intellectual property

intellectual property

• intangible

• informational (value)

• laws protect ownership of information

knowledge assets

extremely valuable components

• how to make things

• how to do things

• where to get things

• etc.

• merely anything

the uber idea is

what makes uber valuable, no physical assets

justification for IP rights

an exclusive right to what you create, invent, and produce provides incentive to create, invent, and produce more things

US constitution art 1 + 8 grants power

“to promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

four main types of intellectual property

1. patents

2. trade secrets

3. copyright

4. trademarks

patents

property rights associated with an invention

• the patent holder has the exclusive right to exclude others from making, using, offering to sell, or selling the invention in the US or importing the invention into the US

patent document

written document issued by the US patent and trademark office that grants patent rights for the invention, which is described in detail.

what cannot be patented?

• abstract ideas

• rules of nature

abstract ideas

including mathematical and scientific concepts - are not patentable

rules of nature

laws of nature and natural phenomena are not patentable

patent application

1. inventor pays a filing fee

2. explain (in the case of a utility patent) how to make and use the invention

3. show why the invention is different from prior art, from all previous and related inventions or state of knowledge

4. precisely detail the subject matter that the inventor regards as the invention

when going through patent application, PTO assigns a patent examiner to consider the application and

examiner and applicant (inventor) communicate throughout the process

to be patented, and invention must satisfy three criteria:

1. novel (new): characteristics indicate something new/ different from prior art

2. useful: the invention must do something useful

3. nonobvious: the ability of the invention to produce surprising/unexpected results

who is the inventor who gets the patent?

• first inventor to file

the first person to file for a patent gets the patent, even if he/she was not the first to invent - as long as that person independently developed the invention

types of patents

• plant patents

• utility patents (most sought and awarded)

• design patents

plant patents

to protect new varieties of reproduced plants (dwarf wheat)

utility patents

to protect the way something is made or used

design patents

to protect the way something useful looks

patent duration

• utility and plant patents - 20 years

• design patents - 14 years

when the patent expires, the invention becomes public domain (usable by anyone)

enforcement of patents

patent owner may sue for patent infringement

remedies for infringement of patents

• injunction prohibiting future infringement

• damages resulting from infringement

• triple damages for willful infringement

trade secret

information that

• is not generally known to the public

• has independent economic value from not being publicly known and not being readily ascertainable by others by proper means

• is the subject of reasonable efforts to maintain its secrecy

common types of trade secrets

• financial

• technical

• scientific

• economic.

• engineering

reasonable efforts to maintain secrecy

• non-disclosure agreement

• confidentiality agreement

• firewalls and encryption

• locked storage

types of enforcement actions for trade secrets

• patent owner may sue for patent infringement

• trade secret owner may sue for trade secret misappropriation

misappropriation of a trade secret occurs by

• acquisition by improper means

• disclosure or use

acquisition

of a trade secret of another by a person who knows or has reason to know that the aquisition was by imporper means

disclosure or use of a trade secret of another by a person who

• aquired it by improper means

• knew or had reason to know of circumstances giving rise to a duty to maintain the secrecy or the trade secret

improper means includes

• theft, bribary, misrepresentation, espionage, trespass

• breach of a duty of confidentiallity

• potentially any conduct that is not commercially reasonable conduct

as a result, to avoid a claim of misappropriation, a party may need to show affirmatively that it reverse engineered or independently developed the information it is using or disclosing