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