1. PROTECTING YOUR BUSINESS WITH
PATENTS, TRADEMARKS, AND
COPYRIGHTS
Daniel Jon Holmander, Esq.
Barlow, Josephs & Holmes, Ltd.
401-273-4446
djh@barjos.com
www.barjos.com
©2012 Barlow, Josephs & Holmes, Ltd.

2. ©2012 Barlow, Josephs & Holmes Ltd.
Introduction to Intellectual Protection
for Small Business
• IP Law is important because it has been estimated that
45-80% of a company’s value lies in its intangible assets,
namely intellectual property rights
• The purpose of this course is discuss the following:
• 1. patent law for small business
• 2. trademark law for small business
• 3. copyright law for small business

3. What are Some Types of
Intellectual Property Rights?
1. Patents
2. Trademarks
3. Copyrights

4. ©2011 Barlow, Josephs & Holmes Ltd.
Types of Intellectual Property
Rights
1. Copyrights – protects original works of authorship
fixed in a tangible medium of expression.
-Literary works, musical works, dramatic works, motion
pictures, sound recordings, etc.
2. Trademarks - indicia affixed to goods or used in
connection with the sale or advertising of services to
identify the source of the goods or services
-protects name and/or logo for goods or services
3. Patents- government grant of the right to exclude
others from making, using, selling or importing the
patented invention. (note, not right to use the
invention)

5. Patents - Overview
• What is capable of being patented?
• Any novel and non-obvious invention
• In the US this includes business methods
• Rights Awarded
• Government grant of the right to exclude others from making,
using, selling or importing the patented invention.

6. ©2011 Barlow, Josephs & Holmes Ltd.
Types of Patents in the U.S.
• Utility Patents
• Provisional Applications
• Non-Provisional Applications
• Design Patents
• Plant Patents

7. ©2011 Barlow, Josephs & Holmes Ltd.
Patentable Subject Matter
• A. Apparatus/Device or Article of Manufacture
• B. Composition of Matter
• C. Method of Manufacture
• D. Method or Process for Using
Apparatus/Device/Article
• E. Business Method Patents
• F. Software – must be tied to a physical structure

8. ©2011 Barlow, Josephs & Holmes Ltd.
Not Patentable Subject Matter
• A. mathematical formulae
• B. algorithms
• C. mental processes
• D. music
• E. basic mathematical and physical relationships
• F. phenomena of nature
• G. abstract intellectual concepts

9. Types of Utility Patents in the U.S.
• A. Apparatus/Device or Article of Manufacture
• B. Method of Manufacture
• C. Method or Process for Using
Apparatus/Device/Article
• D. Business Method Patents
• E. Software

10. Benefits of Patents for Small Business
• 1. increase valuation of company
• 2. support higher profit margins by offering exclusive features
• 3. source of income through a licensing program
• 4. defensive measure if accused of violating a patent of competitor

11. ©2011 Barlow, Josephs & Holmes Ltd.
Provisional Patent Application
• Inexpensive filing
• Get filing date, Serial No., “patent pending”
• Good for One Year
• Must file non-provisional (full) patent application
within one year of filing of provisional application.
• Non-provisional gets filing date of provisional application
• Allows time to explore feasibility/marketability
of invention over the year

12. ©2011 Barlow, Josephs & Holmes Ltd.
Non-Provisional Patent
Applications
• Covers functional/utilitarian aspects of an invention
• Claims define the scope of protection
Patentability Requirements:
• Novel
• Non-obvious
Term: 20 years (from filing date of application)

13. Business Method Patents
• Covers new methods of doing business
• Claims define the scope of protection
Patentability Requirements:
• Novel
• Non-obvious
Term: 20 years (from filing date of application)

14. Amazon 1-Click Patent Claim
U.S. Pat. No. 5,96,411
• 1. A method of placing an order for an item comprising: under control of a
client system,
displaying information identifying the item; and
in response to only a single action being performed,
sending a request to order the item along with an
identifier of a purchaser of the item to a server
system;
under control of a single-action ordering component of
the server system, receiving the request;
retrieving additional information previously stored for the
purchaser identified by the identifier in the received request; and
generating an order to purchase the requested item for the
purchaser identified by the identifier in the received
request using the retrieved additional information; and fulfilling the
generated order to complete purchase of the
Item whereby the item is ordered.

