Intellectual Property Law

(in a nutshell)

Gloria M. Steinberg, Esq.

Steinberg Intellectual Property Law LLC
2015 Steinberg Intellectual Property Law

Agenda
Types of intellectual property
Applicability and Importance
Best ways to protect IP (in the US)
Obtaining rights
Challenging rights
Enforcing rights

Licensing, Acquisition, and Investment Due

Diligence
Takeaways

Types of Intellectual Property

Patents (Utility/Design/Plant)
Trade Secrets

Trademarks
Unfair Competition
Copyrights

Applicability and Importance

Everyone deals with intellectual property at some
point

Companies
Hospitals
Institutions
Individuals

Intellectual property can inuence the economy

Obtaining Patents
Decide whether to le
A very good novel
invention
Ownership of the
invention
Legally protectable
Want disclosure (no trade
secrets)

Obtaining Patents
When

ASAP

What you need

Design patent application (~ $1,500)*

Provisional patent application (~ $3,500)*
Only for utility patents
Valid for 1 year

Nonprovisional patent application (~ $10,000)*

Prosecution (~ $10,000)*
* Data from 2013 AIPLA Report

Challenging Patents
Patent Trial and Appeal Board (PTAB)
Post grant review
35 U.S.C. 101

Inter partes review

35 U.S.C. 102, 103

Time

After petition and response, 12 month maximum

Cost

$50k through ling a request*

$250k inclusive of an appeal to fed. Court*
* Data from 2013 AIPLA Report

Enforcing Patents
Utility patents valid for 20 years, require
maintenance
Design patents valid for 14 years
Infringement
Cost of infringement suit (end of discovery;
inclusive)*
<$1M at risk $350k; $700k
$1M - $10M $1M; $2M
$10M - $25M $2M; $3.3M
>$25M $3M; $5.5M
* Data from 2013 AIPLA Report

Obtaining Trademarks
Common law vs. Federal registration
Trademark rights based on usage in US
Presumption of validity, Jurisdiction

When/How
New mark: Section 1(b) intent-to-use basis
asap to establish constructive use
Old mark: Section (a) in-use basis

Obtaining Trademarks
Design vs. Word

Logo with all words word mark

Design marks are harder to search for but
easier to register

Time and cost

Start to nish ~ 1 year

Application (~ $700)*
Prosecution (~ $1,000)*
* Data from 2013 AIPLA Report

Challenging Trademarks
Trademark Trial and Appeal Board

Opposition (pending)
Cancellation (registered)
Any member of the public harmed by
registration
Cost*
End of discovery: $50k
Inclusive $80k
* Data from 2013 AIPLA Report

Enforcing Trademarks
Valid as long as you maintain registration
Infringement

Defendants use of a trademark has created a likelihood of

confusion about the origin of the defendants goods and
services

Cost of Infringement Suit (end of discovery; inclusive)*

<$1M at risk $150k; $300k

$1M - $10M $350k; $550k
$10M - $25M $500k; $1M
>$25M $750k; $1.5M

District Court

Cancellation and injunctive relief

* Data from 2013 AIPLA Report

Licensing, Due Diligence

Registered patents and trademarks should
be organized, reviewed, and evaluated for
ownership issues

Patents: The scope and validity of patent claims

should be conrmed

Patent/Trademark related agreements

should be evaluated to determine rights
and obligations of the rights holder

Takeaways
Identify and prioritize what to protect
File patent applications asap
Patents often most valuable asset of an
early to midstage company
Remember to enforce rights
Understand rights and obligations