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Introduction to Intellectual Property / IP 101 by Susan L. McCain of Hankin Law (May 30, 2018)

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On May 30, 2018, Susan L. McCain, Esq. of Hankin Patent Law presented this "Introduction to IP" slide deck at CRASH Space.

https://blog.crashspace.org/events/intellectual-property-topics/

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About Susan L. McCain of Hankin Law
With 20+ years of international experience within the biotechnology, chemical, medical, software, printing, and wireless device industries Sue brings her large firm experience to Hankin Patent Law, APC and is eager to provide the attentive and personalized service our clients expect. Her areas of expertise include intellectual property counseling, protection, and portfolio management, competitive analyses, IP-based due diligence, R&D advisor, licensing arrangements, and building value in IP assets.

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Introduction to Intellectual Property / IP 101 by Susan L. McCain of Hankin Law (May 30, 2018)

  1. 1. PEX Protect, Enforce, Exploit A Tale of Intellectual Property SUSAN L. MCCAIN HANKIN PATENT LAW, APC MAY 30, 2018
  2. 2. 4 Types of Intellectual Property 2Susan L. McCain, presented on 5/30/2018 ◦ Patents ◦ Trademarks ◦ Copyrights ◦ Trade Secrets
  3. 3. WHAT IS A PATENT? THE BASICS What is a Patent? Susan L. McCain, presented on 5/30/2018
  4. 4. ◦ A document that provides to the patent owner the right to prevent others from making, using, or selling the invention claimed in the patent. ◦ Personal property – can be bought, sold, licensed, etc. ◦ Territorial – must obtain patent in every country where protection is desired. 4 What is a Patent? Susan L. McCain, presented on 5/30/2018
  5. 5. Constitution of the United States gives Congress the power to enact laws relating to patents, in Article 1, section 8, which reads “Congress shall have power…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” 5 U.S. Patent Laws Susan L. McCain, presented on 5/30/2018
  6. 6. ◦ Issues Patents on behalf of U.S. Government. ◦ Headed by Commissioner of Patents and Trademarks. ◦ Part of the Department of Commerce. ◦ Administers the patent laws as they relate to the granting of patents. ◦ Examines applications for patents. 6 United States Patent and Trademark Office (USPTO) Susan L. McCain, presented on 5/30/2018
  7. 7. Statute provides “any person who invents any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof…” 7 Patentability (What may be patented?) Susan L. McCain, presented on 5/30/2018
  8. 8. ◦Process ◦ Process, act, or method ◦Machine ◦Manufacture ◦ Articles which are made, including all manufactured articles ◦Composition of Matter ◦ Chemical compositions, mixtures of ingredients, new compounds 8 Patentability Susan L. McCain, presented on 5/30/2018
  9. 9. ◦Laws of nature, physical phenomena, and abstract ideas are not patentable subject matter. ◦ Algorithms ◦ Some computer software ◦ F=MA 9 Patentability (cont.) Susan L. McCain, presented on 5/30/2018
  10. 10. ◦Utility ◦ Must have a useful purpose. ◦ Must be operational to be useful. ◦Novelty ◦ Must not be known or used by others in this country. ◦ Or patented or described in printed publication in this county or a foreign country. 10 Conditions of Patentability Susan L. McCain, presented on 5/30/2018
  11. 11. ◦Nonobvious ◦ Even if novel, an invention is not patentable if it differs from the prior art only by way of an “obvious” modification. ◦ “Obvious” means obvious to a person of ordinary skill in the art at the time the invention was made. ◦ Highly subjective. 11 Conditions of Patentability Susan L. McCain, presented on 5/30/2018
  12. 12. ◦ Specification ◦ Written description of the invention ◦ How to make and use ◦ Can contain figures (important for devices) ◦ Abstract (short summary) ◦ Claims ◦ Executed oath or declaration of the inventors 12 Anatomy of the Application Susan L. McCain, presented on 5/30/2018
