Intellectual Property Basics

Overview Of Presentation Copyright law basics Trademark law basics Patent law basics and contrast with trade secret protection 1

Copyright Law Basics 2

What Is A Copyright? A form of protection provided to the authors of “original works of authorship”. The exclusive right of an author to – copy a work, – distribute copies – create derivative works, and – perform or display a work publicly Is of a limited term 3

Requirements For Copyright Work must be original – not copied – meet a minimal threshold for originality Work may be any work of authorship – books, poems, plays, movies, dances, ballets, musical compositions, audio recordings, paintings, drawings, sculptures, photographs, software Work must be fixed in a tangible medium of expression 4

What Is A Copyright? Key statutes: – 1976 Copyright Act – Berne Convention Implementation Act (1988) – Sono Bono Copyright Term Extension Act (1998) 5

What Can’t Be Protected By Copyright? Works that have not been fixed in a tangible form of expression. Titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents. (Trademark can cover some of these) Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration. (Patents can cover some of these) Works consisting entirely of information that is common property and containing no original authorship. 6

Term Of A Copyright Life of the author plus 70 years (works created after Jan. 1, 1978) Works of corporate authorship: 95 years from the date of first publication or 120 years from the date of creation, whichever expires first Term for works created before 1978 is complex Works published before 1923 are all in the public domain 7

Copyright Notice Requirements Use of a copyright notice was part of previous U.S. statutory requirements – \"©“ or \"Copyright\", followed by the year of the first publication of the work and the name of the copyright holder Use of copyright notice now optional – Since 1976, when the U.S. passed a new Copyright Act that followed the 1886 Berne Convention Notice of copyright and damages “All rights reserved” – Result of the Buenos Aires Convention of 1910; now superfluous 8

Other Copyright Concepts Works made for hire Federal works International rights – Berne Convention Remedies – Generally civil law court, but criminal statutes exist 9

Trademark Law Basics 10

What Is A Trademark? A distinctive sign of some kind which is used to uniquely identify an entity’s products and/or services to consumers - an “Indicator of Source” – A trademark comprises a name, word, phrase, logo, symbol, design, image, or a combination of these The function of a trademark is to exclusively identify the commercial source or origin of products or services. 11

What Is A Trademark? Trademark rights arise out of the use and/or registration of a mark in connection only with a specific type or range of products or services. – Think of Apple Computer v. Apple Records; United Airlines v. United Parcel; – It may be possible to prevent the use of a mark in relation to products or services outside the specific range if it is likely that the business would expand into that range. 12

Trademark Rights Trademark rights are established through actual use in the marketplace Benefits of registration A registered trademark confers a bundle of exclusive rights upon the registered owner – the right to exclusive use of the mark in relation to the products or services for which it is registered. Once trademark rights are established in a jurisdiction, these rights are generally only enforceable in that jurisdiction 13

Types Of Trademarks Fanciful Arbitrary Suggestive Descriptive Apple Generic Windows 14

Trademark Notice Requirements The ™ symbol may be used when trademark rights are claimed in relation to a mark, but the mark has not been TM registered Services marks – SM The ® symbol is used to indicate that ® the mark has been so registered. It is not mandatory to use either symbol, but such notice can improve available remedies in the event of infringement Either symbol is typically placed in the top left- or right-hand corner of a mark. 15

Other Trademark Concepts Secondary Meaning Abandonment Genericide Naked Licensing 16

Patent Law Basics and Contrast With Trade Secret Protection 17

What Is A Patent? Exclusive right for inventions – Right to exclude others from making, using or selling a patented invention – Not a right to practice invention Limited time duration – Twenty years after filing date 18

Public Policy Considerations Objectives of a patent system – Reward inventor for skill and labor – Stimulate further efforts in the field – Secure to the public immediate knowledge of the invention, and unrestricted right to use after patent expires Contrast with trade secret law Contract theory – Limited monopoly in exchange for complete disclosure of invention 19

Reasons To Get A Patent Competitive advantages Additional economic value Intangible value 20

Requirements For Patentability Utility (§ 101) Novelty (§ 102) – Anticipation by prior art – Loss of right to patent invention Non-Obviousness (§ 103) – Secondary considerations Sufficiency of Disclosure (§ 112) – Written description – Best mode 21

Elements Of A U.S. Patent Bibliographical data Specification – Drawings – Background – Invention Summary – Detailed Description of Preferred Embodiment Claims 22

Process Of Obtaining A Patent Identification Patent prosecution 23

Identifying A Patentable Invention Conception Review committee Communicate with patent counsel 24

Drafting A Patent Application Meeting between inventor and patent counsel Drafting of application Inventor review 25

Prosecuting The Patent Application Process Time Cost 26

What Is A Trade Secret? California Uniform Trade Secrets Act, Civil Code § 3426.1: “Trade secret” means information, including a formula, pattern, compilation, program, device, method, technique, or process, that: – Derives independent economic value, actual or potential, from not being generally known to the public or to others who could derive economic value from its disclosure or use; and – Is the subject of reasonable efforts under the circumstances to maintain its secrecy. 27

Examples Of Trade Secrets “Trade secret” means information, including a formula, pattern, compilation, program, device, method, techniques, or process …. Traditional examples of information that may constitute a trade secret “Negative information” 28

Maintain Secrecy Trade secrets must be the subject of “reasonable efforts” to maintain secrecy: Cal. Civ. Code § 3426.1(d)(2) – A “trade secret” … “is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.” 29

Secrecy Issues SEC Filings SEC Filings Websites Articles Speeches Speeches Trade Shows Trade Shows Plant Tours Plant Tours Patent Disclosures 30

Comparing Patents & Trade Secrets Trade Secret Patent Term Potentially unlimited Twenty years after filing date Disclosure Destroys protection Necessary for protection Requirements Reasonable efforts to File with USPTO within one maintain secrecy year of sale or publication Scope of Any technical or business Technical apparatus or protection information or data of methods, compositions of value to a competitor if matter, business methods known Reverse Not actionable Actionable as infringement Engineering 31

Thank You Any questions? 32

For More Information, Contact: Paul Veravanich (949) 823-6983 pv@omm.com Alison Taub (949) 823-6979 ataub@omm.com O’Melveny & Myers LLP 610 Newport Center Drive, 17th Floor Newport Beach, CA 92660 (949) 760-9600 O’Melveny&Myers O’Melveny www.omm.com 33

Intellectual Property Basics

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