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An overview of intellectual property including patents, trademarks, copyrights, and trade secrets.
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Basics Of Intellectual Property© 2007 O’Melveny & Myers LLP
Paul Veravanich
Alison Taub
Corporate Counsel Seminar SeriesFebruary 27, 2007
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Overview Of Presentation
Copyright law basics Trademark law basics Patent law basics and contrast
with trade secret protection
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Copyright Law Basics
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What Is A Copyright?
A form of protection provided to the authors of “original works of authorship”.
The exclusive right of an author to– copy a work,– distribute copies– create derivative works, and– perform or display a work publicly
Is of a limited term
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Requirements For Copyright
Work must be original– not copied– meet a minimal threshold for originality
Work may be any work of authorship– books, poems, plays, movies, dances,
ballets, musical compositions, audio recordings, paintings, drawings, sculptures, photographs, software
Work must be fixed in a tangible medium of expression
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What Is A Copyright?
Key statutes:– 1976 Copyright Act – Berne Convention
Implementation Act (1988)– Sono Bono Copyright Term
Extension Act (1998)
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What Can’t Be Protected By Copyright?
Works that have not been fixed in a tangible form of expression.
Titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents. (Trademark can cover some of these)
Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration. (Patents can cover some of these)
Works consisting entirely of information that is common property and containing no original authorship.
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Term Of A Copyright
Life of the author plus 70 years (works created after Jan. 1, 1978)
Works of corporate authorship: 95 years from the date of first publication or 120 years from the date of creation, whichever expires first
Term for works created before 1978 is complex
Works published before 1923 are all in the public domain
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Copyright Notice Requirements
Use of a copyright notice was part of previous U.S. statutory requirements– "©“ or "Copyright", followed by the year of
the first publication of the work and the name of the copyright holder
Use of copyright notice now optional– Since 1976, when the U.S. passed a new
Copyright Act that followed the 1886 Berne Convention
Notice of copyright and damages “All rights reserved”
– Result of the Buenos Aires Convention of 1910; now superfluous
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Other Copyright Concepts
Works made for hire Federal works International rights
– Berne Convention
Remedies– Generally civil law court, but criminal statutes exist
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Trademark Law Basics
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What Is A Trademark?
A distinctive sign of some kind which is used to uniquely identify an entity’s products and/or services to consumers - an “Indicator of Source”– A trademark comprises a
name, word, phrase, logo, symbol, design, image, or a combination of these
The function of a trademark is to exclusively identify the commercial source or origin of products or services.
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What Is A Trademark?
Trademark rights arise out of the use and/or registration of a mark in connection only with a specific type or range of products or services. – Think of Apple Computer v. Apple
Records; United Airlines v. United Parcel;
– It may be possible to prevent the use of a mark in relation to products or services outside the specific range if it is likely that the business would expand into that range.
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Trademark Rights
Trademark rights are established through actual use in the marketplace
Benefits of registration A registered trademark confers a
bundle of exclusive rights upon the registered owner– the right to exclusive use of the
mark in relation to the products or services for which it is registered.
Once trademark rights are established in a jurisdiction, these rights are generally only enforceable in that jurisdiction
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Types Of Trademarks
Fanciful Arbitrary Suggestive Descriptive Generic Apple
Windows
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Trademark Notice Requirements
The ™ symbol may be used when trademark rights are claimed in relation to a mark, but the mark has not been registered
Services marks – SM
The ® symbol is used to indicate that the mark has been so registered.
It is not mandatory to use either symbol, but such notice can improve available remedies in the event of infringement
Either symbol is typically placed in the top left- or right-hand corner of a mark.
TM
®
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Other Trademark Concepts
Secondary Meaning Abandonment Genericide Naked Licensing
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Patent Law Basics and Contrast With Trade Secret Protection
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What Is A Patent?
Exclusive right for inventions– Right to exclude others from
making, using or selling a patented invention
– Not a right to practice invention
Limited time duration– Twenty years after filing date
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Public Policy Considerations
Objectives of a patent system– Reward inventor for skill and labor– Stimulate further efforts in the field– Secure to the public immediate knowledge
of the invention, and unrestricted right to use after patent expires
Contrast with trade secret law Contract theory
– Limited monopoly in exchange for complete disclosure of invention
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Reasons To Get A Patent
Competitive advantages Additional economic value Intangible value
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Requirements For Patentability
Utility (§ 101) Novelty (§ 102)
– Anticipation by prior art– Loss of right to patent invention
Non-Obviousness (§ 103)– Secondary considerations
Sufficiency of Disclosure (§ 112)– Written description– Best mode
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Elements Of A U.S. Patent
Bibliographical data Specification
– Drawings– Background– Invention Summary– Detailed Description of
Preferred Embodiment
Claims
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Process Of Obtaining A Patent
Identification Patent prosecution
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Identifying A Patentable Invention
Conception Review committee Communicate with
patent counsel
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Drafting A Patent Application
Meeting between inventor and patent counsel
Drafting of application Inventor review
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Prosecuting The Patent Application
Process Time Cost
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What Is A Trade Secret?
California Uniform Trade Secrets Act, Civil Code § 3426.1:
“Trade secret” means information, including a formula, pattern, compilation, program, device, method, technique, or process, that:
– Derives independent economic value, actual or potential, from not being generally known to the public or to others who could derive economic value from its disclosure or use; and
– Is the subject of reasonable efforts under the circumstances to maintain its secrecy.
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Examples Of Trade Secrets
“Trade secret” means information, including a formula, pattern, compilation, program, device, method, techniques, or process ….
Traditional examples of information that may constitute a trade secret
“Negative information”
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Maintain Secrecy
Trade secrets must be the subject of “reasonable efforts” to maintain secrecy: Cal. Civ. Code § 3426.1(d)(2)– A “trade secret” … “is the
subject of efforts that are reasonable under the circumstances to maintain its secrecy.”
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Secrecy Issues
Websites
Patent Disclosures
Articles
SEC FilingsSEC Filings
Plant ToursPlant Tours
SpeechesSpeeches
Trade ShowsTrade Shows
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Comparing Patents & Trade Secrets
Trade Secret PatentTerm Potentially unlimited Twenty years after filing
date
Disclosure Destroys protection Necessary for protection
Requirements Reasonable efforts to maintain secrecy
File with USPTO within one year of sale or publication
Scope of protection
Any technical or business information or data of value to a competitor if known
Technical apparatus or methods, compositions of matter, business methods
Reverse Engineering
Not actionable Actionable as infringement
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Thank You
Any questions?
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O’MelvenyO’Melveny&Myers
O’Melveny & Myers LLP610 Newport Center Drive, 17th FloorNewport Beach, CA 92660(949) 760-9600www.omm.com
Paul Veravanich(949) [email protected]@yahoo.comhttp://www.linkedin.com/in/veravanich
Alison Taub(949) [email protected]
For More Information, Contact:
