The objectives of this tutorial are as follows:

1. Understand intellectual property (IP) in the United States
2. Understand why IP is important to your company
3. Understand trademark basics
4. Understand patent basics

Additionally, if you take the optional USPTO web site lesson:

• Learn how to determine if a trademark exists and how to find it
• Learn to look up patents and patent applications

Click Next Page to move through the tutorial and quiz questions. There is a review exercise at the end of the each of the Trademarks and Patents sections. There is an optional section on how to use the United States Patent and Trademark Office (USPTO) web site with an interactive activity.

Each section ends with a takeaway slide. These are the key points for you to remember!

There is a quiz at the end of the tutorial for you to check what you learned. You can print a certificate of completion as well.

There are several fun links to explore if you like. These are shown at the bottom of a page as For Fun, .... Click here. The activity will open in a new window (or tab if you use tabs). 

This tutorial should take between 30 minutes and an hour.

Note: If you have new windows opening in tabs--you might want to disable this function before taking the tutorial, New windows will be easier to follow.

Intellectual Property (IP) technically refers to material that is created from intellect, or the brain. For many companies, IP is often a large part of their primary value and provides their competitive edge. Some examples of IP are as follows:

• design documents
• trademarks
• engineering drawings
• software programs
• copyrights
• business processes
• inventions
• trade secrets

Intellectual property (IP) is important to your company because it is typically unique and proprietary information that gives you a competitive advantage. It is critical for you to protect your company's IP. There are several ways to protect this information. This lesson teaches you only about the legal protections available in the form of trademarks and patents.

It is likely that your company has policies concerning your treatment of IP. You should ask your manager or Human Resources Department if you are unsure what these polices are.

A trademark is used to create or identify a provider of goods. A service mark (SM) is the same as a trademark except it is for services provided (e.g., financial services advisor).

A trademark or service mark is part of your brand. A trademark can be words, graphics, sounds, and even a smell.

You do not have to register a trademark to claim it. An unregistered trademark or a trademark waiting for registration uses the ™ symbol.

Once registered and accepted by the U.S. Patent and Trademark Office, your mark can use the symbol ®.

A trademark protects words, a symbol, an object, a smell, and a sound (Sound Mark) that is uniquely tied to your company's image and commerce. Trademarks are important to help a company distinguish itself from its competition.

Example: If you want to build a new hamburger restaurant, you would not be able to use the name McDonalds and place golden arches in front.

Companies spend considerable money and effort in developing their brand. One important aspect of a brand is that consumers will look to the brand symbols (such as a swoosh) to identify the company and its products.

Here are some examples of trademarks:

• Words: Coke®, Mike's Tutorial™, Nike®

• Images:

Here are some more interesting examples of trademarks:

• Sounds: The NBC chimes (Listen), Intel Pentium sound, Harlem Globetrotters theme song "Sweet Georgia Brown"

• Objects: The old Coca-cola bottle design

 There are three primary options to file a trademark application.

• A trademark is used to establish and protect your brand for your goods or services

• Words, images, sounds, unique objects, and even a smell can be trademarked

• A service (SM) is the same as a trademark but for services instead of products

• When you think you might want to trademark a word, phrase, logo, or combination of these, use the (TM) or (SM) every time you show the symbols in a presentation, your web site, or paper

• File a registration request with the USPTO to obtain the registered trademark ®

 Trademark review question 1 of 2:

 Trademark review question 2 of 2:

Patents are legal recognition by the United States Government for the creation of a new and useful work. Patents can be granted for physical devices such as braking systems for cars, golf game training devices, drugs, etc. These patents are fairly obvious in application and use.

Patents can also be granted for software inventions. Patents for software have become a controversial topic in recent years due to the explosion in the number of applications for a wide variety of "inventions."

 This tutorial will focus on software inventions primarily because of the type of work you are likely are engaged in.

A patent protects how a process, software program, business process, mechanical device, electrical device, processor, etc. function and are constructed.

