Legl chapter 11

intellectual property

article 1, section 8 of the constitution gives congress the power to: promote the progress of science and useful arts by, securing, for limited times to authors and inventors, the exclusive right to their respective writing and discoveries” (patents, trademarks, copyright)

why: incentivizes new inventions

how: granting exclusive rights

at what cost: loss of competition; higher prices

Intellectual Property and Research 

This is essential to maintain the growth of creative research and development (R&D) 

capturing intellectual property

• certain steps need to be undertaken to transform knowledge into valuable intangible assets

• strict deadlines are applicable for asserting rights of some intellectual property

• failure to follow rules can position the product in public domain

Trade Secret

any form of knowledge or information that has economic value from not being generally known to others or readily ascertainable by proper means. the owner has to make reasonable efforts to maintain secrecy.

this is protected by common law and most state have adopted the Uniform Trade Secrets Act

To win a Trade Secret Case…

1. establish that the trade secret exists (information must be secret and the business must take reasonable steps to keep it a secret)

   examples of preserving secrecy: lock written material, secure computer-stored knowledge with firewalls and encryption, regulate visitors, ask employees/customers to sign nondisclosure, impose confidential restrictions)

2. demonstrate misappropriation: this occurs when one improperly acquires or discloses secret information.

   example: burglary, espionage, computer hacking, breach of duty (employment relationship/contract)

is this considered trade secret violation: If i independently created the same page or If i look at the product and im able to figure out the recipe on my own?

no, independent creation is not misappropriation or violation

What are the two types of enforcements for trade secret?

Civil enforcement and criminal enforcement

Civil enforcement of trade secret

Basically, suing someone

• Injunction: a court can order the person who stole the secret to stop using it or telling others about it.

• Monetary damages: the person who stole the secret might have to pay more to the company they hurt

Criminal enforcement of trade secret

This is done under a law called the economic espionage act

• For individuals (like a person who stole the secret): they can be fined or they can go to prison for up to 10 years.

• For companies (like if a business is behind the theft): they can be fined up to $5 million

patent

associated with an inventive act and conveys a right to exclude other from making, using, selling, or importing the covered invention

patent is an exclusive right created by statute and conveyed by the U.S patent and trademark office for a limited period of time

Types of Patents 

1. Utility Patent 

2. Design Patent 

3. Plant Patent 

utility plant

new , nonobvious, useful processes, machines, compositions of matter or improvement (covers how something works or how it is made. Must be new, useful, and non-super obvious like new machines, inventions processes, or even improvements to existing stuff.)

20 years from filing date ( lasts 20 years from when you apply)

design patent

new original and ornamental design from an article of manufacture (covers how something looks not how it works. Has to be new, original and decorative.)

15 years from the issue date (15 years from when it was approved)

Plant patterns

New variety of plant that can be reproduced asexually (for a brand new plant that you made and can reproduce without seeds)

20 years from filing date ( lasts 20 years from when you apply)

Obtaining a patent

1. Pay filing fee

2. Explain invention: how to make a news

3. Show difference from prior act

4. Describe patentable aspects

5. File application

6. Evaluation by patent examiner

America invents act

In 2011, former President Obama signed into law, the America invents act. This was the first substantial revision to the US patent law since 1999. The keychain was a switch from the first to invent system to a first two file system.

Patentable subject matter

Validity of a pattern can be tested by scrutinizing its subject matter

Subject matter that can be patented:

• Process of doing something step by step (can be controversial)

• Machine

• Article of manufacture (a thing you make that doesn't have moving parts like a spoon phone case or toy)

• Composition of matter a new drug formula, type of plastic or chemical (or improvement thereof)

Subject matter that can’t be patented:

• Laws of Nature 

• Natural phenomena 

• Abstract Idea 

• Mathematical algorithms or formula

Can someone challenge my patent after it's granted?

Yes, just because I'm granted anyone can come and challenge me and the court will look and see if they saw an error and it can get taken away from me

The Alice two step:

Determine whether the invention covers a ineligible concept (abstract ideas, laws of nature, natural phenomena)

If it does consider whether it adds something sufficiently inventive to transform the claims into something more than the concept itself

Default rule is if your invention is just an abstract idea, you can't patent it but if you add something new in meaningful, you can get the patent.

Characteristics of patents:

novelty: something new and different from the prior art

Non-obviousness: ability of an invention to produce surprising or unexpected results (for example if you're creating something for the medical field for other experts in that field, would they find it to produce unexpected or surprising results and you're measuring it from the point of view of other experts in that field)

Utility: must do something useful and doesn't apply to design patents or plant patents

Patent enforcement

Purpose of law: to allow inventions in the public domain after the limited period of legal property right (utility and plant patterns last 20 years from the filing date and design patterns last 15 years from the issue date)

Patent owner can suit infringer for injunction and or damages during the duration of the patent (after it expires, anyone can freely use it)

Validity of patent may be challenged during the litigation

Overlapping intellectual property rights

Sometimes one product like a cell phone can involve many different overlapping, intellectual property rights all at once. A smart phone might include a pattern for the touchscreen a pattern for the operating system a pattern for the hardware or internal components.

The catch is even if I invent something new to get a patent I still need to respect other people's rights if my invention uses their patented parts or technologies. So I can't freely use or sell my own invention if it depends on someone else's protected intellectual property unless I get a permission from them.

trademarks

• Marks on what is produced to represent the origin of goods (Word logo symbol or design used on products to show where they come from. Basically it tells you who made it.)

