10 Things Business Owners Should
Know About Intellectual Property

Presented By:
Kelley Clements Keller, Esq.

www.TheKell...
You Should Know …

1.

What Constitutes Intellectual
Property (IP) and Why It is
Important
1. What Constitutes IP

 IP is a legal concept which refers to the products of

human imagination, creativity, and ingenu...
1. What Constitutes IP

 Intellectual property is an intangible or

intellectual asset that provides its owner with a
com...
1. What Constitutes IP
 Examples include inventions, business logos, and

musical compositions.

* Images may be subject ...
1. Why IP Is Important
 IP is not only an important part of a business’s plan

for success, but a vital part of the U.S. ...
1. Why IP Is Important


U.S. Constitution – Article 1, Sec. 8, Cl. 8




“To promote the Progress of Science and usefu...
You Should Know …

2. The Two Rules of Thumb for

Determining Whether a Piece of
IP is Worth Protecting
2. Deciding Whether to Protect IP

 Is the IP directly related to your competitive

advantage?
 Does the IP have value i...
You Should Know …

3. The Four Major Forms of

Intellectual Property
3. The Four Major Forms of IP
 Patents
 Grant from the federal government to exclude others from
making, using and selli...
3. The Four Major Forms of IP
 Trademarks
 Words, phrases, symbols, designs, or a combination
thereof … that distinguish...
3. The Four Major Forms of IP
 Copyrights
 “Copyright protection subsists in original works of
authorship fixed in any t...
3. The Four Major Forms of IP
 Trade Secrets
 Formula, pattern, physical device, idea, process, or other
information tha...
You Should Know …

4. The Four Types of Patents and

How Patent Protection is
Obtained
4. Patents and Patent Protection
 Utility Patents
 Business Method Patents
 Design Patents

 Plant Patents

* Images m...
4. Patents and Patent Protection
 Patentable Subject Matter


The Supreme Court has said that patents cover “anything
un...
4. Patents and Patent Protection
 What is an Invention?


Conception + Reduction to Practice = Invention

 Who is an In...
4. Patents and Patent Protection
 What Does a Patent do?


Patent grants exclude others from:
Making the invention
 Usi...
You Should Know …

5. The Four Types of Trademarks

and the Requirements for Federal
Registration
5. Types of Trademarks
 Trademarks
 Identify and distinguish the source of a good

 Service Marks
 Identify and distin...
5. Types of Trademarks
 Collective or Membership Marks
 Used by a cooperative to indicate that goods/services are
provid...
5. Types of Trademarks
 Other Forms of Trade Identity:
 Trade Dress
 Encompasses the distinctive “look” of a product. T...
5. Types of Trademarks
 Product Configuration
 The actual design of the product itself (as contrasted with
its packaging...
5. Requirements - Distinctiveness
 Trademarks Must be Distinctive to Obtain

Federal Registration and Protection


Inher...
5. Requirements - Distinctiveness

 Spectrum of Distinctiveness for Trademarks,

which helps determine the Strength of a ...
5. Requirements - Distinctiveness
 Fanciful or Coined

Marks


Marks that do not have
independent meaning
or significanc...
5. Requirements - Distinctiveness
 Arbitrary Marks


Existing words that are
used in connection with
goods/services that...
5. Requirements - Distinctiveness
 Suggestive Marks


Marks that require
thought, imagination,
or perception to identify...
5. Requirements - Distinctiveness
 Descriptive Marks


Terms that immediately
convey an idea of an
ingredient, quality,
...
5. Requirements - Distinctiveness
 Generic Terms


The common name of a
good/service. These
terms can never function
as ...
5. Requirements - Distinctiveness
 Types of Marks that are Protectable through

a Showing of “Acquired Distinctiveness”
o...
5. Federal Registration Benefits
 Benefits of Federal Trademark Registration









Prima Facie evidence of valid...
You Should Know …

6. The Types of Material Eligible for

Copyright Protection
What Copyright Protects

Copyright protects "original works of
authorship" that are fixed in "a tangible
form of expressio...
6. Copyrightable Materials

 Literary Works
 Musical Works
 Dramatic Works
 Pantomimes and choreographic works
 Picto...
6. Copyrightable Materials

 What is NOT copyrightable …

Ideas, concepts, or discoveries
 Titles, names, short phrases,...
6. The Bundle of Rights