  13. 13. ◦ Most important part of the application: they define what is being claimed as the invention. ◦ Purpose of the rest of the application is to support the claims. ◦ Claims must define an invention that does not overlap with the prior art. ◦ Claim language is arcane – drafting is an art. 13 Patent Claims Susan L. McCain, presented on 5/30/2018
  14. 14. 1. A method of treating cancer through administration of an immune stimulant in combination with an antioxidant. 2. The method of claim 1, wherein said immune stimulant is a toll like receptor (TLR) agonist. 3. The method of claim 1, wherein said antioxidant is ascorbic acid. 14 Patent Claims: Susan L. McCain, presented on 5/30/2018
  15. 15. 15 Patent Claims: Susan L. McCain, presented on 5/30/2018 1. An aqueous polishing formulation for polishing a substrate comprising at least one single crystal silicon carbide layer, the formulation comprising: from about 11g/L to about 200 g/L of an MXO2 etchant, wherein M is a metal or ammonium, X is bromine or chlorine, and O is oxygen; and from about 11g/L to about 600 g/L of high purity alpha alumina particles, wherein the alpha alumina particles have a Mohs harness of at least about 7, a grain size ranging from about 50 nm to about 300 nm, and a specific surface area ranging from about 5.5 m2/g to 15 m2/g; wherein the ration of the MXO2 etchant to the high purity alpha alumina particles contained in the aqueous polishing formulation is from about 1:1 to about 1:10 on a weight bases; wherein the aqueous polishing formulation had a pH of from about 3.7 to about 6.3; and wherein the aqueous polishing formulation has a polishing rate for at least one single crystal silicon carbide layer of greater than 500 nm/hr.
  16. 16. ◦ Patent Prosecution is a negotiation with the USPTO where the Applicant (inventor) negotiates with the Examiner to obtain claims that are as broad as possible. ◦ Prosecution may entail written arguments and examiner interview. ◦ The claims often change during patent prosecution, but the specification remains the same. ◦ Once allowed by the Examiner, the application issues as a Patent. 16 Patent Prosecution Susan L. McCain, presented on 5/30/2018
  17. 17. 17 Issued Patent Susan L. McCain, presented on 5/30/2018
  18. 18. ◦ A Patent is a Negative Right to Exclude others from making, using, selling, or offering for sale the claimed invention. ◦ Sanctioned monopoly for a set number of years in exchange for disclosure to the public. ◦ A Patent is not a Positive Right for the patentee to make, use, or sell the invention. 18 Rights Granted by Issued Patent Susan L. McCain, presented on 5/30/2018
  19. 19. ◦ Design Patent ◦ Any new and nonobvious ornamental design for an article of manufacture. ◦ Protects only the appearance of an article, not its structural or functional features. ◦ Plant Patent ◦ Protects newly discovered varieties of plants 19 Design and Plant Patents Susan L. McCain, presented on 5/30/2018
  20. 20. ◦ U.S. Patents effective only in the US, but can prevent import of infringing products. ◦ Paris Convention and Patent Cooperation Treaty facilitate claims of priority to a U.S. patent application. ◦ Foreign filing process must be initiated no more than one year after the earliest priority date. ◦ Foreign filing is extremely expensive!! 20 Foreign Patent Protection Susan L. McCain, presented on 5/30/2018
  21. 21. ◦ Unauthorized making, using, offering for sale, or selling any patented invention in the U.S. ◦ Must include all elements of the claim in order to infringe. ◦ Enforceable upon issuance of patent ◦ Remedies: ◦ Injunction to prevent continued infringement ◦ Damages – up to treble damages for willful infringement ◦ Attorneys’ fees 21 Patent Infringement Susan L. McCain, presented on 5/30/2018
  22. 22. WHAT IS A TRADE SECRET THE BASICS Susan L. McCain, presented on 5/30/2018 Protects anything that: • Provides a competitive advantage. • Not generally known to the public.
