The Basics of Intellectual Property: A Guide for Businesses & Strategies for success in the age of 3D printing.

1. The Basics of Intellectual Property:
A Guide for Businesses

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3. Types of Intellectual Property (“IP”)
 Patents
 Trademarks
 Trade Dress
 Copyrights
 Trade Secrets
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4. Why Worry About IP?
 Protect competitive advantage
– Exclude Others
 Attract capital
 Enhance company’s valuation
 Use IP as a marketing edge
 Revenue Stream
– Sell
– License
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5. What is a License?
 A contract between licensor and licensee
 Licensor grants to licensee the right to
practice/use 1) the technology claimed in the
licensed patent, 2) the trademark owned by the
Licensor, 3) the copyrighted material
 Licensor agrees not to sue licensee for infringing
licensor’s patent, trademark, and/or copyright

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7. What is a Patent?
 Exclusive rights granted to an inventor or assignee for a
limited period of time in exchange for detailed public
disclosure of an invention
– “Negative right”
– Right to Exclude Others
 Could be product or process/method
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8. Invention is Patentable if…
 New
 Useful
 Not Obvious
 Pertains to Patentable Subject Matter
– Process
– Machine
– Composition of Matter
– Article of Manufacture
 Grant of Patent Not Barred
– 1 Year After Disclosure, Sale, Offer for Sale (Grace
Period)
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9. Types of Patents
 Utility
– Process, machine, article of manufacture, etc.
– Term: 20 years from date of filing
– Provisional vs. Non-provisional
 Design
– Ornamental design of an object
– Term: 15 years from date of issue
 Plant
– Asexually reproduced plant varieties
– Term: 20 years from date of filing

10. Utility Patents
 Provisional Patent
– Provisional patent buys you place in line
– Provisional patent buys you time, and thus is good
strategy while business is forming
• Cheaper
• Less formal
– Mark “Patent Pending”
– Never Examined/Published
– Good for One Year
 Non-Provisional (Utility) Patent
– Utility patent is examined in the USPTO
– When granted, right to exclude others
– 20 year term from date of filing

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12. Design Patents
 Ornamental Design Only /
Not Functional Protection
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13. Patent Searching
 Patentability / Novelty
 Freedom to Operate
 Invalidity
 Collection / State of the Art

14. Common Patent Pitfalls
 Delay in filing
– First-to-file
– Miss Grace Period Deadline
• Distribution of products prior to filing
• Samples taken home
– No one-year Grace Period in most foreign countries
 Not thinking about other uses, alternative
embodiments
 Joint ownership issues

15. Disclosures Exceptions
 Experimental Use/Testing
– Test/Confidentiality Agreement
 Derived from Inventor

16. Foreign Rights
 PCT
– Filing within year of Disclosure
– Making the Choice which Countries to File (142 countries)
 National Filings
 Hague Agreement – International Design Option
– Most countries members (not Canada, China,
Australia, Russia)
– Up to 100 designs in same class
– Computer Generated and Photographs
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19. What are Trademarks?
 Word, name, symbol, color or combination used
to identify source of goods or services
 Represented by the TM or SM or ® symbols
 Term: 20 Years – Renewable - Can be perpetual
 Rights terminate upon cessation of use with
intent not to resume use

20.  Trademarks® , ™
– A trademark identifies tangible good or
product of a company or individual
 Servicemarks ®, SM
– A service mark identifies the service(s) of a
provider
 Marks used by a company can function as both
(e.g., McDonald’s)
Marks

21. Acquiring Trademark Rights
 Types of trademark
– TM: A Trade Mark™ - used before registration
– SM: A Service Mark SM - used before
registration
 Used in Interstate Commerce
 Rights by Registration®

22. Registering Key Trademarks
 Requirements for registration
– No likelihood of confusion
– Must be Distinctive
• Generic, descriptive, suggestive, arbitrary
 Federal Trademark Application
– Intent-to-Use
– Actual Use
 State Trademark Application
 Alternative: Rely on common law rights

23. Selecting a Mark
 Distinctiveness Spectrum
Auto
Mechanic
Blu-Ray

24. Trademark Clearance
 Avoid infringement of other trademarks
 Ensure strong brand protection
 Two types of searches
– Knock-out
– Comprehensive

25. Common Trademark Pitfalls
 Selection of Trademark is descriptive of
goods/services
 No clearance search
 Trademarks are not properly used
– Adjective
– Labeling
 Stop Using

26. Foreign Rights
 Madrid Protocol
 Individual Countries
 European Union Trade Mark
–(f/k/a Community Trade Mark)
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27. What is Trade Dress?
 Design and appearance of a
product together with the
elements making up the
overall image that serves to
identify the product
presented to a consumer.
 Trade dress may include
features such as size, shape,
color or color combinations,
texture, graphics.