15. Software Patents
• patent on any performance of a computer realized by
means of a computer program
• Claims define the scope of protection
Patentability Requirements:
• Novel
• Non-obvious
Term: 20 years (from filing date of application)

16. Ebay Software Patent Claim
US Pat. No. 7,702,540
• 1.A computer-implemented method for conducting auctions on the Internet, the method
comprising: receiving over a communication network, by a communication handler
program executing on a networked market maker computer, information from a remote
computer of a first entity corresponding to an item for auction, the information received
via the communication network from the remote computer of the first entity including (i)
a designation of an item category, selected from a list of item categories presented at
the remote computer of the first entity, under which the item for auction is to be listed,
and (ii) input relating to scheduling an auction for the item; processing, by a mapping
module at the networked market maker computer, at least a portion of the received
information from a database format into a world wide web presentation format, the
presentation format including an indication of the selected designation of the category
of the item for auction; based at least in part on the selected category designation and
the auction scheduling information previously received from the remote computer of the
first entity, automatically initiating an instance of an ascending-bid auction process to
conduct an ascending-bid auction for the item over the Internet from the networked
market maker computer; wherein the automatically initiated auction process conducts
the auction to completion by performing operations including: presenting a depiction of
the item in the presentation format to a plurality of potential buyers; receiving at the
networked market maker computer one or more bids on the auctioned item from one or
more bidders; and terminating the auction after a predetermined time.

17. Design Patents
• Ornamental design on a functional product (Coke
bottle)
• Claims define the scope of protection
Patentability Requirements:
• Novel
• Non-obvious
Term: 14 years (from date of grant)

18. Google Homepage
US Pat. No. D599,372

19. ©2011 Barlow, Josephs & Holmes Ltd.
Plant Patents
• Must be invented and discovered
• Must be asexually reproduced (grafting)
• Must be distinct and new variety of plant
• Does not include tuber propogated plant or a plant
found in an uncultivated state
Term: 20 years (from date of filing)

20. Due Diligence – Patent Searching
• Informal Search
• www.uspto.gov
• Google® Patents
• Professional Search
• Guidance from an Examiner at USPTO
• Analysis and patentability opinion

21. File Patent Applications
• Prepare, file patent application, and prosecute
• Caution:
• U.S. - file within one year of first offer for sale, public disclosure
to ensure valid patent
• Foreign countries – no grace period

22. ©2012 Barlow, Josephs & Holmes Ltd.
RI State Trademark
• Contents – similar to Federal Registration except no
intent-to-use application; must have use
• See http://sos.ri.gov/business/trademark/forms/
• Limited Prosecution Phase – granted or refund
• Less Expensive Filing - $50
• Protection – extends to the boundaries of the state of
Rhode Island only(also available in MA, CT, etc.)
• No connection between Secretary of State
incorporation and RI State Trademark

23. ©2012 Barlow, Josephs & Holmes Ltd.
Federal Trademark Law
• Trademarks are indicia affixed to goods or used in
connection with the sale or advertising of services to
identify the source of the goods or services
• Many forms
• word mark
• slogan
• logo
• musical notes
• trade dress
• scents

24. Trademark Rights
• Common Law Trademark Rights TM
• Trademark Rights arise out of usage
• Rights accrue in geographic territory
• Federal Registration ®
• Nationwide protection
• Significant advantages
• Presumption of validity at trial
• Incontestability 5-6 years after registration
• Sample Federal Registration

25. Benefits of Trademarks for Small
Business
• 1. maximize product differentiation, advertising and marketing, thus
enhancing recognition of your product or service
•
2. increase revenues as consumers pay higher prices for branded
goods
• 3. derive loyalty largely due to consumer’s ability to recognize the
product and distinguish it from the products of competitors

26. Types of Trademarks
Arbitrary or Fanciful
Suggestive
Descriptive
Generic

27. Arbitrary, Fanciful Marks
• Unrelated to the goods or services
• Preferred
• easiest to register
• strong when connection is made with consumers
• Examples
• Nike Swoosh (shoes)
• YAHOO! (internet portal)

28. Suggestive Marks
• Implies a characteristic of the product
• Requires some imagination to connect mark with the
goods, usually registrable
• Examples
• SPARKLE (window cleaner)
• PENGUIN (food freezers)
• GOBBLE GOBBLE (turkey meat)

29. Descriptive Marks
• Product or its function is set forth in the mark
• Not inherently capable of identifying the source of the
goods or services
• Registrable if secondary meaning is shown
• Examples
• PRE-INKED (stamp pads)
• 5 MINUTE (five minute glue)

30. Generic Marks/Names
• Defines a class of goods
• Needed by competitors to adequately identify the
goods
• Not registrable
• Examples
• PHOTOCOPY MACHINE (copy machines)
• COMPUTER (computers)
• ASPIRIN (aspirin) - became generic over time

31. Domain Names and Trademarks
• Picking a Domain name
• 1. Pick a domain name that is not the subject of a third
party’s trademark registration or common law right
• 2. Pick a domain name that resonates with customers
and is capable of building good will (i.e. not generic or
merely descriptive)
• Enforcing a Trademark Against Domain Name Holder
• 1. Uniform Administrative Dispute Resolution Policy

32. Due Diligence -Trademark
Search
Informal Search: www.uspto.gov; Google
Professional Search:
-Federal trademark registrations
-Common Law trademarks
-Brand names
-Company names
-Domain names
-State Trademarks
-Internet usage
Note: Just because the Secretary of State’s Office says that a
name is available for incorporation, doesn’t mean it can used as a
trademark