 What rights does the owner control?
 Reproduction

of the Work
 Prepare of Derivative Works
...
6. Federal Registration Benefits
 Benefits of Federal Copyright Registration







Prima Facie evidence of validity...
You Should Know …

7. Legal Vehicles Available for

Trade Secret Protection
7. Trade Secret Protection

 Patchwork of State Laws
 Model: The Uniform Trade Secrets Act (48 States)
 The Economic Es...
You Should Know …

8. The Most Common Types of

Trade Secret Disputes
8. Trade Secret Disputes

 Employer v. former Employee
 “The information was in my head …”

 Lawful discovery v. theft
...
You Should Know …

9. The Elements of a Trade Secret

Protection Program
9. Trade Secret Protection
 Security Measures
 Consider physical layout of facilities – points of entry
 Areas where se...
You Should Know …

10. How to Measure the Value of

Your IP
10. Valuing Your IP
 Conduct an Intellectual Property Audit


Is our IP being properly protected?
Identify existing pate...
Wrapping it Up

Questions?

* Images may be subject to copyright by a third party.
www.TheKellerLawFirm.com
Thank You!

Kelley Clements Keller, Esq.
(717) 386-5035
kkeller@thekellerlawfirm.com
@KelleyKeller
/YourIPMatters
/KelleyK...
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10 Things Business Owners Should Know About Intellectual Property

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  • 10 Things Business Owners Should Know About Intellectual Property

