IEEE-USA. Importance of Intellectual Property in Your Professional Career. Keith D. Grzelak, Esq. IEEE-USA Vice President for Government Relations

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1 IEEE-USA Importance of Intellectual Property in Your Professional Career Keith D. Grzelak, Esq. IEEE-USA Vice President for Government Relations IEEE-USA Annual Meeting August 2013

2 A. Patents B. Trademarks C. Copyrights D. Trade Secrets E. Trade Dress

3 A. Patents What is a patent? A grant of a property right by the US Government grounded in the US Constitution (Article 1, Section 8) through the US Patent Office. Congress shall have the power to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;

4 A. Patents - Why do we issue patents? Patent grant excludes others from making, using or selling. A patent is a contract with the US Government, an enabling disclosure in exchange for an exclusive right if invention meets the test for patentability.

5 A. Patents Standard to grant a patent? Invention is compared against prior art (what is old). Invention must be: 1) new; 2) useful; and 3) nonobvious.

6 A. Patents Analogy to deed title Would you repair an abandoned home in your neighborhood if you did not possess a deed or title? Would a bank give you a loan to fix up the home? Why would STEM workers labor over invention with no rights?

7 B. Trademarks What is a trademark and a service mark? A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods (i.e., a brand name). A service mark is any word, name, symbol, device, or any combination, used or intended to be used, in commerce to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the goods.

8 A. Copyrights A form of property right grounded in the US Constitution (Article 1, Section 8) and granted by law for original works of authorship fixed in a tangible medium of expression. Works can be published or unpublished. Protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. Copyright does not protect facts, ideas, systems, or methods of operation, but it may protect the way that these things are expressed.

9 D. Trade Secrets What is a trade secret? Any confidential business information which provides an enterprise a competitive edge. They may encompass manufacturing or industrial secrets and commercial secrets. The unauthorized use of a trade secret by someone other than the holder of the trade secret is regarded as an unfair practice and a violation of the trade secret. Trade secrets can encompass sales methods, distribution methods, consumer profiles, advertising strategies, lists of suppliers and clients, and manufacturing processes. Trade secrets fall within unfair competition, and unfair practices with respect to secret information include industrial or commercial espionage, breach of contract and breach of confidence.

10 D. Trade Dress What is trade dress? A legal term of art that generally refers to characteristics of the visual appearance of a product or its packaging (or even design of a building) that signify the source of the product to consumers. In the US, the Lanham Act protects trade dress under a federal statute which regulates trademarks and trade dress. Trade dress protection is intended to protect consumers from packaging or appearance of products that are designed to imitate other products, and to prevent a consumer from buying one product under the belief that it is another. For example, the shape, arrangement, and color of materials in a children s clothing line can be protectable trade dress.

11 INNOVATION, PROPERTY RIGHTS AND BUSINESS GROWTH A. Patents are the predominant form of protection for innovation solutions. B. Property rights in patents help ensure that capital flows to good ideas. C. Businesses need to ensure that innovation property rights are not placed at risk. 1. Employment agreements 2. Non-disclosure agreements (NDAs) 3. Trade secret practices under NEW AIA patent law(s)

12 INNOVATION, PROPERTY RIGHTS AND BUSINESS GROWTH A. Inventorship on patent that is assigned to employer often includes peer recognition/special remuneration for contribution already contemplated under employment agreement. B. Employed inventors Even though inventor rarely shares in commercialization/licensing profits resulting from patent, inventorship shows key inventor attribute that is recognized on resume. C. Inventor with ownership interest in patent can lead to significant remuneration to inventor. D. Businesses rely on innovation to impart creative destruction (Joseph Schumpeter) an attribute that usurps business from competitors.

13 WHY ARE WE SEEING BIG BUSINESS ASSERTING THAT WE NEED TO CHANGE PATENT LAW? A. Some patents are of poor quality resulting from poor agency examination, poor quality of preparation and prosecution, etc. B. Some patents are bought by Texas gunslingers who assert the patents against legitimate businesses (and who are often actual infringers). C. Some fields of technology have a proliferation of patents cell phones may have 10,000 or more patents related to a device. D. Innovative ideas protected with patents and NOT held by a market leader are the biggest threat to the market leader s business model (see Joseph Schumpeter).

14 Questions and comments Oct-13

Many people think that Ideas constitute an Invention. In this module, we make the distinction between an idea and an invention more clear.

Many people think that Ideas constitute an Invention. In this module, we make the distinction between an idea and an invention more clear. 1 2 The invention process for the successful inventor should start