• Recognizability or distinctiveness is the function of trademarks

• Protects consumers against confusion (you can quickly spot your brand and it is distinct from others)

service mark

A mark associated with a service

Certification Mark

Used by someone other than the owner to certified quality of goods (organic sticker)

Collective Mark

A mark that represents membership in a certain organization or association

Trade dress

The look or design of a product or service

for example, the color or shape of the product

Trademark registration steps

1. Register with US patent and trademark office

2. PTO places the mark in a official gazette

3. If existing owners raise objections, there is a hearing

4. If mark is acceptable, PTO registers Mark in principal register

How long does a trademark last?

Trademarks can last forever, but you must tell the PTO you're using it every six years and renew the registration every 10 years.

When can the PTO deny registration?

• The mark is the same or similar to another mark

• If it contains certain prohibited or reserved names or designs

• If it merely describes a product or service

• If it is generic and represents a product or service

if your trademark get denied…

You can still use your mark. It just won't be officially registered. That's called an unregistered mark.

You can still sue for a trademark infringement but only in the states where you actually do business. If your trademark is registered, you'll get protection on all 50 states in the US territories.

Can you trademark a persons name or a descriptive word?

Generally, the PTO will not accept a person's name or descriptive for protection on the principal register.

exception: if the descriptive term is listed on the PTO’s Supplemental register for 5 years and acquires a secondary meaning. This refers to public that is different from its meaning as a person’s name or as a descriptive term, a public meaning that makes the name or term distinctive.

example:

Ford (name) —> Car

Levi’s (name) —> Jeans

Disney(name) —> Disneyland

trademark enforcement

law protects the owner from unauthorized use of the mark and establish a civil and criminal violation

Civil violation of trademark enforcement

Infringement (remedies include damages and injunction in order to destroy infringing products)

Generic marks cannot be protected

Criminal violations of trademark enforcement

Manufacturing in trafficking counterfeit trademarked product for example imitation Rolex watches

What individual is assigned by The Patent and Trademark Office (PTO) to consider a patent application?

patent examiner

__________ refers to a public meaning that is different from its meaning as a person's name or as a distinctive term, a public meaning that makes the name or term distinctive.

secondary meaning

In the context of trademarks, another term for recognizability is __________.

distinctiveness

Which of the following statements is true about intellectual property?

Intellectual property incrementally increases the production of information and investment over that which would normally occur.

To protect information as a trade secret, the information must actually be secret, and the business must take reasonable measures to keep it so.

true

Innocently acquiring a secret from another without knowledge of their theft is generally misappropriation.

false

According to the Lanham Act of 1946, which of the following is a mark representing membership in a certain organization or association?

collective mark

As part of the trademark application process, the Patent and Trademark Office places a proposed mark in the __________, which gives existing mark owners notice and allows for objection.

official gazette

Even if the original acquisition was proper, misappropriation can occur if information is disclosed by someone who had a duty to keep it secret.

true

Civil violation of a trademark or a patent is termed __________.

infringement

The Federal Trademark Dilution Act prohibits the use of a mark that is the same or similar to a "famous" trademark only when the owner of the "famous" trademark can prove public confusion regarding the two marks.

false

trademark infringement

the plaintiff (one suing) must prove that the defendants use has created a “likelihood of confusion” with my trademark

courts uses a multi factored test that considers elements like: the defendants intent and proof of actual consumer confusion

what can a defendant argue for trademark infringement?

• they mark is not distintive

• there is a little chance of the public being confused

• the use is fair use

Federal Trademark Dilution Act 

prohibits the usage of a mark that is the same as or similar to another’s “famous” trademark to dilute its significance, reputation, and goodwill

types of dilution

blurring: when usage of mark blurs the distinctiveness of a famous mark

tarnishment: when usage of a mark creates a negative impression about a famous company (ben and jerry v. ben and Cherrys)

How long does copy right last?

Individual copyight :authors lifetime plus 70 years

Company copyight: 95 years from publication or 120 years from creation

copyright

property right in creative expression that protects creators. property rights in a copyright afford an author, or other creator a monopoly in the right to copy and makers their creative expression for a limited time.

to get copyright protection:

work must be original

Must be fixed in a tangible medium of expression (Be written down, recorded, or saved in some way)

must show creative expression

civil copyright enforcement

copyright infringement

the author must: Register the work with the Copyright Office

• Prove that the other person broke one of their exclusive rights, like:

  • Copying the work

  • Making new versions (like a remix or spin-off)

  • Selling or sharing it

  • Performing it in public

  • Showing it in public

criminal copyright enforcement

criminal penalties are applicable for willful infringement

example: piracy: large scale copyright infringement

fair use defense

specifies that fair use of copyrighted material is not an infringement of the owners property which includes: criticism, comment, news reporting, teaching, scholarship, research

factors considered by the courts: purpose and character of the use, nature of the copyrighted work, amount and substantiality of the portion used in relation to the copyrighted work as a whole, and effect of the use upon the potential market for the copyrighted work

Composition

generally song lyrics (t.swift to her earlier music on the owns she wrote, she owns the compositions but not rights to her master)  

master

recorded sound (what we listen to on Spotify, actual recorded sound like on apple music or radio) 

Once you have Intellectual Property Right Protection, is that protection automatic internationally as well?  

Default is = it is not an automatic thing. it is only for that one country, does not automatically apply to other countries.

World Trade Organization (WTO) 

• administers agreement on Trade Related Aspects of intellectual property rights (TRIPS)

• requires member countries to provide protection for all forms of intellectual property

Work Intellectual Property Organization (WIPO)

• patent cooperation treaty (makes it easier to apply for patents in many countries at once)

• Madrid System for international registration of Marks (lets you register a trademark in many countries with a single application)