Intellectual Property

All notes related to the in class slideshow

What are the types of intellectual property?

patent, trademark, copyright

Patents

A grant from the federal government in which the inventor obtains exclusive rights to make, use, and sell their invention for a period of 20 years (14 years for designs)

• American Inventor Act changed the order from first to invent to first to file system

• can’t be renewed

• First to file, patent tarts immediately, can take a long time because they have to cross-examine for other similar products at the USPTO

A patent will not be issued for more than one year before the patent application, the invention was patented elsewhere, described in a printed publication, or in a private use of oon sale in the United States.

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What does patent protect for:

a process, machine, product, or manufacture, composition of matter, improvement of any of the above, ornamental design (have a look at them) for a product, plant produced by asexual reproduction, and certain business methods '

• even though an invention fits one of the categories, it is not patentable if it lacks novelty, is obvious, or has no utility

What are the three items necessary for patents?

1.) novelty - new, needs to be unique

2.) non-obvious - different from a math equation, not trying to prove by a math model

3.) utility - level of use, very low bar

Patentee may transfer ownership of the patent by making a

written assignment to another party

• or patentee may retain ownership and license others to make, use, or sell the patented invention

What is the Patent Exhaustion Doctrine?

Once the patent owner or licensee sells an item embodying the patented invention, the sale of the item exhausts the patent owner’s rights regarding that item

• you don’t have the right to it anymore

• need to specify where the rights are being sold

• ex: at Lilly, you don’t own the patent if your job is to create new drugs

Under the America Invents Acts (AIA):

If an employee was hired to do inventive or creative work, the invention belongs to the employer.

• If the employee was hired for purposes other than the invention or creation, the employee owns any patent acquired.d

• Regardless, shop right doctrine gives the employer a non-exclusive royalty-free license to use the employee’s invention if it was created on company time and through the use of company facilities.

• Looking for scope, were they hired for that particular purpose?

Infringement

occurs when the defendant makes, uses, or sells a patented invention without the patentee’s authorization

• remedies include: monetary damages and injunctions

• Injunction: stop the other person from doing such a task

• established by direct or doctrine of equivalents

What are the defense to infringement?

• invalidity - didn’t meet some guideline and shouldn’t have been issued

• patent misuse - designed for one thing and used for another

What are three other America Invents Act changes?

1.) expansion of post-patent issuance review

2.) third-party comment and review process

3.) expansion of the independent discovery defense to patent infringement

Copyrights

An intangible right granted by statute to the author or creator of certain tangible literary or artistic productions

• only expression of an idea is copyrightable

• ex: these slides and practice problems, not the teacher talking about the notes, but the idea expressed

• novelty matters for copyrights, but not the other two requirements, like patents

What are the two ways to create a copyright?

1.) pay copyright office $50

2.) don’t do anything

• poor man’s copyright: put copy in an envelope and mail it to yourself and never open it

Creation and notice of copyrights

propection automatic, registration not required, through recommended

Duration of a copyright

works created after January 1978 are given protection for life or author’s + 70 years

Work for Hire exists when:

an employee, in the course of their regular employment duties, creates a copyrightable work or

An individual or corporation and an independent contractor (nonemployee) enter into a written “hire” agreement under which the non-employeecreates aa copyrightable work for the individual corporation

Ownership rights of copyrights

A copyright owner has exclusive rights to reproduce the copyrighted work, prepare derivative works based on it, and distribute copies of the work by sale or theft

• Copyright ownership may be transferred to another party

First Sale Doctrine

extinguishes the owner’s rights once that copy has been lawfully sold anywhere in the world

Violation of intellectual property rights:

when someone uses, makes, or sells another’s trademark, patent, or copyrighted intellectual property without the owner’s permission, license ore franchise

• Internet has made infringement easier, with streaming/downloading of music and movies

• penalties - actual or statutory damages in civil proceedings or similar penalties for willful violations

Fair Use for copyrights

A defense or exception exists when a copyrighted work or trademark is used without the property holder’s permission

A court weights several factors in a fair use determination:

• purpose and character of the use

• nature of copyrighted work

• amount and substantiality of the portion used in relation to the copyrighted work as a whole

• effect of use on potential markets for the copyrighted work or on its value

Trademarks

distinctive mark, motto, device, or emblem that a manufacturer or service producer stamps, prints, or affixes to products it produces or services it performs to distinguish products or services from those of competitors

• Registration with the government is recommended but not required

Distinctness is key for trademarks:

• arbitrary or fanciful marks

• suggestive marks

• descriptive marks

• not inherently distinct

• generic terms

Trademark infringement occurs when

a substantially similar mark is sued and is likely to cause confusion

• is a consumer likely to be confused? → prove through surveys

Trademark dilution

is a diminishment of the capacity of plaintiff’s marks to identify and distinguish plaintiff’s goods and services

Trade Secret

any secret formula, pattern, process, program, device, method, technique, or database used in the owner’s business that offers a competitive advantage

• A firm must take reasonable measures to maintain secrecy

• ex: coca cola

Misappropriation of a trade secret occurs when

a person discloses or uses after acquiring that secret

• by improper means (theft, trespass, etc.)

• through another party who is known or should have been known to have obtained the secret by improper means, by breaching a duty of confidentiality

Commercial Torts

are intentional torts that involve business or commercial competition

Injurious Falsehood (product disparagement)

involves publishing false statements that disparage another’s business, property, or title to property, harming economic interests

• publish false information about other people

Section 43(a) of the Lanhan Act

creates civil liability for unfair competition, including misleading, confusing, or deceptive representations made in connection with goods or services

• Basically false advertising