one expects you to become an IP law expert. However, they expect to

know:

– (a) that innovative names of companies and innovative names ofproducts can be protected with trademark law. Again:*(create mark;use & mark it ™; register it; if granted, then use & mark it with ®);

– (b) that software and other works of authorship can be protected withCopyright law. *(create; mark with ©; register and deposit w/CopyrightOffice); and

– (c ) that inventions can be protected with trade secret law and Patentlaw *(create; file patent application with USPTO; mark patent pending;mark patented w/No. after patent is granted).

48



IP Awareness Assessment Tool

Finally I also strongly recommend you try the USPTO’s new IPAwareness Assessment Tool at:


This Tool is one of the USPTO’s helpful resources for inventors. It was

developed under the joint efforts of the USPTO and NIST. The Tool

allows inventors to answer a series of multiple choice questions under

a number of topics in different IP areas. Using the inventor’s answers,

the Tool then automatically generates a canned assessment under each

topic in each IP area. There are different types of assessments, and

inventors can do the assessment over and over again by varying their

answers each time, with different results. I encourage you, play with it.49


Questions

Tallam Nguti, Esq.

Business Acceleration Manager

Dawnbreaker

Dawnbreaker webinar 50

Government & Nonprofit

SBIR - IP protection