Intellectual Property: Intellectual Property: an Overviewan Overview
InventionsInventions
Valuable Secrets Valuable Secrets
Works of AuthorshipWorks of Authorship
Commercial Symbols Commercial Symbols
Common Forms of IP Common Forms of IP Patents Patents Trade SecretsTrade Secrets
DatabasesDatabases Copyrights Copyrights Unfair Competition Unfair Competition Trademarks & Trade Dress Trademarks & Trade Dress Sui GenerisSui Generis Protections: Protections:
Semiconductor chips, asexual plants, designs, Semiconductor chips, asexual plants, designs, petty patents, Databases, boat hull design, petty patents, Databases, boat hull design, contractual restrictionscontractual restrictions
Distinguishing IP from Distinguishing IP from TangiblesTangibles
Tangible Property Tangible Property Physical substance Physical substance Only one copy exists, totally exhaustible Only one copy exists, totally exhaustible
Intangible Property Intangible Property
No physical substanceNo physical substance Often only represented by something of Often only represented by something of
substance substance Apparent inexhaustibility Apparent inexhaustibility
IP Theory & Economics IP Theory & Economics Incentive Theory Incentive Theory
Investment likely when exclusivity assured Investment likely when exclusivity assured Suboptimal investment w/o ownership & Suboptimal investment w/o ownership &
control control Lockean theory of initiative: innovation Lockean theory of initiative: innovation
forthcoming w/ rewards of private property forthcoming w/ rewards of private property Contract Theory Contract Theory
Maximize the public domain Maximize the public domain Ltd. monopoly exchanged for disclosure Ltd. monopoly exchanged for disclosure
Patentable Subject Matter Patentable Subject Matter
New, Useful & Human-made New, Useful & Human-made
1.1. Process Process
2.2. Machine Machine
3.3. Manufacture Manufacture
4.4. Composition of Matter Composition of Matter
Novelty Novelty Not in The Public Domain Not in The Public Domain Statutory Bars:“Known or Used...Patented Statutory Bars:“Known or Used...Patented
or Published” or Published” Diligence Diligence
Not abandon, suppressed or concealedNot abandon, suppressed or concealed The U.S. One Year Grace PeriodThe U.S. One Year Grace Period
No Public Use or Sale No Public Use or Sale US: no use or sale US: no use or sale World: no patent or publicationWorld: no patent or publication
Non-ObviousnessNon-Obviousness
Patent should not grant if the advancement is Patent should not grant if the advancement is small, merely minor improvements over prior small, merely minor improvements over prior artart
Not obvious at the time of invention to one Not obvious at the time of invention to one skilled in the artskilled in the art
Graham v. John DeereGraham v. John Deere::1. Determine scope and content of the prior art 1. Determine scope and content of the prior art 2. Determine differences between prior art and 2. Determine differences between prior art and
the claim(s) at issue; the claim(s) at issue; andand3. Determine the level of ordinary skill in the 3. Determine the level of ordinary skill in the
pertinent artpertinent art
Confidentiality of Confidentiality of Application MaterialsApplication Materials
Trade Secrets Maintained? Trade Secrets Maintained? Most nations - confidential only for 18 mos Most nations - confidential only for 18 mos
after filingafter filing U.S. law changed to Int’l Standard:U.S. law changed to Int’l Standard:
Confidential only for 18 months if application is Confidential only for 18 months if application is also filed in country that publishes files after 18 also filed in country that publishes files after 18 monthsmonths
Otherwise, confidential until patent issues, then Otherwise, confidential until patent issues, then publicly available unless national security matter publicly available unless national security matter
Trade Secret Under Uniform Trade Secret Under Uniform Act Act
information (formula, pattern, information (formula, pattern, compilation, program, device, compilation, program, device, method, technique or process) method, technique or process)
derives independent economic derives independent economic value from secrecy or by proper value from secrecy or by proper means discovery by potential means discovery by potential competitors, and competitors, and
subject of efforts, reasonable subject of efforts, reasonable under the circumstances, to under the circumstances, to maintain secrecy.maintain secrecy.