Companies spend considerable money and effort in developing their products. When a company has a new and novel product, a patent can be used to ensure that no other companies steal the work or copy its functions.

Definition

A patent provides exclusive use of an invention by the owner of the patent for a period of 20 years.

To become a patent, an invention MUST BE

1. New - It does not already exist
2. Useful - It must actually do something
3. Non-obvious - Um, this is often debatable

Patents are generally applied for when a technology manager determines that a patentable invention has been created by the company. Often, companies have policies surrounding patent applications. You should check with your manager or legal department to see if such a policy exists.

Today, there are many reason to apply for a patent. These include:

• You want to tell prospective investors and customers that your technology is patented
• You want marketing buzz for having "patent-pending" or patented technology
• You want to create a barrier to entry for competitors
• You want to protect your invention

One of the first actions you may take (or your attorney may perform) is a prior art search. The term prior art refers to existing inventions, publications, or knowledge. This is to determine if you meet the requirement of New for a patent.

A quick way to do a prior art search is to use the Internet. The USPTO can be searched for patent awards and patent application. Note, however, not all patent applications are published.

Prior art searches are typically performed on the USPTO patent database, published academic articles, journals, software documentation, etc.

Patents can be applied for on the USPTO web site. You can also download forms to file your patent.

However... This might be one of those "don't try this at home" times. Patents are complex legal documents. The correct writing of a patent is required for it to be granted and for it to have value. Claims can be tricky in terms of the legal language used.

Most companies use a patent attorney to apply for patents.

A typical cost for attorney fees and application fees for a patent range from $10,000 to $25,000 per patent application.

Note: Once the patent application is filed, you can accurately say the technology is "patent pending."

Once a company finishes preparing the complex application, it is time to determine who will be listed on the application as the inventors.

This is often a source of contention in companies. It is important that the inventors be the true inventors in case your patent ends up in litigation one day.

You do not want to exclude real inventors or add people who are not real inventors.

It is actually simple to decide who is on a patent:

•  An inventor is someone who contributes materially to one or more of the claims on the patent

Note that the following people do not automatically qualify as inventors:

• CEO of company or manager of a project
• Programmer who coded the invention
• People who attend meetings where the invention is discussed
• People on the "team

 A patent is composed of several sections. These are as follows:

• Abstract - A short summary that appears at the top of the application for readers to understand what the patent is about.

• Description - Very detailed, legal definition of how the patent works.

• Drawings - Diagrams referred to by the description for illustration of how the patent works.

• Claims - By far the most important component, the claims determine what you have patented. An example claim is listed below. Often many claims are "dependent" on claim 1.

What is claimed is:

1. A method of selecting data records in a computer readable database, each data record having at least one classification, the method comprising the steps of:

designating a plurality of subsets of data records in a database;

designating at least a first and a second search strategy, wherein each search strategy comprises a search methodology preselected to operate upon at least one of the plurality of subsets to search for at least one match;

forming a search hierarchy comprised of the first search strategy followed by the second search strategy;

inputting a search string, comprising at least one search term, to a user interface;

executing the search hierarchy, wherein said search string is applied by a succession of said search strategies;

terminating said search hierarchy upon finding said at least one match;

displaying said at least one match.

There are two potential types of help you can get to file a patent or even determine if you need to.

Attorney

You can file a patent online or via the mail just like a trademark. However, patent applications are more complex legal documents and your chances to "get it right" the first time are low. An attorney is typically used to advise and create the legal components. You can help reduce costs by writing much of the descriptive text and creating diagrams.

Consultant

It can be beneficial for you to hire an experienced technical person to advise you. This person does not fill the role of an attorney, but can help prepare you and your company for the process. A good consultant can help you develop a list of possible applications, organize your material, and assist with working with the attorney. These consultants often pay for themselves in time saved for attorney fees.