  23. 23. ◦ Derives value from not being known by the public. ◦ Protection only lasts as long as secrets are kept. ◦ Must take reasonable precautions to maintain secrecy. ◦ May include compositions, processes, computer software, business methods, customer lists, recipes. 23 Key Issues Susan L. McCain, presented on 5/30/2018
  24. 24. ◦ Secret formula for Coca Cola ◦ Merchandise 7X is the secret ingredient ◦ Executives who know formula can’t fly on the same plane or be left alone with each other. ◦ The Colonel’s Secret Brand of 11 Herbs and Spices ◦ Locked in a file cabinet with two combination locks in a vault and behind three more locked doors. ◦ Includes samples of the 11 herbs and spices 24 Examples Susan L. McCain, presented on 5/30/2018
  25. 25. 25 What is a Trademark? Susan L. McCain, presented on 5/30/2018
  26. 26. 26 Trademarks Cover Susan L. McCain, presented on 5/30/2018 Goods Services Trade Names
  27. 27. 27 What Can Function as a Trademark Susan L. McCain, presented on 5/30/2018 ◦ Words: NIKE® ◦ Letters: KROQ® ◦ Numbers: 747 ® ◦ Slogans: PROTECT WHAT YOU HAD IN MIND® ◦ Sounds: “You’ve got mail®”
  28. 28. 28 Logos Susan L. McCain, presented on 5/30/2018
  29. 29. 29 Shapes Susan L. McCain, presented on 5/30/2018
  30. 30. 30 Colors Susan L. McCain, presented on 5/30/2018
  31. 31. 31 Selecting a Trademark Susan L. McCain, presented on 5/30/2018 Is the mark “trademarkable?”
  32. 32. 32 Not All Marks Are Equal Susan L. McCain, presented on 5/30/2018 Fanciful marks Arbitrary marks EXXON® CLOROX® GOOGLE® APPLE® FOX® YAHOO!® Suggestive marks Descriptive marks Strongest Protection Weakest Protection WORD® CHAPSTICK® 99¢ ONLY STORES® CHICKEN OF THE SEA® COPPERTONE® 7-ELEVEN®
  33. 33. 6/27/17 Generic term: common descriptive name of the good or service it identifies GENERICIDE
  34. 34. 34 Selecting a Trademark Susan L. McCain, presented on 5/30/2018 Is the mark available for (1) Use, and (2) Federal registration.
  35. 35. 35 Selecting a Trademark Susan L. McCain, presented on 5/30/2018 ◦Does the mark infringe? ◦ Is the new mark “likely to cause confusion, or to cause mistake or to deceive” with a senior mark? ◦ 15 U.S.C. §1114(1)
  36. 36. 36 Selecting a Trademark Susan L. McCain, presented on 5/30/2018 9th CIRCUIT “SLEEKCRAFT”: Non-exclusive factors to evaluate “Likelihood of Confusion”:
  37. 37. 37 Selecting a Trademark Susan L. McCain, presented on 5/30/2018 9th CIRCUIT “SLEEKCRAFT”: • Similarity of marks (look, sound and meaning); • Marketing channels; • Distinctiveness of senior mark; • Defendant’s intent in picking the mark; • Proximity or relatedness of goods; • Likelihood of expansion of the product lines; • Type of goods and degree of care likely to be exercised by consumer; • Evidence of actual confusion.
  38. 38. 38 Selecting a Trademark Susan L. McCain, presented on 5/30/2018 OTHER 3RD PARTY RIGHTS TO CONSIDER • Copyrights • Right of Publicity • Titles • Unfair competition • Unjust enrichment
  39. 39. 39Susan L. McCain, presented on 5/30/2018
  40. 40. 40 Protecting a Trademark Susan L. McCain, presented on 5/30/2018 ◦ To maximize protection, apply for a federal trademark registration whenever possible. ◦ Federal trademark registration provides: ◦ Constructive notice of nationwide rights ◦ Additional protection under federal ◦ Rights date back to filing of application ◦ File application as soon as possible.
  41. 41. 41 Protecting a Trademark Susan L. McCain, presented on 5/30/2018 What if you do not register the Mark? Common Law rights begin to accumulate in the U.S. the moment a mark is used. ◦ Limited in geographic scope. ◦ If your mark is the newcomer, cannot trump someone’s senior Common Law rights by federal registration.