28. Trade Dress Examples
 Store/Restaurant Décor
 Bottle Shape
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29. Protectable Elements of Trade Dress
 Non-Functional Aspects
– Configuration of shapes, designs, colors, or materials
that make up the trade dress must not serve a
utility or function outside of creating recognition
– Color Red

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31. What are Copyrights?
 Rights in the expression of an idea or
information – Not the idea itself
 Examples: software code, videos, photos,
graphics, text, music, sculptural works
 Basic Term: Life of the author + 70 years

32. Copyright Requirements
 Original
– The term original in the copyright law means that the
work originated with the author.
– There is no requirement for novelty or uniqueness as
there is in patent law.
 Fixed in a Tangible Medium
– Any stable medium that will record or reproduce the
material is acceptable
– Computer software satisfies the fixation the moment
the material is stored
– A computer display is considered fixed even if it
appears momentarily and only returns under certain
conditions (games)

33. Duration
 Depends on whether it is pre or post 1 January
1978
 Pre: Depends on whether published? Registered,
first term, renewal, etc.
 Post:
– Life of author + 70 years
– Work-for-hire 95 years from publication, 120 years from
creation which ever is shorter

34. Ownership
 Works for Hire: Employer is considered the author
when:
– Work prepared by an employee within the scope or his/her
employment
– Work specially ordered or commissioned for use as a
contribution to a collective work
 Transfer of Title v Work-for-Hire
– Under a work for hire, employer is considered the owner.
Duration 95 years from pub or 120 from creation
 Joint Works: 2 or more people make contributions of
authorship with intention contributions be merged
into inseparable work
– Equal Rights

35. Fair Use
 Limited use without owners permission
– Criticism, comment, parody, news reporting, teaching,
scholarship or research
– Criteria
 Purpose and character of use
 Nature of original work
 Amount of work used
 Extent of harm

36. Fair Use Examples
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37. Fair Use Examples
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38. Fair Use Examples
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39. Common Copyright Pitfalls
 Not getting assignments/agreements
̶ From website designers, software developers,
photographers, etc.
 Unauthorized use of images, music, videos and
text

40. Common Copyright Pitfalls
 Not getting assignments/agreements
̶ From website designers, software developers,
photographers, etc.
 Unauthorized use of images, music, videos and
text

41. Why Register a Copyright?
 Statutory Damages
– Up to $150,000 per copy if willful!!!
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43. What are Trade Secrets?
 Valuable, confidential information not generally
known by the public
 Examples: KFC chicken recipe, formula for Coca-
Cola, Google algorithm
 State Law (new Federal Action)
 Term: Can be Perpetual
– Rights terminate upon public disclosure
– Nondisclosure agreements

44. Common Trade Secret Pitfalls
 Not identifying all trade secrets (failure to realize
trade secret exists)
 Lack of confidentiality and nondisclosure
agreements
 Inadequate physical and electronic security

45. Questions?
 Myers Dill
 myers.dill@huschblackwell.com
 (314) 345-6236
 LinkedIn: Myers Dill
 Twitter: @MyersDill
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46. The Shape of Things to Come – Strategies for
Success in the Age of 3D Printing

47. What is 3D Printing and
How Does it Work?
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48. State of 3D Printing
 As of 2014:
– 80,000 industrial printers worldwide since 1988
– 140,000 desktop printers sold in 2014 alone
– 38% of industrial printers are in U.S.
 Japan is 2nd
 China is 3rd
 Total market as of 2014:
– $4.1B (includes prototyping + other non-commercial
uses)
– $2B in products
 2016 market expected to grow to $7B
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49. State of 3D Printing
 Standards being formulated
 Improvements: Speed, accuracy, materials
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50. State of 3D Printing
 3D Printing Technologies
– Blown Powder: Metal powder blown coaxially to the
laser beam which melts the particles on a base metal
to form a metallurgical bond when cooled
– Thermal Extrusion: Thermoplastic filaments heated
through a nozzle
– Stereolithography: UV-light
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51. State of 3D Printing
 3D Printing Technologies
(cont’d)
– Selective Laser Melting (SLM);
Selective Laser Sintering
(SLS); Electron Beam Melting
(EBM)
– Ink-jetting Photopolymer
process: Tiny droplets of
liquid photopolymer onto a
tray & cured with UV-light
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A laser or electron
beam melts or sinters
powder (metal or
plastic parts)