    1. 1. 10 Things Business Owners Should Know About Intellectual Property Presented By: Kelley Clements Keller, Esq. www.TheKellerLawFirm.com
    2. 2. You Should Know … 1. What Constitutes Intellectual Property (IP) and Why It is Important
    3. 3. 1. What Constitutes IP  IP is a legal concept which refers to the products of human imagination, creativity, and ingenuity that have value in the marketplace and for which exclusive rights are recognized. * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    4. 4. 1. What Constitutes IP  Intellectual property is an intangible or intellectual asset that provides its owner with a competitive advantage.  The loss of these assets can be very costly, often times even more so than loss of physical assets such as a building, property/inventory, or equipment. * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    5. 5. 1. What Constitutes IP  Examples include inventions, business logos, and musical compositions. * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    6. 6. 1. Why IP Is Important  IP is not only an important part of a business’s plan for success, but a vital part of the U.S. economy and the nation’s competitive advantage in the global marketplace.  Three Ways Nations Grow Rich Natural Resources  Cheap Labor  Creativity Of Its People  * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    7. 7. 1. Why IP Is Important  U.S. Constitution – Article 1, Sec. 8, Cl. 8   “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries” “There is so much of our economy that is linked to branded products, copyrights. So much of our economy thrives on creativity.” Former U.S. Commerce Secretary Carlos Gutierrez * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    8. 8. You Should Know … 2. The Two Rules of Thumb for Determining Whether a Piece of IP is Worth Protecting
    9. 9. 2. Deciding Whether to Protect IP  Is the IP directly related to your competitive advantage?  Does the IP have value in the marketplace? * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    10. 10. You Should Know … 3. The Four Major Forms of Intellectual Property
    11. 11. 3. The Four Major Forms of IP  Patents  Grant from the federal government to exclude others from making, using and selling an invention for a limited time. It’s a “contract” between the inventor and the government.  Protects functional items that are useful, novel and nonobvious.  Scope and Duration of Protection National (no rights during pendency)  20 years from date of filing (utility/plant)  14 years from date of grant (design)  * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    12. 12. 3. The Four Major Forms of IP  Trademarks  Words, phrases, symbols, designs, or a combination thereof … that distinguish a manufacturer’s or merchant’s goods from those offered by others.  Scope and Duration of Protection National  In perpetuity, so long as in use  * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    13. 13. 3. The Four Major Forms of IP  Copyrights  “Copyright protection subsists in original works of authorship fixed in any tangible medium.”  Exclusive rights of federal copyright registration – reproduce the work, prepare derivative works, distribute copies of the work, perform the work publicly, and display the work publicly.  Scope and Duration of Protection National  Life plus 70 years  * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    14. 14. 3. The Four Major Forms of IP  Trade Secrets  Formula, pattern, physical device, idea, process, or other information that provides the owner of the information with a competitive advantage in the marketplace.  Examples include the Coca-Cola formula, WD-40 formula, and KFC recipe  Scope and Duration of Protection Worldwide  Until no longer secret  * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    15. 15. You Should Know … 4. The Four Types of Patents and How Patent Protection is Obtained
    16. 16. 4. Patents and Patent Protection  Utility Patents  Business Method Patents  Design Patents  Plant Patents * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    17. 17. 4. Patents and Patent Protection  Patentable Subject Matter  The Supreme Court has said that patents cover “anything under the sun that is made by man.” –Diamond v. Chakrabarty, 447 U.S. 303 (1980) (genetically-engineered bacteria that broke down crude oil)  Patentability Tests Usefulness – 35 U.S.C. § 101.  Novelty – 35 U.S.C. § 102.  Non-Obviousness – 35 U.S.C. § 103.  * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    18. 18. 4. Patents and Patent Protection  What is an Invention?  Conception + Reduction to Practice = Invention  Who is an Inventor?  Inventorship cannot be determined until the patent application claims are drafted.  Inventor is one who contributes significantly to conception OR reduction to practice. * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    19. 19. 4. Patents and Patent Protection  What Does a Patent do?  Patent grants exclude others from: Making the invention  Using the invention  Selling the invention  Offering the invention for sale  Importing the invention  * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    20. 20. You Should Know … 5. The Four Types of Trademarks and the Requirements for Federal Registration
    21. 21. 5. Types of Trademarks  Trademarks  Identify and distinguish the source of a good  Service Marks  Identify and distinguish the source of a service * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    22. 22. 5. Types of Trademarks  Collective or Membership Marks  Used by a cooperative to indicate that goods/services are provided by a group member.  Certification Marks  Used to indicate (“certify”) the quality of goods or services. The placement of a certification mark on goods or use in conjunction with services is an assurance to consumers that the goods and services meet the standards of the certifying organization. * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    23. 23. 5. Types of Trademarks  Other Forms of Trade Identity:  Trade Dress  Encompasses the distinctive “look” of a product. Trade dress can include product packaging, distinctive restaurant designs, product configuration or product containers. * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    24. 24. 5. Types of Trademarks  Product Configuration  The actual design of the product itself (as contrasted with its packaging). Product configuration is a form of trade dress. It must be “inherently distinctive” to be protectable.  Trade Names  The names of businesses used to identify corporate identity as contrasted with the source of a product or service. This can be confusing since a trade name can be a trademark, but need not always be, e.g. Coca-Cola Corporation versus CocaCola brand cola. * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    25. 25. 5. Requirements - Distinctiveness  Trademarks Must be Distinctive to Obtain Federal Registration and Protection  Inherently Distinctive   Its intrinsic nature serves to identify a particular source Acquired Distinctiveness or Secondary Meaning  Distinctiveness may be acquired through use if the public comes to recognize the mark as an indicator of source, thus giving it “secondary meaning” www.TheKellerLawFirm.com
