5020 Montrose Blvd., Suite 750Houston, TX 77006

713.426.3923832.900.4941 (fax)

713.857.6005 (mobile)

WHAT IN-HOUSE COUNSEL NEEDS TO KNOW ABOUT IP

August 14, 2015

Types of IP &

What They Protect

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Protect inventions• process • machine• article of manufacture • composition of matter • improvement

Patents

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Patents

E.g..:• hammer• way to use the hammer • hammer’s ornamental design

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Patents

Invention must be:• new• useful• nonobvious

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Patents

Indicia of nonobviousness:(1) long felt but unsatisfied need(2) appreciation problem existed but unrecognized what it was(3) unsuccessful attempts to solve the problem(4) commercial success(5) invention’s replacement of prior art(6) copying of the invention(7) acquiescence to patent’s validity by licensing or avoiding infringement(8) teaching away from the invention(9) invention’s unexpected results(10) disbelief and incredulity that the invention worked

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Copyright

Protects original works of authorship fixed in a tangible medium of expression

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Copyright

E.g.:(1) literary works(2) musical works(3) dramatic works(4) pantomimes and choreographic works(5) pictorial, graphic, and sculptural works(6) motion pictures (7) sound recordings(8) architectural works

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Copyright

Protects expression • of an idea, not the idea• of a fact, not the fact

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Marks & Trade Dress

Trademark• word • name• symbol • device or• combination thereof

that identifies and distinguishes goods and indicates source of goods

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Marks & Trade Dress

Service mark• word • name• symbol • device or• combination thereof

that identifies and distinguishes services and indicates source of services

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Marks & Trade Dress

Trade Dress• design or • packaging

that has obtained secondary meaning—i.e., identifies product with its manufacturer or source

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Marks & Trade Dress

Trade Dress• design or • packaging

that has obtained secondary meaning—i.e., identifies product with its manufacturer or source

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Trade Secret

Protects information• having economic value because of secrecy and• subject to reasonable secrecy efforts

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Trade Secret

E.g.:• formula• compilation• program• device• method• list—actual or potential customers• list—actual or potential suppliers

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Violations of IP Rights(Infringement)

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Patent Infringement

Direct Infringement• without patent owner’s authority

- make, use, offer to sell, or sell within the U.S. or

- import into the U.S. the claimed invention

• ask for FDA approval of a patented (drug or use) drug claimed in a patent or the use of which is claimed in a patent

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Patent Infringement

Infringe a claim, not a patent generally

Name of the game is the claim.

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Patent Infringement

Infringement• accused device/use/etc. has every element of a claim

- literally or by an equivalent

Doctrine of Equivalents• No substantial difference between claim element and

accused element

Patent Infringement

Inducing Patent Infringement• encouraged infringing act• knew of the patent and• knew, or should have known, induced acts would infringe

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Copyright Infringement

• make copies• create derivative works• distribute copies• perform publicly• display publicly

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Copyright Infringement

Fair Use• purposes such as

- criticism- comment- news reporting - teaching- scholarship- research

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Copyright Infringement

Fair Use• Factors

- use’s purpose and character (e.g., commercial nature or nonprofit educational)

- copyrighted work’s nature- amount and substantiality used in relation to

copyrighted work as a whole- use’s effect on copyrighted work’s potential

market or value

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Copyright Infringement

Potential statutory damages if work is federally registered

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Marks Infringement

(1) mark ownership(2) mark is valid and legally protectable

and (3) other’s use of the mark to identify

goods or services is likely to create confusion concerning the origin of the goods or services

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Marks Infringement

Factors• type of mark infringed• similarity between

- the two marks- similarity of the products or services

• identity of - retail outlets and purchasers- advertising media used

• defendant’s intent• actual confusion

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Marks Infringement

Potential treble damages and attorney fees if mark is federally registered

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Trade Secret Misappropriation1. acquire TS if knew or had reason to know acquired by

improper means2. disclose or use TS if acquired by improper means3. disclose or use TS if knew or had reason to know

obtained: • under duty to keep secret or limit use• from entity who owed such a duty or• from entity who obtained by improper means

4. disclose or use TS—before a material change of your position—you knew or had reason to know:• TS was a TS and • obtained by accident or mistake

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Patents:• USPTO chart: Process for Obtaining a Utility Patent: • USPTO’s Inventors Assistance

Copyrights:• Copyright Basics• Fair Use

Trademarks:• Federal Trademark process• Likelihood of Confusion

Trade Secrets:• Texas Uniform Trade Secrets Act • Texas Penal Code § 31.05 – Theft of Trade Secrets 

Additional links: • at www.intellectual-property-laxton.com/

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Ramey & Schwaller, LLP5020 Montrose Blvd., Suite 750

Houston, TX 77006713.426.3923

832.900.4941 (fax)