Eligible Information: Eligible Information: pattern, device, engineering data, formulas, pattern, device, engineering data, formulas,
customer lists or preferences, raw materials, customer lists or preferences, raw materials, manufacturing processes, design manuals, manufacturing processes, design manuals, operating & pricing policies, price codes, bid operating & pricing policies, price codes, bid information, method, technique, information, method, technique, bookkeeping methods, market bookkeeping methods, market studies/research, sales data, marketing studies/research, sales data, marketing plans/strategies, new product information, plans/strategies, new product information, business plans, equipment & machinery, business plans, equipment & machinery, program, software, flow charts, drawings, program, software, flow charts, drawings, blueprints, negative results, unique blueprints, negative results, unique compilation or combination of public domain compilation or combination of public domain info, know-how info, know-how
Duty of Secrecy Duty of Secrecy Implied Confidentiality Duty Implied Confidentiality Duty
Fiduciary duty of loyalty Fiduciary duty of loyalty Express Confidentiality Agreements Express Confidentiality Agreements
NDANDA Employment contract; covenant not to Employment contract; covenant not to
competecompete independent contract, consulting independent contract, consulting
contract, certain distribution contracts, contract, certain distribution contracts, franchise agreement, prior assignment franchise agreement, prior assignment of innovations,of innovations,
Employee Confidentiality Employee Confidentiality Agreements (NDA) Agreements (NDA)
Provision or addendum to employment Provision or addendum to employment contract imposing confidentiality contract imposing confidentiality
Continuously updated list of specified Continuously updated list of specified documents, projects, corporate documents, projects, corporate functions, etc. functions, etc.
Establish ownership of particular Establish ownership of particular innovations innovations
Define theft of IP, custody or removal Define theft of IP, custody or removal of documents, files, computer disks, E-of documents, files, computer disks, E-MailMail
What are Databases under What are Databases under Law?Law?
Systematic data Systematic data accumulation/ordering accumulation/ordering Collections of works, data or other Collections of works, data or other
materials arranged in a systematic or materials arranged in a systematic or methodical way for retrieval or access methodical way for retrieval or access by manual or electronic means by manual or electronic means
Used for learning, research, science, Used for learning, research, science, governing & control, commercegoverning & control, commerce
File composed of records, each with File composed of records, each with fields, operations search, sort &/or fields, operations search, sort &/or recombine for useful report recombine for useful report
Elements of CopyrightabilityElements of Copyrightability
Must be Must be originaloriginal Must be Must be fixedfixed in a tangible in a tangible
medium of expressionmedium of expression Must be directly or indirectly Must be directly or indirectly
perceivableperceivable by humans by humans
Types of Types of Copyrightable WorksCopyrightable Works
Literary worksLiterary works
Architectural worksArchitectural works
Sound recordingsSound recordings
Motion pictures and A/V works
Motion pictures and A/V works
Pictorials, graphics, and sculptures
Pictorials, graphics, and sculptures
Musical worksMusical works
Dramatic worksDramatic works
Pantomimes and choreography
Pantomimes and choreography
Non-copyrightable MaterialNon-copyrightable Material
Ideas are not copyrightable – only the Ideas are not copyrightable – only the expression of ideas.expression of ideas.
Includes ideas, procedures, processes, Includes ideas, procedures, processes, systems, methods of operation, systems, methods of operation, concepts, principles, or discoveries.concepts, principles, or discoveries.
The The idea-expression dichotomyidea-expression dichotomy rule rule states that creators can maintain states that creators can maintain control over ideas only if they qualify as control over ideas only if they qualify as patentable or remain as trade secrets.patentable or remain as trade secrets.
Trademark ProtectionTrademark Protection
Word, Name Symbol, DeviceWord, Name Symbol, Device Recently: color, sound, smell Recently: color, sound, smell
Identifies Source of Goods or Services Identifies Source of Goods or Services Distinguishes from competitors Distinguishes from competitors
Protection Schemes:Protection Schemes: State C/L, misappropriation, unfair State C/L, misappropriation, unfair
competitioncompetition Federal registration under the Lanham ActFederal registration under the Lanham Act Int’l: Paris Conv, Madrid Arrange, Pan-AmInt’l: Paris Conv, Madrid Arrange, Pan-Am
Trademark’s Fundamental Trademark’s Fundamental PurposePurpose
Trademarks differ conceptually from Trademarks differ conceptually from patents, trade secrets, or copyrights.patents, trade secrets, or copyrights.