  42. 42. 42 Protecting a Trademark Susan L. McCain, presented on 5/30/2018 Use the Mark! ◦ Cannot register in the US without use. ◦ Stopping use makes registrations vulnerable to cancelation. ◦ Without use, there are no Common Law rights. ◦ Without use, cannot maintain your US registration.
  43. 43. 43 Protecting a Trademark Susan L. McCain, presented on 5/30/2018 Trademark owners have the duty to: ◦ Police their marks. ◦ Enforce their marks. ◦ Control use and quality associated with mark.
  44. 44. 44Susan L. McCain, presented on 5/30/2018 Remedies Against Infringers: ◦ Injunctive Relief, ◦ Preliminary Injunction, ◦ Monetary recovery. Protecting a Trademark
  45. 45. WHAT IS A COPYRIGHT THE BASICS Susan L. McCain, presented on 5/30/2018 What is a Copyright?
  46. 46. Constitution of the United States also gives Congress the power to enact laws relating to copyrights, in Article 1, section 8, which reads “Congress shall have power…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” 46 Copyright Laws Susan L. McCain, presented on 5/30/2018
  47. 47. 47 Copyrights Cover Susan L. McCain, presented on 5/30/2018
  48. 48. 48 Copyrights Don’t Cover Susan L. McCain, presented on 5/30/2018 • Ideas • Raw data • Concepts • Historical facts • Procedures; processes • Systems; methods of operation • Principles
  49. 49. Copyright Basics Who owns a copyright? ◦ Initial ownership: the copyright in a work is owned by the author or authors of the work. ◦ The copyright in a work is owned by the employer if the work was “made for hire”: ◦ By an employee within the scope of her employment, ◦ If the work was specially ordered or commissioned. 49Susan L. McCain, presented on 5/30/2018
  50. 50. Copyright Basics The copyright owner has the exclusive rights to: ◦ Copy or reproduce the work ◦ Publicly display the work ◦ Publicly perform the work ◦ Create a derivative work ◦ Publicly disseminate the work 50 This Photo by Unknown Author is licensed under CC BY Susan L. McCain, presented on 5/30/2018
  51. 51. Copyright Basics How long does copyright protection last? For works created in or after 1978: ◦ The lifetime of the creator/author plus 70 year. ◦ Up to 120 years for works created by an employee for the employer. ◦ After term of protection ends, work enters public domain. 51Susan L. McCain, presented on 5/30/2018
  52. 52. WHEN IS THIS EVER TRUE? THE BASICS Susan L. McCain, presented on 5/30/2018
  53. 53. Limitations on Exclusive Rights Certain uses or actions limit the exclusive rights of the copyright owner. ◦ Fair Use ◦ Parody ◦ First Sale Doctrine 53Susan L. McCain, presented on 5/30/2018
  54. 54. Fair Use ◦ Limited copying of a copyrighted work for purposes such as criticism, comment, news reporting, teaching, scholarship or research, without the copyright owner’s permission, is not an infringement. ◦ Examples: ◦ Quoting lines from a song in a music review. ◦ Quoting a medical article in a news report. ◦ Copying paragraphs from a news article for use by a teacher. 54Susan L. McCain, presented on 5/30/2018
  55. 55. Fair Use Factors ◦Purpose and character of the use – commercial or nonprofit? ◦Nature of copyrighted work. ◦Amount and substantiality of portion used in relation to copyrighted work as a whole. ◦Effect of use upon potential market for/ value of the work. 55Susan L. McCain, presented on 5/30/2018
  56. 56. Parody 56Susan L. McCain, presented on 5/30/2018
  57. 57. First Sale Doctrine A person who buys a legally produced copyrighted work may sell or dispose of the work as she sees fit. Once the owner lawfully sells/transfers the work, the owner’s rights in the material object embodying the copyrighted work are exhausted. ◦ Example: a legal buyer of a book or CD has the right to loan, sell, or throw away the book or CD . 57Susan L. McCain, presented on 5/30/2018
  58. 58. Benefits of Copyright Registration ◦ Public notice of ownership. ◦ Legal evidence of ownership. ◦ Validity if registered within 5 years of publication. ◦ Maximize damages in case of infringement. ◦ Ability to bring infringement suit. 58Susan L. McCain, presented on 5/30/2018
