Intellectual Property - Overview

Trade Secret Purpose

prevent “theft” of information by unfair or commercially unreasonable means.

build legal “fences” that afford protection from misappropriation.

What subject matter is eligible for trade secret protection?

Broad: business or technical information of any sort

Trade secret requirements

1. Information must be a secret (only relative and not absolute secrecy)

2. Owner of secret must take reasonable steps to maintain its secrecy

Once trade secret is disclosed…

Protection is lost, no definite term as long as they are secret

Misappropriation of trade secrets in two circumstances:

(1) where the secrets were obtained by theft or other improper means; or

(2) disclosed in violation of an express or implied agreement to keep the information secret.

What do trade secret laws not protect against?

independent discovery or invention.

“reverse engineering” a legally obtained product

employees and contractors reporting suspected illegal activity to the government or discussing their concerns with counsel

What remedies are available for violations of trade secret?

Damages, injunctions against use or further disclosure

Patent law offers…

limited period of exclusive rights to encourage development
Ex: discovering new processes, machines, articles of manufacture, and compositions of matter, and improvements

After patent expires…

innovation becomes part of the public domain

To obtain utility patent (Five Requirements)

Inventor sends application to PTO that meet:
patentable subject matter,

usefulness,

novelty,

nonobviousness, and

disclosure sufficient to enable others skilled in the art to make and use the invention.

Threshold for utility patent requirements

Usefulness: Low
Novelty: Substantial

Non-obivousness: Substantial

If PTO grants patent…

inventor obtains exclusive rights to make, use, and sell the innovation for a term of up to 20 years from the application filing date.

How strong is the patent grant?

nearly absolute, barring even those who independently develop the invention from practicing its art.

When would infringement be found?

1. Accused thing embodies all elements of original patent claim

2. accomplishes substantially the same function in substantially the same way to achieve the same result

To obtain a design patent (four requirements):

1. Novelty

2. Originality

3. Ornamentality (intended to exclude functional features)

4. Nonobviousness

How long do design patents last?

term of 15 years from the grant date.

Purpose of Design patents

Ornamentation of useful articles did not fit easily within utility patent or copyright protection.

General approach of Copyright and Patent

statutorily created monopolies to foster progress

Copyrights vs Patents

copyrights are easier to secure and last substantially longer than patents
scope of protection afforded copyrights is narrower and less absolute than that given to patents.

Copyright does not have examination by a governmental authority

What does copyright law cover?

broad range of literary and artistic expression

What does copyright law not cover

Ideas themselves (but the author’s particular expression of an idea is protectable)

Three-Dimensional works

What does a work must show to receive copyright protection?

modicum of originality and be fixed in a “tangible medium of expression”

When does copyright protection attach?

As soon as a work is fixed. Registration not required for validity, but authors must register work prior to filing infringement suit

How long does a copyright last?

life of the author plus 70 years or a total of 95 years in the case of entity authors.

What does copyright protect?

unauthorized copying,

public performance,

display,

and entitles the holder to make derivative works and to control sale and distribution of the work.

How copyright protection is limited?

Others may make “fair use” of the material in certain circumstances.

compulsory licensing for musical compositions and cable television.

limited set of moral rights protects against misattribution or destruction of a narrow class of works of visual art.

Copyright law protects only…

against copying of protected expression.

Independent creation of a copyrighted work does not violate the Copyright Act, nor does copying the unprotected elements of a work.

How do courts determine when a work has been copied illegally?

1. Direct proof (usually not the case)

2. infer copying from proof that the defendant has had access to the plaintiff’s work combined with evidence that the two works are similar. (must be substantially similar to protected elements)

Digital Technology Copyright

Congress prohibits the circumvention of measures that are intended to prevent unauthorized use and distribution of copyrighted works and alteration of copyright management information.

Trademark/Trade dress source of constitutional authority

based on Commerce clause, authorizes Congress to regulate foreign and interstate commerce.

Trademark Law Original Purpose

to protect consumers from sellers attempting to fly under the banner of someone else’s logo or identifying symbol.

Lanham Act

Federal Trademark Statute

protects words, symbols, and other attributes that serve to identify the nature and source of goods or services.

EX: symbols, logos, slogans, colors, etc.

To receive trademark protection…

Must represent to consumers the source of the good or service identified (need not be new or previously unused)

What can the mark not be?

merely a description of the good itself or a generic term for the class of goods or services offered.

may not be a functional element of the product itself, must serve a purely identifying purpose.

Dilution in trademark

Blurring or tarnishment of mark, not allowed

Trademarks do not…

expire on any particular date but continue in force until they are “abandoned” by their owner or become unprotectable.

PTO and Trademark relationship

examines trademark applications and issues trademark registrations that confer significant benefits upon the registrants,

Trademark Registration Benefits

prima facie evidence of validity;

constructive notice to others of the claim of ownership;

federal subject matter jurisdiction;

incontestability after five years, which confers exclusive right to use the mark;

authorization to seek treble damages and attorney fees;

and the right to bar importation of goods bearing the infringing mark.

Federal Trademark registration is…

not necessary to obtain trademark protection, can bring suit for trademark infringement.

What does infringement turn on?

whether consumers are likely to be confused as to the origin of the goods or services.

Trademark remedies available

injunction against the confusing use,

damages for past infringement, and

in some cases the seizure and destruction of infringing goods.