Promote business ethicsPromote business ethics Prevent palming offPrevent palming off Symbol or device identifies sourceSymbol or device identifies source Knowledge about prior useKnowledge about prior use Likelihood of confusionLikelihood of confusion
Protect investments in goodwillProtect investments in goodwill Promote Distributional EfficiencyPromote Distributional Efficiency
Consumer search costsConsumer search costs savings outweigh savings outweigh costs of regulation & forgone competitor costs of regulation & forgone competitor opportunities opportunities
Identifiers are often suggestive Identifiers are often suggestive
DistinctivenessDistinctiveness Capacity to distinguish owners Capacity to distinguish owners
goods or services goods or services Protectability ScaleProtectability Scale Ranges from Descriptive to Ranges from Descriptive to
Distinctive Distinctive Spectrum of Distinctiveness – a Spectrum of Distinctiveness – a
Scale of Decreasing Protectability Scale of Decreasing Protectability Arbitrary or Fanciful Arbitrary or Fanciful Suggestive Suggestive Descriptive Descriptive Generic Generic
Trade DressTrade Dress Configuration of package, product &/or Configuration of package, product &/or
premises premises 3D design, ornamentation, color scheme, sound, 3D design, ornamentation, color scheme, sound,
smell, ambience, look & feelsmell, ambience, look & feel Not merely decoration; must serve to distinguish Not merely decoration; must serve to distinguish
& make a commercial impression& make a commercial impression Must be distinctive & not primarily functional Must be distinctive & not primarily functional
Separate protection & consumers impressionSeparate protection & consumers impression EX: EX:
Website, homepage distinctive graphics Website, homepage distinctive graphics Pole lamp Pole lamp Taco Cabana patio Mexican restaurantTaco Cabana patio Mexican restaurant
http://www.tacocabana.com/http://www.tacocabana.com/
Trademark Subject MatterTrademark Subject Matter
WordsWords TitlesTitles NumeralsNumerals AbbreviationsAbbreviations Product package Product package
designdesign
Slogans Slogans ColorsColors SmellsSmells SoundsSounds Manufacturer’s Manufacturer’s
premisespremises
The Coca Cola trademark is an example of a The Coca Cola trademark is an example of a product in which the recipe, bottle design, and product in which the recipe, bottle design, and brand name are all trademarks.brand name are all trademarks.
Legal Tools for Technology Legal Tools for Technology TransferTransfer
Assignments Assignments Licensing: scope, duration, fields of use, Licensing: scope, duration, fields of use,
compensation, geographic limits, etc. (e.g., compensation, geographic limits, etc. (e.g., software “sales,” terms & conditions of software “sales,” terms & conditions of website use)website use)
Shop Rights Shop Rights Work Made for Hire; Hired to Invent; M-S & S/E Work Made for Hire; Hired to Invent; M-S & S/E Confidentiality DutiesConfidentiality Duties
Non Disclosure Agreements (NDA) Non Disclosure Agreements (NDA) Non-Competition Agreements (non-competes) Non-Competition Agreements (non-competes)
Emerging Inevitable Disclosure DoctrineEmerging Inevitable Disclosure Doctrine Leasing, FranchisingLeasing, Franchising
Common License Terms Common License Terms
Scope & ExclusivityScope & Exclusivity Duration & TerminationDuration & Termination Geographic Limitations Geographic Limitations Confidentiality & Non-Competition Confidentiality & Non-Competition Establishes & Perpetuates Trade Secrets Establishes & Perpetuates Trade Secrets Limits on Improvements & Sub-Limits on Improvements & Sub-
Licensing Licensing Warranties of IP Ownership Warranties of IP Ownership
Infringement indemnity Infringement indemnity