52. State of 3D Printing
 Printer Capabilities
– Multi-color and multi-material 3D printers
– Printers capable of creating objects with both
electrically conductive and insulating materials:
 Thermoplastics
 Inks
 Pastes
 Photopolymers
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53. State of 3D Printing:
Snapshot of the 3D Printer Players
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54. 3D Printer Materials
State of 3D Printing
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55. State of 3D Printing
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56. State of 3D Printing
 Fashion:
̶ Jewelry
̶ Dresses
̶ Shoes
 Food
 Aerospace
 Homes
 Prototyping
 Pharmaceutical
 Medical
̶ Orthopedics/prosthetics
̶ Dental implants
̶ Prototyping surgical
operations/surgical planning
̶ Skeletal reconstruction
̶ Tissue and organ replication
(ear, nose, body parts)
 Hobby
 Much more
 3D Printing Applications
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57. FDA Approves First 3D Printed Pill
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58. Examples of “Printing” Footwear
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59. State of 3D Printing
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Aerospace America, July-August 2015 edition

60. Thermoplastic Powder – Case Study
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 Using 3D printing for approximately 13 years
 Using laser sintered thermoplastic parts in production for
10 years
 Over 20,000 3D printed parts used in non-critical
applications

61. Metal Powder – Case Study
 GE Aviation is printing over 114,000 fuel nozzles for use
in 6,000 jet engines that will start flying in 2016.
 They are using Direct Metal Laser Melting (DMLM) to
melt 20-100 micron layers of a powdered alloy.
 Previously nozzles were manufactured by welding
together 18 smaller pieces which was labor-intensive
and wasteful.
 Design flexibility has allowed the nozzle to be 25%
lighter.
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63. State of 3D Printing
 Service Providers
– Connect 3D manufacturers with customers
– Industrial based/commercial grade products
– Distinctive network of printers/all technologies
 Manufacturers execute agreement with service providers
– One service provider: 32 manufacturers using 266
different types of printers
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64. State of 3D Printing
 Service Providers
– Service provider develops 3D blueprint
– Manufacturers bid on projects
– Customer selects
– Service provider issues license to selected
manufacturer
– Send customer instructions
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65. Impact on Manufacturing
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66. Impact on Manufacturing
 No entry barriers
 Digital scans/digital
blueprints replace
products
 Mass customization
possible
 File sharing ramifications
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67. Impact on Manufacturing
 Reduced shipping and
production costs
 Reduced logistic footprint
 Potential applications
(limitless)
 Customers replace
manufacturers
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68. New Manufacturing
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70. Legal Issues
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Intellectual Property
Tax Treatment & Accounting of
Print-to-Order Revenue
Packaging &
Transportation
Commercial
Contracts
Licensing
Agreements
Imports/Exports
Higher Education
Healthcare
Food and Drug
Administration (FDA)
Regulatory
Product Safety &
Warranty
Product & Environmental
Regulations
$

71. 3D Printing – Intellectual Property
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72. Who Are the Players?
 Intellectual Property
– Manufacturers of 3D printers
– Product manufacturers and designers
– Scanners/digital blueprint designers
– Customers
– Distributors
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73. Manufacturers and Designers
 Infringement
– Patents
 Replacement parts
– Trademarks
 Counterfeit goods
– Copyrights
 Need a Well-Rounded IP Strategy
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74. Manufacturers and Designers
 Infringement of Patented Product
̶ Who is the infringer?
 Third party fabricator?
 3D printer manufacturer?
 Scanner/creator of digital blueprints?
 Someone who distributes the digital blueprint?
 Distributor of product?
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75. Manufacturers and Designers
 Infringement of Trademark (™)
̶ Trade Dress
̶ Molding Trademarks into Product
 Infringer can remove trademark
 Embedding code into the product
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76. Manufacturers and Designers
 Infringement of Copyright (©)
– Sculptured works - easier to copy
– CAD program (engineering drawings)
– Electronic instructions to 3D printer/Digital
blueprint
– Digital blueprint - easy to transmit to anyone
 3D printing repositories/databases
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77. Intellectual Property
Alternate Ways to Protect Products
 Copyright for 3D product configuration and
software for design? Who owns software, if
contract with someone to write code?
 Trade Dress
 How we structure patent claims (scanners):
̶ Method Claims – manufacturing by 3D printing
̶ Product by process claims
̶ Claims for computer readable storage medium (i.e., digital
blueprint)
̶ Scanning Method Claims
̶ Design patents
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78. Distributors
 Risk Analysis:
– Indemnification
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Questions?