  59. 59. Copyright Infringement The reproduction, distribution, performance, public display, or derivation of a copyrighted work without the copyright owner’s permission, and no exception exists. 59Susan L. McCain, presented on 5/30/2018
  60. 60. Remedies for Infringement Civil remedies for infringement: ◦ Injunction (preliminary and/or permanent), ◦ Damages: ◦ Plaintiff’s actual damages + defendants’ profits; or ◦ Statutory damages (as much as $150K/work infringed).* ◦ Attorney’s fees* - Only available if the work was timely registered. Criminal penalties include fines and/or imprisonment. 60Susan L. McCain, presented on 5/30/2018
  61. 61. Some intellectual property rights can work together Patents and trademarks 61 TM® Susan L. McCain, presented on 5/30/2018
  62. 62. Some intellectual property rights are exclusive of other rights 62Susan L. McCain, presented on 5/30/2018
  63. 63. Intellectual Property Licenses 63Susan L. McCain, presented on 5/30/2018
  64. 64. A License Is… ◦A contractual business relationship between two or more parties. ◦Licensor gives permission or right to use intellectual property or technology. ◦ Licensee pays remuneration or other value to Licensor for the right. 64Susan L. McCain, presented on 5/30/2018
  65. 65. Purpose of License o Commercially exploit technology. o Preferably to mutual benefit of both parties. oMay be offensive or defensive. Susan L. McCain, presented on 5/30/2018 65
  66. 66. What Can Be Licensed Technology ◦ Patents ◦ Trade Secrets (must limit number of licensees) ◦ Copyrights ◦ Trademarks / Service Marks ◦ Know-how Non-Technical ◦ Business Methods ◦ Customer Lists ◦ Training Materials Susan L. McCain, presented on 5/30/2018 66
  67. 67. Types of Licenses ◦ Exclusive vs. non-exclusive ◦ Limited to field of use ◦ Manufacturing ◦ Distribution ◦ Joint venture ◦ Sponsored research 67Susan L. McCain, presented on 5/30/2018
  68. 68. Advantages of a License Income from Royalties ◦ Recoup research and development costs. ◦ Recoup intellectual property protection costs. Venture into New Markets ◦ Test marketability. ◦ Reduce capital required to enter market. ◦ Allow for adaptation into local markets. ◦ Reach into new fields. ◦ Increase market share and strength. Susan L. McCain, presented on 5/30/2018 68
  69. 69. Advantages of a License (continued) Defensive ◦ Acquire cross-license from licensee (trade bait) ◦ Avoid or settle litigation ◦ Reduce royalties licensor may have to pay to licensee Susan L. McCain, presented on 5/30/2018 69
  70. 70. Disadvantages of a License ◦ Loss of income (royalty vs. direct sales) ◦ Loss of control / rights (exclusive license ◦ Constrains your market (field of use) ◦ Assists your competitors by licensing your technology ◦ Administrative hassles 70Susan L. McCain, presented on 5/30/2018
  71. 71. License Fees ◦ Fees paid to Licensor for license grant. ◦ May be structured in variety of ways. ◦ Examples ◦ Lump sum payment ◦ Annual license fee ◦ Royalties 71Susan L. McCain, presented on 5/30/2018
  72. 72. Intellectual Property Summary Aspect Utility Patent Design Patent Trade Secret Copyright Trademarks Subject Matter (Federal Law) 35 USC §101 et seq. (Federal Law) 35 USC §171 Geneva Treaty now in effect (State Law) Uniform Trade Secret Acts (Federal Law) 17 USC §101 et seq. (Federal Law) Lanham Act 15 USC §1051 et seq. State Law; Common Law Protection Novelty Utility Non-Obvious Gives you the right to exclude others Novelty Ornamental Non-Obvious Gives you the right to exclude others Formula, device, software, customer lists, pattern, data, business plans, etc. used in a business which gives competitive advantage and not generally known to public Right to reproduce and to make derivative works and to distribute same Word, name, symbol, device, or combination thereof, which indicates to consumer the source and quality associated with goods or services Susan L. McCain, presented on 5/30/2018 72
