Intellectual Property Slide Deck for Video Project
Intellectual Property Basics
1. Intellectual Property
What New Business Leaders Need to Know
Presented by:
Matti Neustadt Storie
Attorney
Stoel Rives LLP
Technology and Intellectual Property
January 28, 2010
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3. How do you get it?
• INVENT IT – patents, trade secrets
• CREATE IT – copyright, trade secrets
• USE IT - trademark
• REGISTER IT – patent, copyright, trademarks
• BUY IT
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4. What is it worth?
• Commercial or Competitive Advantage
– Monopoly rights
– Exclusivity
– Consumer Preference – Good Will
• Generate Revenue
– Licensing
– Merchandising
• Defensive Value
– Cross Licensing
– MAD
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6. Patents
• A government grant of a limited right to exclude
others from making, using, selling, offering, and
importing the claimed invention
• What a patent is not:
– A right to “practice” your invention
– You may not be free to practice your invention if it infringes
someone else’s patent
• A right to sue, not a right to do
• “Flavors” of patents: utility, design, and plant
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7. Patents
• Where do inventions
come from?
– Necessity
– Shortcomings of prior
solutions
– Applications of new
technologies
– Customer requests
– Engineers
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8. Patents
• To obtain a utility patent, applicant must show that
the invention is:
– New
– Useful
– Nonobvious
• New inventions have not been disclosed, or (in the
U.S.) are applied for within one year of disclosure.
• Non-obvious inventions means that it is not readily
ascertainable by a “person of ordinary skill in the art”
based on prior art.
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9. Patents
• Utility Patents – for useful inventions
– Term of 20 years from earliest filing date (for new
application)
• Design Patents – for designs (cannot be usesful)
– Term of 14 years from grant
– Narrowly interpreted – best against knock offs that don’t
include labels.
• Average of 32 months from application to grant (all
patents)
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10. Key Patent Issues for
Business Leaders
• Patents must be registered – there is no common law
right in an idea
– First-to-invent system in the U.S.
– One year grace period for filing
• Disclosure Requirements
• Cost
• Business Benefit / ROI
• Ownership/Inventorship
– Employee is inventor
– Employer will only own the patent under certain
circumstances.
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12. Trade Secrets
• Examples:
– Marketing and business plans
– Computer source code
– Secret recipes, formulas
– Product development efforts, including information about
what doesn’t work (“negative information”)
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13. Trade Secrets
• A trade secret is something that gives a business a commercial
advantage in the marketplace because it is secret.
• A trade secret is a creature of state law, both common and
statutory law.
• Trade secrets may exist in either tangible or intangible form and
creation of a trade secret depends on how the information is used
and protected. No registration system is available.
• Misappropriation and use of trade secrets may be subject to US
state and federal law as well, e.g., the RICO statute, the Economic
Espionage Act, and the Lanham Act.
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14. Trade Secrets
• A trade secret will only be protected by the courts if a
business takes care to keep it secret!
• How?
– Employment agreements
– Security and treatment of information
– Non Disclosure Agreements with third parties
– Limited Access
– Avoiding infection
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15. Key Trade Secrets Issues for
Business Leaders
• Developing and implementing policies regarding the
security of information.
• Implementing systems to reduce the risk of disclosing
trade secrets.
• Drafting and using appropriate non-disclosure
agreements with employees and third parties.
• Appropriate use of Non-Compete Agreements with
key employees.
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17. Copyrights
• Copyright protects “original works of authorship.”
• What are “works of authorship”?
– An idea or concept that is “fixed in a tangible medium of
expression.”
– What is fixed?
– What is an expression?
• Copyright protection only the EXPRESSION of the
idea, and not the idea itself.
– Monopoly rights in an idea are only granted through patents.
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18. Patent vs. Copyright
• Patent law allows the owner the right to exclude all others
from making, using, or selling the invention. The scope
of the invention is determined by the patent claims. It does
not matter if the infringer independently developed the
same invention.