33. File Registration Application
• File trademark application
• Types
• Use (mark already in use in interstate
commerce)
• ITU (bona fide intent-to-use)
• Office Actions
• Responses, Amendments
• Publication for Opposition in Official Gazette
• Registration Certificate

34. Trademark Registration
Maintenance
• Declaration of Continuous Use/Incontestability
(between 5 and 6 years from Federal Registration)
• Renewals every 10 years if mark is still in use
• 10 year term of registration

35. ©2011 Barlow, Josephs & Holmes Ltd.
Copyright Law
• What is copyrightable?
• Original Works of authorship fixed in a tangible medium of
expression – 17 U.S.C.102(a)
• What is NOT copyrightable?
• Ideas, facts (unless arranged in unique way), procedure,
process, system, method, concept, principle, discovery
• Examples of copyrightable Works
• books
• jewelry and sculptures
• photos
• performance art
• website
• software

36. Copyrights – Protection for Small
Business
• Is the work protectible?
• Original?
• Expression of ideas, not the ideas themselves
• non-functional
• Types
• Textbooks, magazines, newspapers
• Sculptures, jewelry designs
• Photographs
• Music, lyrics
• Content on the Internet

37. ©2011 Barlow, Josephs & Holmes Ltd.
Copyright - Limitations
• First Sale Doctrine – allows purchaser to transfer
(sell, lend, or give away) a particular lawfully made
copy of the copyrighted work without permission
once it has been obtained (CD, book, etc).
• Fair Use Doctrine – allows for copying for
purposes of criticism, comment, news, reporting,
teaching, scholarship, or research.
• Purpose and character of the use
• Nature of the work
• Amount of the work used in relation to the whole
• Effect of the use on the value of the work

38. ©2012 Barlow, Josephs & Holmes Ltd.
Copyright – Exclusive Rights
• Copyright is a bundle of exclusive rights:
• 1. reproduce the subject work
• 2. prepare derivative subject works
• 3. distribute copies of the subject work
• 4. perform the subject work publicly
• 5. display the subject work publicly

39. ©2011 Barlow, Josephs & Holmes Ltd.
Copyright Law – Registration Process
• I. Submit Application, Deposit, and fee to US
Copyright Office
• II. Refusal – If the deposit is not acceptable or not
copyrightable subject matter, the Copyright Office
may refuse registration and provide opportunity to
rebut
• III. Issuance – Certificate of Registration if there is
no Refusal
• IV. Duration – work created after January 1,
1978- term is from the moment of creation to 70
years after the author’s death – renewal not
required (post 1978)

40. ©2011 Barlow, Josephs & Holmes Ltd.
Copyright – Benefits of Registration
• Under current law, no registration is needed to preserve
copyright to an original work. Presumption of validity if
registered within 5 years of first publication.
• Copyright Registration is prerequisite to filing suit in
Federal Court, key to courthouse
• Timing of Copyright Registration
• Pre-infringement (or within 3 months of publication) all
remedies available - statutory damages (up to 30k per
infringement), attorneys fees
• Post-infringement: Not preferred, remedies such as
actual damages of copyright owner and profits -hard to
prove and likely less than statutory damages

41. ©2011 Barlow, Josephs & Holmes Ltd.
Copyright – Application Contents
• 1. name/address of copyright claimant
• 2. authors and nationality
• 3. work for hire statement
• 4. If claimant is not author, brief statement of how
claimant obtained ownership of the copyright
• 5. year of creation of work
• 6. date and nation of first publication
• 7. identification of any pre-existing works

42. ©2011 Barlow, Josephs & Holmes Ltd.
Copyright – Application Forms
• Registration with Paper Forms
• Form CO (pdf) – fill out online and mail along with $50 and
deposit
• Other Forms - $65 fee, deposit, and much slower
processing time
TX – literary works – books, catalogs, software
VA – visual arts – art, photographs, prints, drawings
PA – performing arts – music, motion pictures
See copyright.gov for forms/circulars/brochures
• Online Registration – eCO online system
• - lower filing fee - $35; faster time; online tracking; upload
deposits directly

43. ©2011 Barlow, Josephs & Holmes Ltd.
Copyright – Deposit
• Unpublished work – one complete copy
• Published work – two complete copies (unless
uploaded electronically)
• Special requirements
• Computer Programs – printout of the first 25 and last 25
pages of the source code, or entire program if less than 50
pages
• Databases – first 25, last 25 pages(single file) or 50 data
records (for multiple files)
• If trade secrets, then some portions may be blocked out
less than 25 first, 25 last

44. Copyright Marking Issues
• Copyright Notice Marking Preferred
• Use “©“, Year of first publication, then company/person claiming
ownership
• ©2000 Smith & Co.
• Notice not need to preserve copyrights
• Notice Used: Easier to prove willful infringement
• No Notice: Innocent infringement

45. Conclusion
• Identify
• Identify property and determine whether it is important to
you and your company
• Research
• Take early action to search inventions, clear trademarks
to avoid problems
• Protect
• File for appropriate patents, registrations
• Enforce
• Police property, pursue infringers