ip practice overview pres 2012

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Jim Chester, J.D. / LL.M.

Basics of Basics of Intellectual Property LawIntellectual Property Law

© J. F. Chester 2012

Why does IP matter?Why does IP matter?

•U.S. trade in commercial knowledge-intensive services and intangible assets—business, financial, and communications services, and payments of royalties and fees—has produced a consistent and growing surplus.

•It reached a record $108 billion in 2008, sufficient to counter-balance the high-technology goods deficit, and has been flat since then, reflecting the recession's effect.

Top IP “Myths”Top IP “Myths”1.1. Only large “high-tech” companies Only large “high-tech” companies

have IPhave IP

1.1. Securing your IP rights in the US will Securing your IP rights in the US will give you protection in other give you protection in other countries, as wellcountries, as well

- EVERY business has IP Assets. - A significant amount of innovation comes

from individual inventors & SME’s

In most cases, US IP rights mean nothing outside US

Types of IPTypes of IP

TrademarksTrademarks Any name, symbol, figure, letter, word, or Any name, symbol, figure, letter, word, or

mark adopted and used by a business to mark adopted and used by a business to designate its goods/services and to designate its goods/services and to distinguish them from those of othersdistinguish them from those of others

Includes service marks, certification marks Includes service marks, certification marks Also Trade Dress - Also Trade Dress - Identifies the source or good Identifies the source or good

by:by:• Packaging Packaging

• Total image of a productTotal image of a product

• Look and feel of businessLook and feel of business

Trademarks (Cont)Trademarks (Cont)

US is a “first to use” jurisdiction –common lawUS is a “first to use” jurisdiction –common law Can also register TMs with state & USPTOCan also register TMs with state & USPTO Trademark SymbolsTrademark Symbols

Federally Registered Trademark - Federally Registered Trademark - ®® Federally registered trademarks and service marksFederally registered trademarks and service marks

Non registered marks - (no legal significance)Non registered marks - (no legal significance)

Trademark -Trademark - ™™ (goods)(goods)

Service Mark Service Mark - - ℠℠ (services) (services) Must protect, or can lose:Must protect, or can lose:

• Gone: Aspirin; Ketchup ; Zipper; EscalatorGone: Aspirin; Ketchup ; Zipper; Escalator• Going? – Kleenex, Xerox, Band-Aid, Tivo, GoogleGoing? – Kleenex, Xerox, Band-Aid, Tivo, Google

Trademarks (Cont)Trademarks (Cont)

Trade Names Trade Names - - A name used to identify a A name used to identify a commercial product or servicecommercial product or service

Ex. General Electric, Inc. – legal nameEx. General Electric, Inc. – legal name GE – Trade name (i.e., GE – Trade name (i.e.,

“d/b/a”)“d/b/a”)

- Trademark- Trademark

IP ISSUE SPOTTINGIP ISSUE SPOTTING

Trademarks Trademarks – Situations that might give rise to – Situations that might give rise to legal work for a typical company include:legal work for a typical company include:

• Formation of new company or spin-offFormation of new company or spin-off

• New products/marketing campaignNew products/marketing campaign

• Enter new markets (incl. overseas)Enter new markets (incl. overseas)

• Notice a similar mark used by other companyNotice a similar mark used by other company

• Merger/Acquisition or FinancingMerger/Acquisition or Financing

Other Types of IPOther Types of IP

PatentsPatents- - the exclusive right to an inventor to the exclusive right to an inventor to manufacture, use, or sell an invention.manufacture, use, or sell an invention.

- Can only come from the US govt.- Can only come from the US govt.

- Must meet statutory requirements- Must meet statutory requirements

novel, useful, non-obvious, etc.novel, useful, non-obvious, etc.