• Copyright law prevents the copying of the expression of
ideas. Copyright law does not protect ideas themselves.
As a result, copyright law does not protect against
someone else stealing an invention, nor does it
prevent anyone else from independently creating the
same or similar expression.
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19. Copyrights
• An owner of a copyright has certain monopoly rights.
• These rights include the right to:
1. Reproduce the work;
2. Prepare derivative works based on the original work;
3. Distribute copies of the work by sale, rental, lease or
lending;
4. Perform the work publicly;
5. Broadcast the work (in the case of a sound recording; and
6. Display the work publicly.
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20. Copyright
• Ownership
– The Works Made for Hire Doctrine
– Works created by employees as part of their job are
generally owned by their employers.
• Government
• Professors
– However, paying a non-employee to create a work does
NOT guarantee ownership of the copyright.
• Consultants
• Independent Contractors
• Software Developers
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22. Copyrights
• Infringement • Defenses
– Music Downloads – Fair Use
– Linking – Public Domain
– Framing – Safe Harbor
– Tweeting
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23. Key Copyright Issues for
Business Leaders
• Ownership
– Copyright ownership is always vested in the author or creator of
the work.
– Right vest immediately upon fixation
• Term
– Life of the author plus 70 years (individual)
– 120 years after creation or 95 years after publication (corporate)
• Registration
– Registration a prerequisite to suit, recovery of statutory damages
• Infringement and Defenses
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27. Trademarks
• Trademark law is a type of consumer protection.
• Trademarks identify source of goods or services.
• Consumers associate familiar sources with past
experience and reputation.
• Result: protection of the consumer from confusion as
to source and quality.
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28. Trademarks
• An owner only has monopoly rights for the goods
which are associated with the mark.
• A mark is only protectable if it is inherently distinctive
or has acquired distinctiveness (“secondary
meaning”)
Most Least distinctive
distinctive
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29. Trademarks
• United States • Abroad
– Words – Words
– Designs (Logos) – Designs (Logos)
– Packaging and Product – Packaging and Product
Configurations Configurations
– Colors – Touch Marks
– Sounds – Holograms
– Fragrances – Taste marks
– Combinations of the Above
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31. Trademarks
• Trademark rights exist as soon as a distinctive mark
is used in commerce.
– For descriptive marks, rights are gained after it can be
shown that the mark has acquired distinctiveness.
• Registration of a trademark is not required for an
owner to have rights or to assert those rights.
– However, it has benefits.
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36. Trademarks
• Registration
– Registration provides enhanced rights and constructive notice to
the world.
• Marking – ™ and ®
– Marking can be a requirement for damages for infringement.
– Erroneous marking may lead to lawsuits.
• Use
– Consistent use.
– Trademarks are generally used as adjectives, not nouns and
NEVER verbs.
• Genericide
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37. Trademarks
• Infringement
– Passing Off (counterfeiting)
– Consumer Confusion
• Actions for infringement based on counterfeit goods
will only be available if the counterfeit goods are sold
under the trademark.
• The main test of infringement is whether the use of
the allegedly infringing trademark creates consumer
confusion.
• Senior user generally has priority and can stop
subsequent users.
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38. Key Trademark Issues for
Business Leaders
• Ensuring no prior use of the brand you are seeking
• Branding strategy
– Don’t pick brands likely to infringe
– Create and implement policies to protect your brand
• Registration plan
• Enforcement plan
– It is true that if you don’t use it, you will lose it.
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39. Key IP Issues for
Business Leaders
• Make sure you own it.
• If not, make sure you have the right to use it.
• Utilize protections available.
• Careful contracting.
• Monitor your rights, and be prepared to enforce them.
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40. Thank You!
Matti Neustadt Storie
Stoel Rives LLP
Technology and Intellectual Property
(503)294-9523
mnstorie@stoel.com
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