  73. 73. Intellectual Property Summary Aspect Utility Patent Design Patent Trade Secret Copyright Trademarks How to Obtain Rights Issued by Government (PTO) Issued by Government (PTO) Maintain secret legitimately subject to state law Original work of authorship when fixed in tangible medium of expression. Expression only is protected; not ideas. Common Law: Use State: Use in State and registration Federal: Use in Interstate Commerce and registration Duration 20 years from date of filing or earliest priority date 14 years from issuance Infinite Life of author: + 50 years. Corporation: 75 years. Anonymous, pseudo anonymous or works for hire: 75 years from first publica- tion or 100 years from creation, which ever expires first Common law: potentially indefinite, if used 10 years with right to renew, must use mark State - varies by state Susan L. McCain, presented on 5/30/2018 73
  74. 74. Intellectual Property Summary Aspect Utility Patent Design Patent Trade Secret Copyright Trademarks Infringement Making, using, selling or importation Making, using, selling or importation Knowledge of trade secret -- use, disclosure or threat to do so Unauthorized copy or use of work (access/substantial similarity) Use of mark; actual confusion; likelihood of confusion When Protected When issued When issued When developed When created and fixed in tangible medium. Registration required for suit. Common Law: use State: use & registered Federal: when registered Independent Discovery No defense No defense No complaint No complaint No defense Susan L. McCain, presented on 5/30/2018 74
  75. 75. Intellectual Property Summary Aspect Utility Patent Design Patent Trade Secret Copyright Trademarks Remedies Injunction Damages Attorney Fees Treble Damages Injunction Damages Attorney fees Profits Injunction Damages Punitives Attorney fees, if by statute Actual or Statutory ($30,000-$150,000, if willful infringement) 17 USC § 504; Possible criminal liability; injunction; confiscation of infringing works 17USC § 502,503 Attorney fees to prevailing party 12 USC § 505 Actual Damages 15 USC § 1114; treble damages if willful 15 USC § 1117(b); injunction 15 USC § 1116; destruction of infringing articles 15 USC § 1118 Attorney fees in exceptional cases 15 USC § 1117 (a) Susan L. McCain, presented on 5/30/2018 75
  76. 76. Susan L. McCain, presented on 5/30/2018 Partner, Hankin Patent Law With 20+ years of international experience within the biotechnology, chemical, medical, software, printing, and wireless device industries, Sue provides the attentive and personalized service our clients expect. Her areas of expertise include intellectual property counseling, protection, and portfolio management, competitive analyses, IP- based due diligence, R&D advisor, licensing arrangements, and building value in IP assets. Working closely with her clients, Sue assists them in devising tactical plans to extend, expand, finance and protect their intellectual property, or guides them to determine which areas of their IP should be protected. Proficient across all areas of research and investigation, Susan conducts extensive competitor research to determine if the associated IP has been secured and patented by others. With a focus on IP strategy, Sue’s collaborative style assists clients to make the right decisions in regards to new product design, competitor landscape, and beneficial growth-focused acquisitions. She has achieved significant success in helping companies utilize their intellectual property assets to obtain funding, raise investor interest, increase M&A value, and to leverage a stronger position during an acquisition Sue has a strong interest in philanthropic and charitable pursuits and is involved with numerous not-for-profit agencies. She serves as a Vice President for the Order of Malta Western Association Los Angeles Auxiliary and is a volunteer with the St Francis Center for the Homeless, Alexandria House, and Habitat for Humanity. Education J.D., cum laude, Case Western Reserve University School of Law 1993 B.A., Chemistry, magna cum laude, Case Western Reserve University 1990 M.B.A., University of Notre Dame, Mendoza College of Business, expected May 2020 76

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