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Overview of Intellectual Property
An Overview of An Overview of Intellectual PropertyIntellectual Property
David R. Todd
Workman NydeggerSalt Lake City, Utah
Overview of Intellectual Property
Intellectual PropertyIntellectual Property::TrademarksCopyright
Trade SecretsPatents
Overview of Intellectual Property
TrademarkTrademark
Any word, name, symbol, or device used to identify and distinguish goods and
services
Overview of Intellectual Property
Types of MarksTypes of MarksSmells
In re Clarke, 17 USPQ2d 1238 (TTAB 1990).–Granting registration on “a high impact, fresh floral fragrance reminiscent of Plumeria blossoms” for “sewing thread and embroidery yarn.”
Overview of Intellectual Property
Purposes of TrademarksPurposes of Trademarks
1. Protect the Public
a. Identify, distinguish, and indicate source of goods and services
b. Assure of consistent quality
2. Protect Owner
a. Protect investment in goodwill
Overview of Intellectual Property
Exclusive RightsExclusive Rights
Prevent Others From Using The Mark So As To:
• Likely Cause Confusion As To Affiliation or Origin of Goods or Services
• Likely Cause Dilution of Distinctive Quality of A Famous Mark
Overview of Intellectual Property
Choosing a Strong Word MarkChoosing a Strong Word MarkChoosing a Strong Word MarkChoosing a Strong Word Mark
WeakerWeaker StrongerStronger
Generic Descriptive Suggestive Arbitrary & Fanciful
Overview of Intellectual Property
Choosing a Strong Word MarkChoosing a Strong Word Mark
Weaker Weaker StrongerStronger
Generic Descriptive Suggestive Arbitrary & Fanciful
Glue™ Extra Gentle™ Coppertone® Apple®
Adhesive Hand Lotion Suntan Lotion Computers
Overview of Intellectual Property
• As Long As The Mark Is Used
Length of Trademark Length of Trademark ProtectionProtection
Overview of Intellectual Property
CopyrightCopyrightSubsists in original works of authorship fixed
in any tangible medium
Examples
Music on cassette Paintings on canvas
Movies on DVD Novels in book form
Software on CD Articles in magazine
Sculpture in stone Reports in notebook
Overview of Intellectual Property
Purpose of CopyrightPurpose of Copyright Protect manner of Expression and Form
• No Copyright in Facts
• No Copyright in Ideas
• No Copyright in Functional,
Utilitarian Aspects of a Work
Overview of Intellectual Property
Exclusive RightsExclusive Rights
1. Reproduction of the Work
2. Preparation of Derivative Works
3. Public Distribution of Copies of the Work
4. Public Performance of the Work
5. Public Display of the Work
Overview of Intellectual Property
Fair Use ExceptionFair Use Exception
– (commercial / nonprofit)
– (fictional / nonfictional)
– (small portion / significant portion)
– (most important factor)
• Purpose of Use
• Nature of Work
• Amount of Work Used
• Effect of Use on Potential Market
Overview of Intellectual Property
Length of Copyright Length of Copyright ProtectionProtection
• Depends on date of creation, publication
• Created after Jan. 1, 1978:
• Author’s life + 70 years
• Work for hire: 95 years from publication or 120 years from creation, whichever comes first
Overview of Intellectual Property
Trade SecretTrade Secret
Anything that derives economic value from not being generally
known or readily ascertainable
Overview of Intellectual Property
Trade Secret ExamplesTrade Secret Examples• Coca Cola Recipe and Process
• Methods Embodied in Computer
Source Code
• Invention Disclosed Only to
Patent Office
Overview of Intellectual Property
Exclusive RightsExclusive Rights
Prevent Others From Using or
Disclosing “By Improper Means”:
• Theft, Bribery
• Breach of Duty or Agreement
• NOT Reverse Engineering
Overview of Intellectual Property
Length of Trade Secret Length of Trade Secret ProtectionProtection
• As Long As It Remains Secret
Overview of Intellectual Property
Utility PatentsUtility Patents
Right to exclude others from
making, using, or selling the
patented invention in the
United States
Overview of Intellectual Property
Patentable Subject MatterPatentable Subject Matter “Anything Under the Sun That Is Made By Man”
• Manufacturing Processes
• Mechanical Devices
• Chemical Compositions
• Genetically Engineered Organisms
• Methods Embodied in Software
• NOT Laws of Nature, Abstract Ideas, Natural Phenomena
Overview of Intellectual Property
Requirements for Requirements for PatentabilityPatentability
• Novel
• Not Obvious
• Useful
• Full Disclosure
Overview of Intellectual Property
Purpose of PatentsPurpose of Patents• Encourage Investment in R&D
