PUBP 4640: Weeks 3 & 4

Design Patents

patents that are granted when someone has invented a new and original design for a manufactured product

USPTO (United States Patent and Trademark Office)

is the federal agency for granting U.S. patents and registering trademarks

35 USC 102

A person shall be entitled to a patent unless (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent.

35 USC 103

prior art that qualifies under 102(e),(f), or (g) isn't prior art if owned by the same person or subject to assignment to the same person.

Direct infringement of a patent

Products

making, using, trading with , ofeering to trade with, keeping for the purpose of training, importing.

Processes

using, offering, importing a product obtained directly by means of that process

Induced Infringement

Actively inducing another's direct infringement of a patent by encouraging, aiding, or otherwise causing another to infringe the patent

Inter Partes Review (IPR)

Inter partes review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103

Post Grant Review (PGR)

Post grant review is a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3).

patent application

-Must be filed with the PTO in Washington DC

-Must contain a written description of the invention

-PTO must make a decision whether to grant a patent within three years from the date of filing

-PTO can grant priority to patent applications for products, processes, or technologies

European Patent Office (EPO)

patent office of the EU, 39 member states as of 2023

Paris Convention

A multinational agreement covering patents; requires signatory countries to protect the same inventor rights under any member country's patent laws as those enjoyed by citizens of that member country.

trade secret

A formula, device, idea, process, or other information used in a business that gives the owner a competitive advantage in the marketplace.

Trade Secret Protection

Length of protection: perpetual (or until someone discovers the secret lawfully)

Allows holder to sue for violation, if owner can prove:

-Trade secret existed

-Defendant acquired trade secret through unlawful means

-Defendant used trade secret without plaintiff's permission

Remedies for trade secret infringement:

-Money Damages

-Injunction

Uniform Trade Secrets Act of 1979

This uniform law was presented to the states in 1979 in an effort to reduce the unpredictability of the common law amongst the states in this area. Parts of the act have been adopted by about 44 states as of 2007.

Federal Economic Espionage Act (1996)

federal crime to steal a trade secret knowing or intending the act would cause injury or harm to the owner of the trade secret

Georgia Trade Secrets Act (1990)

protects a company's trade secrets from misappropriation.

Defend Trade Secrets Act of 2016

An act passed in 2016 that amended the Economic Espionage Act to create a federal civil remedy for trade secret misappropriation.

Motorola v. Hytera

On March 5, 2020, the U.S. District Court for the Northern District of Illinois entered a final judgment on a jury verdict of approximately $764.6 million in a high profile trade secret misappropriation case

Special Employment Agreement

The new employee signs an agreement promising that they will not take a competing job for a specified period of time, and/or within a specified geographic region

inevitable disclosure doctrine

The inevitable disclosure doctrine allows a plaintiff to "prove a claim of trade secret misappropriation by demonstrating that defendant's new employment will inevitably lead him to rely on the plaintiff's trade secrets.

Unsolicited Ideas

ideas submitted to companies that are used for new products, mostly disallowed by companies because they could be sued in an implied-in-fact for breaching their idea regardless of whether or not they directly used the idea