- Expire after 20 years after filing – NO renewal- Expire after 20 years after filing – NO renewal (Design patents – 14yrs. From issue of patent)(Design patents – 14yrs. From issue of patent)


PatentsPatents– Situations that might give rise to legal – Situations that might give rise to legal work for a typical company include:work for a typical company include:

• Company invents a new productCompany invents a new product

• Company develops a new business methodCompany develops a new business method

• Start-up wants to raise money by pitching its Start-up wants to raise money by pitching its new invention/method to potential investorsnew invention/method to potential investors

• Learn of a competitor’s use of a patented Learn of a competitor’s use of a patented productproduct

• Merger/Acquisition or FinancingMerger/Acquisition or Financing


Trade SecretsTrade Secrets- Secrets - Secrets secrets kept from the world secrets kept from the world by that relate to how to manufacture, use, or sell by that relate to how to manufacture, use, or sell something (i.e., give a competitive advantage)something (i.e., give a competitive advantage)

- No registration required - No registration required

- Does not expire- Does not expire

- Must be protected (e.g., limited access, NDAs, - Must be protected (e.g., limited access, NDAs, etc.)etc.)


Trade Secrets Trade Secrets – Situations that might give – Situations that might give rise to legal work for a typical company rise to legal work for a typical company include:include:

• Same as “Patent” IssuesSame as “Patent” Issues

• Hire new employees or get new partnerHire new employees or get new partner

• Learn that former Employee sent company Learn that former Employee sent company materials to new employer while still materials to new employer while still working for company working for company


CopyrightCopyright- - exclusive right to make exclusive right to make copies, license, and otherwise exploit copies, license, and otherwise exploit a a literary, musical, or artistic work, literary, musical, or artistic work, whether printed, audio, video, etcwhether printed, audio, video, etc

- Can last 100 years- Can last 100 years

- Under Berne Convention, this is the - Under Berne Convention, this is the one type of US IP right that gets one type of US IP right that gets automatic protection in other automatic protection in other countriescountries

- Don’t need registration, but registration - Don’t need registration, but registration gives additional rights/benefitsgives additional rights/benefits


Copyright Copyright – Situations that might give rise to – Situations that might give rise to legal work for a typical company include:legal work for a typical company include:

• Creation of web siteCreation of web site

• Hire software company to develop proprietary Hire software company to develop proprietary contact management programcontact management program

• Create training materials/PPTsCreate training materials/PPTs

• AdvertisementsAdvertisements• Develop Firm newsletter or fact sheets to Develop Firm newsletter or fact sheets to

distribute to clients/post on web, etc.distribute to clients/post on web, etc.

Intellectual Property LawIntellectual Property Law

Three Main Elements:Three Main Elements:1.1. Securing IP Rights (directly & indirectly)Securing IP Rights (directly & indirectly)

2.2. Licensing IPLicensing IP

3.3. Enforcing IPEnforcing IP

-NDA’s/Confidentiality AgreementsNDA’s/Confidentiality Agreements

-Partner/JV AgreementsPartner/JV Agreements

-Assignments/TransfersAssignments/Transfers

-““Work for Hire” and development Work for Hire” and development agreementsagreements

Securing IP Rights - DirectlySecuring IP Rights - Directly

-StateState- TM/SM – Sec. of State TM/SM – Sec. of State -Trade Secrets (no registration)Trade Secrets (no registration)

-NationwideNationwide-TM, SM, trade dress – USPTOTM, SM, trade dress – USPTO-Patents – USPTOPatents – USPTO- Copyrights – US Library of CongressCopyrights – US Library of Congress

-International International -WIPO (Patent); Madrid Protocol (TMs)WIPO (Patent); Madrid Protocol (TMs)-Foreign Gov’tsForeign Gov’ts

Securing IP Rights - IndirectlySecuring IP Rights - Indirectly

Licensing IPLicensing IP

No “cookie-cutter”No “cookie-cutter” Type of agreement will depend on type of IP, value, etc.Type of agreement will depend on type of IP, value, etc. Often start with prior agreements, but each transaction Often start with prior agreements, but each transaction

will need to be evaluated individuallywill need to be evaluated individually Key concernsKey concerns

