Chapter 7 - Intellectual Property and Cyber Piracy

intellectual property

Property that is developed through an intellectual and creative process

• Falls into a category of property known as intangible rights

types of intellectual property

• Trade secrets

• Patents

• Copyrights

• Trademarks

patent

A grant by the federal government to the inventor of an invention for the exclusive right to use, sell, or license the invention for a limited amount of time

• Intended to provide incentive for inventors to make their inventions public

• Protects patented inventions from infringement

• Federal patent law is exclusive - (there are no state patent laws)

Federal Patent Statute

Federal statute that establishes the requirements for obtaining a patent and protects patented inventions from infringement

US court of appeals for the federal circuit

Hears appeals from the Board of Patent Appeals and Interferences and federal court concerning patent issues

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

provisional application

Application that an inventor may file with the PTO to obtain 3 months to prepare a final patent application

patent trial and appeal board

Reviews adverse decisions by patent examiners and conducts other patent challenge proceedings

patent number

• Number assigned to invention when patent is granted

• Patent holders usually affix the word patent and the patent number on the patented article

what can be patented:

• Machines

• Processes

• Compositions of matter

• Improvements to existing machines, processes, or compositions of matter

• Designs for an article of manufacture

• Asexually reproduced plants

• Living material invented by a person

what can’t be patented:

Abstractions and scientific principles cannot be patented unless they are part of the tangible environment

requirements for obtaining a patent

An invention must be:

• Novel

• Useful

• Nonobvious

Leahy-Smith America Invents Act

Federal statute that significantly amended federal patent law

First-To-File Rule

First party to file a patent on an invention receives the patent

utility patents

20 years

design patent duration

14 years

public domain

the invention or design enters the ____ ____ after patent period expires

patent term

____ ____ begins to run from the date the patent application is filed

patent infringement

occurs when someone makes unauthorized use of another’s patent

plantif may recover

• Money damages equal to reasonable royalty rate​

• Other damages caused by the infringement​

• Order for destruction of infringing articles​

• Injunction against infringer​

• Treble damages if infringement was intentional​

design patent

Patent obtained for the ornamental non-functional design of an item

copyright

Legal right that gives the author of qualifying subject matter exclusive right to publish, produce, sell, license, and distribute the work​

• Other requirements of copyright law must be met​

• Copyright can be sold or licensed to others

Copyright Revision Act of 1976

• Establishes the requirements for obtaining a copyright​

• Protects copyrighted works from infringement

tangible writings

only ____ ____ are subject to copyright registration and protection

exclusive

federal copyright law is _____

Berne Convention

An international copyright treaty that eliminated the need to use © or word copyright on a copyrighted work​

registration of copyrights

Must be an original work​

registration is​:

• Permissive​

• Voluntary​

• Done at any time during term of copyright​

• Registration permits a holder to obtain statutory damages for copyright infringement​

U.S. copyright office

who do you register copyright with?

Copyright Term Extension Act of 1998

Individuals aregranted copyright protection for their lifetime plus seventy years​

• Copyrights owned by businesses are protected for 120 years from the year of creation or 95 years from the year of first publication​

copyright infringement

• Occurs when a party copies a substantial and material part of the plaintiff’s copyrighted work without permission​

• Successful plaintiff may recover:​

  • Profit made by the defendant from the infringement​

  • Damages suffered by the plaintiff​

  • Order requiring impoundment and destruction​

  • Injunction preventing future infringement

fair use doctrine

Permits certain limited unauthorized use of

copyrighted materials

no electronic theft act

• Willful infringement on a copyright is a crime​

• Makes it a federal crime to reproduce copyrighted electronic works​

digital millenium copyright act

Prohibits unauthorized access to copyrighted digital works by circumventing the wrapper

trademark

Identifies and distinguishes goods of a manufacturer or seller or services of a provider from others

trademark examples

• Trade name​

• Symbol​

• Word​

• Logo​

• Design​

• Device

Lanham (Trademark) Act

• Protects the owner’s investment and goodwill in a mark ​

• Prevents consumers from being confused about the origin of goods and services​

registration of a mark

Mark may be registered with PTO in Washington DC if it has been used in commerce​

• Can be registered six months prior to use​

Right to register a mark is lost if not used in commerce within six months​

Mark may be opposed by third parties​

®: Symbol designating marks registered with the U.S. Patent and Trademark Office​

register trademark to

U.S. Patent and Trademark Office

TM

Symbol designating an owner’s legal claim to an unregistered mark associated with a product

SM

Symbol designating an owner’s legal claim to an unregistered mark associated with a service

types of marks

• Trademark​

• Service Mark​

• Certification mark​

• Collective membership mark

marks that cannot be registered

• Flag or coat of arms of the United States, any state, municipality, or foreign nation​

• Marks that are immoral or scandalous​

• Geographical names standing alone​

• Surnames standing alone​

• Any mark that resembles a mark already registered with the federal PTO

Distinctiveness (trademark)

A mark must be distinctive

• word or design that is unique

secondary meaning (trademark)

Mark has acquired a secondary meaning​

• An ordinary term becomes a brand name​

trademark infringement

Unauthorized use of another’s trademark

owner must prove that (trademark infringement)

• Defendant infringed the plaintiff’s mark by using it in an unauthorized manner​

• Use is likely to cause confusion, mistake, or deception of the public on the origin of goods or services

generic name

• A mark that has become a common term for a product line or type of service and therefore has lost its trademark protection​

• Name becomes descriptive rather than distinctive

Federal Trademark Dilution Act of 1995

Protects famous marks from dilution, erosion, blurring, or tarnishing​

• Use by other party is actionable if:​

  • It is commercial​

  • It causes dilution of distinctive quality of the mark​

types of dilution

• Blurring​

• Tarnishment

Trademark Dilution Revision Act

• A dilution plaintiff does not need to show that it has suffered actual harm​

• Enough to show there is a likelihood of dilution​

requirements that the holder of a senior mark must prove:

• Mark is famous​

• Use by the other party is commercial​

• Use by another causes a likelihood of dilution