• A patent must be new, non-obvious, and useful

• Patents can be an important marketing tool as well as important to protect your invention

• Patent claims are the most import component of a patent

• It is best to hire an attorney to file a patent

 Patent review question 1 of 5:

 Patent review question 2 of 5:

  Patent review question 3 of 5:

 Patent review question 4 of 5:

 Patent review question 5 of 5:

  Would you like to learn how to use the U.S. Patent and Trademark Office (USPTO) site now?

This lesson will take about 30 minutes and you need access to the Internet.

The United States Patent and Trademark Office (USPTO) is an agency of the U.S. Government. The USPTO reviews and grants trademarks and patents.

The USPTO web site is at www.USPTO.gov.

The USPTO web site contains a wealth of information and used for the following:

• You can look up trademarks by name, keyword, trademark owner.
• You can look up patents by name, keywords, inventors, and companies.
• You can even electronically file a trademark and patent application

However, the site can be overwhelming to use and learn.

This lesson will provide a few tips so you can begin using the site immediately.

The USPTO web site has an enormous amount of information. So much that it can be intimidating and sometimes difficult to navigate.

Let's explore the site. Click here.

For this tutorial, we will be concerned with two menu options on the left: Trademarks and Patents.

Go ahead and click on Trademarks. A new set of menu options appears. Feel free to click and explore all of them. When you are finished exploring, click on the Search TM Database (TEAS) option.

You now see Select The Search Form. You can experiment will all of these searches, but the search results are often difficult to understand and usually contain many, many results.

It is best to start with New User Form Search (Basic).

Type in "Nike." Wow! You should get 128 results. Oddly, simply paging through the results page is awkward. You will need to guess which pages to see and enter them into the Start List at Screen.

Type in "Office" as if you are looking for Microsoft Office. Notice you only get 76,129 results!

You should experiment with the Field and Result Must Contains pull down menus. These will help refine your results.

• Type in "Microsoft Office" and set the Results Must Contain to The Exact Search Phrase. You will get 7 results.

Go back to the USPTO home page. Click here if you are not sure how. 

Go ahead and click on Patents. A new set of menu options appears. Feel free to click and explore all of them. When you are finished exploring, click on the Search Patents option. If you get lost on the site, click here.

The screen shows Issued Patents and Patent Applications. You should use Quick Search unless you want to compose complex queries with terms.

Type in "Nike." Note you get 3 results, and none of them look like athletic shoes. In the first patent, 7,287,468, you will see one of the inventor's names is Nike. Thus, it is important to use the keywords pull down menu to narrow your search.

Go back to the search page if you left it. Enter "Neal" and set the pull down to Inventor Name. Enter "Westminster" and Select Assignee City. Assignee information is for the owner of the patent.

You will get 13 results. Select the first one by clicking on the number or name. You have found a patent! Take some time and read through it now. Notice the sections Abstract, Claims, and Description. You can also click on any of the references to see the other patents that this one cites.

• The USPTO web site has a wealth of information and useful for you to explore trademarks and patents

• You can look up trademarks by name, keyword, trademark owner

• You can look up patents by name, keywords, inventors, and assignee (owner)

• You can even electronically file trademark and patent applications

These exercises will show you how to navigate the USPTO site. It can be a complex and somewhat intimidating process, but you feel free to try and navigate on your own. Simply return to these links when you want to "reset" your exercise.

View the USPTO Home Page.

Find where you file a trademark application. Click here for hint.     Click here for the answer.

Go back to the main page. Look up the trademark for "Courageous Critters."

Lookup a trademark application for "Sacred Agent."

These exercises show you how to navigate the USPTO site. It is complex and somewhat intimidating, but you can feel free to try to navigate on your own. Simply return to these links when you want to "reset" your exercise.

View the USPTO Home Page.

Exercise 1: Try to look up the infamous Amazon.com 1-click patent by inventor Hartman. Think about the owner (Assignee Amazon.com) and keywords that might work.

     Click here for hint.     Click here for the answer.

Exercise 2: Assume you have a great idea for an invention. Maybe you do! Look for patent applications for "Golf Club Head."

Click here for hint.      Click here for the answer.

Wow! Quite a few. And, these are just new, published, applications!