Timing & calculation of paymentsTiming & calculation of payments Scope of licenseScope of license Rights in future developments & goodwillRights in future developments & goodwill Ensure against “transfer” Ensure against “transfer” Be wary of franchise characteristicsBe wary of franchise characteristics Don’t want to imply partnershipDon’t want to imply partnership

Enforcing IPEnforcing IP

Investigating claims/potential infringementInvestigating claims/potential infringementDrafting letters of inquiry & “Cease & desist” Drafting letters of inquiry & “Cease & desist”

letterslettersNegotiating settlements & consent Negotiating settlements & consent

agreementsagreementsProsecuting & defending infringement Prosecuting & defending infringement

lawsuitslawsuits

More IP ISSUE SPOTTINGMore IP ISSUE SPOTTING

International IP International IP – Protecting US-created IP abroad continues to be a – Protecting US-created IP abroad continues to be a huge issue for American companies. Counterfeiting is a multi-billion huge issue for American companies. Counterfeiting is a multi-billion dollar annual industrydollar annual industry

Get Some Help at the Border Get Some Help at the Border - Although IP owners must typically self-- Although IP owners must typically self-police against infringement, US Customs will seize potential police against infringement, US Customs will seize potential infringements of US IP rights, provided the rights are recorded with infringements of US IP rights, provided the rights are recorded with CustomsCustoms

Design PatentsDesign Patents. Relatively new to US law, these types of patents . Relatively new to US law, these types of patents protect the design elements of a useful device. They can be renewed. protect the design elements of a useful device. They can be renewed. In some cases, a given item may be protected by a ©, a trade dress In some cases, a given item may be protected by a ©, a trade dress registration, and a design patentregistration, and a design patent

Computer software Computer software – can be protected by © or patent. Copyright is – can be protected by © or patent. Copyright is easier but afford protection only against exact copies. Patent is easier but afford protection only against exact copies. Patent is greater protection, but harder to get because program’s “utility” must greater protection, but harder to get because program’s “utility” must be novel.be novel.

Co-Developed works Co-Developed works – each owner will own 100% of the IP– each owner will own 100% of the IP Internet – Google terms, domain names, Adwords, Metatags, etc.Internet – Google terms, domain names, Adwords, Metatags, etc.

Questions to AskQuestions to Ask Do you have any registered trademarks, copyrights or patents?Do you have any registered trademarks, copyrights or patents? Do you sell products/services using a unique name?Do you sell products/services using a unique name? Do you have a logo?Do you have a logo? Do you have a web site? Have you developed business strategies or Do you have a web site? Have you developed business strategies or

methods that give your company an advantage in the marketplace?methods that give your company an advantage in the marketplace? Have you ever been sued or otherwise confronted by anyone claiming you Have you ever been sued or otherwise confronted by anyone claiming you

had infringed on a mark, name, copyright or invention?had infringed on a mark, name, copyright or invention? Have you ever noticed someone using a mark or product similar to yours?Have you ever noticed someone using a mark or product similar to yours? Have you hired 3Have you hired 3rdrd parties to develop logos, web sites, brochures, parties to develop logos, web sites, brochures,

advertisements, software, or other materials for your company?advertisements, software, or other materials for your company? Do employees/contractors sign agreements regarding company IP, trade Do employees/contractors sign agreements regarding company IP, trade

secrets, or confidential information?secrets, or confidential information? Do you (or do you plan to) sell products/services or outsource production Do you (or do you plan to) sell products/services or outsource production

outside the US?outside the US?

Concluding ThoughtsConcluding Thoughts

Every company has IP assets – though many Every company has IP assets – though many don’t adequately protect theirs.don’t adequately protect theirs.

A “Proactive” strategy with regard to IP assets is A “Proactive” strategy with regard to IP assets is generally much less expensive than a generally much less expensive than a “Reactive” strategy“Reactive” strategy

Questions?Questions?

Email Email [email protected] [email protected]

Direct Direct 214.988.9248 214.988.9248

Toll Free 1.877.34.WorldToll Free 1.877.34.World

ip practice overview pres 2012

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