• Encourage Disclosure
• Encourage Flow of Capital
• Allow Public Use After Limited Time
Overview of Intellectual Property
Loss of Right to PatentLoss of Right to Patent An inventor loses his right to a patent
if more than one year before filing:
1. Publication anywhere in world
2. Public use in the United States
3. Sale or offer for sale in the
United States
Overview of Intellectual Property
America Invents ActAmerica Invents Act An inventor loses his right to a patent
if before filing:
1. Publication anywhere in world
2. Public use anywhere in world
3. Sale or offer anywhere in world
…Unless inventor publishes first (within one year of filing)
Overview of Intellectual Property
Ownership of PatentsOwnership of Patents
1. Inventor Is Presumptively the Owner
2. Obligation to Assign to Employer When:
a. agreement to assign inventions
b. hired to solve a specific problem
c. hired to invent in general
Overview of Intellectual Property
Length of Patent ProtectionLength of Patent Protection
• Depends on date of issuance and date of pendency of application
• Since 1995: 20 years from filing + some possible adjustments
Overview of Intellectual Property
Scope of ProtectionScope of Protection “The Name of the Game is the Claim”
Patentability: Compare Claim to Prior Art
Infringement: Compare Claim to
Potentially Infringing
Product or Method
Overview of Intellectual Property
Scope of ProtectionScope of ProtectionYour Invention:
An apparatus comprising:
a generally flat member; and
at least one leg attached to the member for supporting the member in a generally horizontal fashion.
Overview of Intellectual Property
Scope of ProtectionScope of ProtectionAn apparatus comprising:
a generally flat member; and
at least one leg attached to the member for supporting the member in a generally horizontal fashion.
Not Patentable for Lack of Novelty
The Prior Art:
Overview of Intellectual Property
Scope of ProtectionScope of ProtectionAmended Claim 1a:
An apparatus comprising:
a generally flat, polygonally shaped member;
at least one leg attached at each corner of the polygonally shaped member for supporting the member in a generally horizontal fashion.
Overview of Intellectual Property
Scope of ProtectionScope of ProtectionAmended Claim 1b:
An apparatus comprising:
a generally flat member;
at least one leg attached to the member for supporting the member in a generally horizontal fashion ; and
a back rest oriented to support the back of a person sitting on the member.
Overview of Intellectual Property
Scope of ProtectionScope of ProtectionAmended Claim 1a:
An apparatus comprising:
a generally flat, polygonally shaped member;
at least one leg attached at each corner of the polygonally shaped member for supporting the member in a generally horizontal fashion.
No Infringement
Overview of Intellectual Property
Scope of ProtectionScope of ProtectionAmended Claim 1b:
An apparatus comprising:
a generally flat member;
at least one leg attached to the member for supporting the member in a generally horizontal fashion ; and
a back rest oriented to support the back of a person sitting on the member.
Infringement
Overview of Intellectual Property
Scope of ProtectionScope of ProtectionCompare Scope of Protection Available With Real–Live
Economic Value of That Scope
Overview of Intellectual Property
Ability to Practice Your Ability to Practice Your Own TechnologyOwn Technology
• The Ability to Practice Your Own Technology Can Be More Important Than Excluding Others From Exploiting It– Patents Provide Right to Exclude Others, Not The Right To
Practice
– Patent Office Does Not Examine for Infringement of Others’ Patents
– Avoiding Infringement of Others’ Patents Is Different From Establishing Novelty, Nonobviousness of Your Own Patent
Overview of Intellectual Property
Ability to Practice Your Ability to Practice Your Own TechnologyOwn Technology
An apparatus comprising:
a generally flat member; and
at least one leg attached to the member for supporting the member in a generally horizontal fashion.
Previous Patent:
Overview of Intellectual Property
Ability to Practice Your Ability to Practice Your Own TechnologyOwn Technology
An apparatus comprising:
a generally flat member; and
at least one leg attached to the member for supporting the member in a generally horizontal fashion.
Infringed by Your Technology!Previous Patent:
Overview of Intellectual Property
Ability to Practice Your Ability to Practice Your Own TechnologyOwn Technology
• Clearance Searches
• Designing Around
• Opinions of Counsel
• Procuring Licenses