    26. 26. 5. Requirements - Distinctiveness  Spectrum of Distinctiveness for Trademarks, which helps determine the Strength of a Mark      Fanciful or Coined Marks Arbitrary Marks Suggestive Marks Descriptive Marks Generic Terms www.TheKellerLawFirm.com
    27. 27. 5. Requirements - Distinctiveness  Fanciful or Coined Marks  Marks that do not have independent meaning or significance apart from their existence as a trademark, aka made-up words. These are the strongest marks on the spectrum of distinctiveness For oil and gas products For copying equipment For food products * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    28. 28. 5. Requirements - Distinctiveness  Arbitrary Marks  Existing words that are used in connection with goods/services that are wholly unrelated to the normal meaning of the word. These are also very strong marks For computers For electronic commerce services For Internet search engine services * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    29. 29. 5. Requirements - Distinctiveness  Suggestive Marks  Marks that require thought, imagination, or perception to identify the nature of the goods/ services. These are not as strong as fanciful or arbitrary marks. For outdoor clothing and equipment For tuna For detergent * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    30. 30. 5. Requirements - Distinctiveness  Descriptive Marks  Terms that immediately convey an idea of an ingredient, quality, characteristic, purpose, or function of the goods/ services. These are not protectable as marks without showing “acquired distinctiveness” or “secondary meaning” For financial services NEW YORK LIFE INSURANCE COMPANY® For insurance services For electronic goods and retail services * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    31. 31. 5. Requirements - Distinctiveness  Generic Terms  The common name of a good/service. These terms can never function as trademarks:     CEREAL for cereal MULTISTATE BAR EXAMININATION for an attorney competency exam LIGHT BEER for low-calorie beer CRAB HOUSE for restaurant that serves crab  Examples of formerly protected trademarks that are now generic terms:       ASPIRIN LINOLEUM ESCALATOR CELLOPHANE ZIPPER THERMOS www.TheKellerLawFirm.com
    32. 32. 5. Requirements - Distinctiveness  Types of Marks that are Protectable through a Showing of “Acquired Distinctiveness” or “Secondary Meaning”  Personal Names: AVERY DENNISON for office products, MCDONALD’S for fast food services, and GALLO for wine  Color, Sound, Scent: color PINK for fiberglass insulation, “Doink-Doink” sound for Law & Order, peppermint scent for office supplies * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    33. 33. 5. Federal Registration Benefits  Benefits of Federal Trademark Registration       Prima Facie evidence of validity and ownership Constructive use conferring nationwide priority as of date of filing Constructive notice of the registrant’s ownership of the mark, e.g. use of the symbol ® Ability to become incontestable Improved ability to block importation of infringing goods Broader array of remedies in an infringement action www.TheKellerLawFirm.com
    34. 34. You Should Know … 6. The Types of Material Eligible for Copyright Protection
    35. 35. What Copyright Protects Copyright protects "original works of authorship" that are fixed in "a tangible form of expression." The fixed form does not have to be directly perceptible so long as it can be communicated with the aid of a machine or other device.
    36. 36. 6. Copyrightable Materials  Literary Works  Musical Works  Dramatic Works  Pantomimes and choreographic works  Pictorial, graphic, and sculptural works  Motion pictures, other audiovisual works and sound recordings * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    37. 37. 6. Copyrightable Materials  What is NOT copyrightable … Ideas, concepts, or discoveries  Titles, names, short phrases, and slogans  Works that are not fixed in a tangible form of expression such as improvised speech or dance  Anything written or created by the US government.  * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    38. 38. 6. The Bundle of Rights  What rights does the owner control?  Reproduction of the Work  Prepare of Derivative Works  Distribution of Copies of the Work  Public Performances of the Work  Public Display of the Work * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    39. 39. 6. Federal Registration Benefits  Benefits of Federal Copyright Registration      Prima Facie evidence of validity and ownership Ability to sue for infringement and seek injunctions Statutory damages and attorneys’ fees Preempts the defense of “innocent infringement” Improved ability to block importation of infringing goods * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    40. 40. You Should Know … 7. Legal Vehicles Available for Trade Secret Protection
    41. 41. 7. Trade Secret Protection  Patchwork of State Laws  Model: The Uniform Trade Secrets Act (48 States)  The Economic Espionage Act of 1996  Criminalizes theft of trade secrets  Current Legislative Initiatives  Efforts to create federal civil remedies * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    42. 42. You Should Know … 8. The Most Common Types of Trade Secret Disputes
    43. 43. 8. Trade Secret Disputes  Employer v. former Employee  “The information was in my head …”  Lawful discovery v. theft  Permission  Independent development  No longer secret * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    44. 44. You Should Know … 9. The Elements of a Trade Secret Protection Program
    45. 45. 9. Trade Secret Protection  Security Measures  Consider physical layout of facilities – points of entry  Areas where sensitive work occurs, etc.  Confidentiality procedures  Document control  Protocols for computer use  Procedures directed at employees  Procedures directed at persons out of the company  Managing, monitoring and assessing the program * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    46. 46. You Should Know … 10. How to Measure the Value of Your IP
    47. 47. 10. Valuing Your IP  Conduct an Intellectual Property Audit  Is our IP being properly protected? Identify existing patents, trademarks, copyrights, licenses  Identify works in progress: R&D  Identify trade secrets and describe how they are being protected   What is the monetary value of our IP? Investment capital  Mergers & Acquisitions  * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    48. 48. Wrapping it Up Questions? * Images may be subject to copyright by a third party. www.TheKellerLawFirm.com
    49. 49. Thank You! Kelley Clements Keller, Esq. (717) 386-5035 kkeller@thekellerlawfirm.com @KelleyKeller /YourIPMatters /KelleyKeller www.TheKellerLawFirm.com
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