2. What is Intellectual Property?
The protection of ideas
IP = Idea Protection
Originates from U. S. Constitution – “To Promote the
Progress of Science and useful Arts…”
3. The Vast Reach of IP Law
Books
Machines – cars, laptops, cellphones, aircraft
Sporting goods – sunglasses, tree stands, laser sights
Soft drinks
Artwork
Running shoes
Remote controls – TV, garage doors, trail cams
Full length movies
Food – cookies, pop chips, tabasco
Service mark sounds – NBC chimes
4. Why is IP Important?
Advances human enjoyment
– Music, art, writings, innovations
Intangible corporate assets - $$$$
– Licenses
– Royalties
– Trading Chips
Provides protection from competitors
How to go about protecting it?
First - must identify
5. This Talk - Basic IP Concepts
Patents, copyrights, trademarks, trade secrets – for
each one:
– What is it?
– What qualifies for it?
– How do you get it?
– How long can it last?
– “some” CAUTIONS
6. Basic Client Misunderstandings
“I’d like to get a copyright on the new name for my
restaurant”
“Can you get me a patent on my song?”
“Let’s trademark the title of my book?”
“I saw a new product in Canada, and I want to get a
patent on it in Florida”
7. Challenge in Identifying Valuable IP?
Many Engineers and Scientists:
– Solve every day problems
– Don’t beat their own drums
– Are humble
– Are quiet
The enterprise needs a way to identify IP
10. How to Identify Valuable IP?
Corporate culture
Awareness (e.g. “safety is everyone’s job”)
IP protection – as everyone’s job
Educate – expose to the law
Empower – to issue spot
Incent – share $$’s ?
This talk is the educate piece
11. Types of Protection
Copyrights
Trademarks & Servicemarks
Trade Secrets
Patents
Contracts
Many situations will call for some combination of
the types of protection available
12. Craft Beer Example
Trade Secrets – recipes, ingredients, etc.
Trademarks – name, name of beer
Copyright – web site, label/marketing artwork
Trade dress – look and feel of packaging and label
Contracts – covenants not to compete, assignments,
secrecy
13. Software Product Example
Copyright
– The code itself
– Structure, sequence, organization
Trademark – the name
Patent – the process
Trade Secret – keep the source code secret
Contracts
– Assignments – with contributors
– Licenses – with users
14. Restaurant Example
Trade Secrets – recipes, ingredients, etc.
Trademarks – name, name of dish
Copyright – web site, artwork
Trade dress – look and feel of lobby
Contracts – covenants not to compete, assignments,
secrecy
18. Copyrights – Typical Basic Questions
Where does protection come from?
Who can obtain protection?
What can be covered?
What rights are granted?
How long does protection last?
What qualifies as “Fair Use” of another’s work?
19. U.S. Constitution
Article 1, Section 8, Clause 8
The 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.
20. Copyrights
Subject Matter:
– Works
– of original authorship
– Fixed
– in a tangible medium of expression
– from which they can be perceived, reproduced, or
otherwise communicated
– directly, or with the aid of a machine or device
21. Copyrights
Works of authorship include:
– Literary works
– Musical
– Dramatic
– Pantomimes
– Pictorial, graphic, sculptural
– Motion pictures, other audiovisual
– Sound recordings
– Architectural works
23. Copyrights
Copyright holder owns the EXCLUSIVE right:
– to reproduce
– to prepare derivative works
– to distribute copies
– to publicly perform
– to publicly display
24. Copyrights
Term of protection:
– “rights” vest at moment of authorship/creation
• Copyright Registration not req’d for vesting
• Registration IS required for bringing suit
– for individual author - life, plus 70 years
– for corporation - lesser of:
• 95 years from publication, or
• 120 years from creation
25. Copyright – Registration Advantages
Winning plaintiff – attorney’s fees
Statutory damages
– $750 to $30,000 per work
– up to $150,000 if “willful infringement”
Customs impounding of infringing goods
26. Copyright Law Will NOT Protect
Ideas
Procedures
Processes
Systems
Methods of operation
Concepts
Principles
Discoveries
27. Copyright – Non-employee as Author
Employee authorship – in line and scope
– “Author” is the employer
– Employer owns the copyright rights
Independent contractor author
– Ind. contractor owns the copyright rights
– unless otherwise agreed in writing
Notice provision
– “Copyright 2018 Bradley Arant Boult Cummings LLP”
29. Copyrights – Software Issues
Software protected – defined in the Act
– Literary – source code
– Non-literal - Structure, seq., org., GUI, logic
Joint work – merged, inseparable, interdependent,
unitary whole
– Co-owners of all rights
– Pro-rata accounting – if not otherwise agreed
– Obtain rights from all contributors
Deposit code (redacted) to protect the trade secret
30. Copyrights – Fair Use
Sec 107 – “Limitations on Exclusive Rights”
– Notwithstanding the [exclusive rights sections], the fair
use of a copyrighted work ….for purposes such as
criticism, comment, news reporting, teaching ….
scholarship, or research, is
– NOT an infringement of copyright.
Factors
– purpose and character of the use, commercial vs
nonprofit, and transformative (changed, new, etc)
– the nature of the copyrighted work – (just facts, from
published work)
– the amount taken compared to the whole (less is more,
except in Parody), and
– effect on the potential market for the copyrighted work.
31. Typical Copyright Matters
Registrations of all types of authorship
Artwork
Photography
Software
– Joint works
– Derivative works
Licensing of Works
Assignments – by commissioned authors to the payor
Architectural works
Maps
Music
33. Trademarks – Typical Basic Questions
Where does protection come from?
What are trademarks?
Who can obtain protection?
What rights are granted?
How long does protection last?
34. U.S. Constitution
Article 1, Section 8, Clause 3
Commerce Clause
“To regulate Commerce
with foreign Nations,
and among the several States,
and with the Indian Tribes.”
Congress shall have power….
35. Trademarks
VERY important IP right
Brand identity – market niche protection
Reduce clutter. Prevent confusion. Distinguish.
Relatively inexpensive to protect (compared to patent
protection)
Work well across borders, cultures, and languages
Long-term protection while in use (QUAKER – 1895)
Provide value for expansion beyond core business
Assigned, pledged, licensed
Registration is important
36. Trademarks & Servicemarks
Indicates source of goods and services
Word, name, symbol, device, sound, color
Used to distinguish your goods and services from
those sold by others
Brand identity
37. The Power of Trademarks
Trademarks as full words – well known
BUT – can a single letter or a small design element
serve to identify a particular product to a consumer?
39. Key to Logo Images
Pez, Google, Mattel, Coca Cola
Planters, UAH, NFL, Wheaties, Vanderbilt
McDonald’s, Zaxbys, Rolling Stones, MasterCard,
Walmart
40.
41. A = All detergent B = Bubblicious gum
C = Campbell’s soup D = Dawn detergent
E = Eggo waffles F = Frito Lay
G = Gatorade drink H = Hebrew National franks
I = Icee drink J = Jello
K = Kool Aid L = Lysol cleaner
M = M&M candy (peanut) N = Nilla wafers
O = Oreo cookies P = Pez candies
Q = Q-tips ear swabs R = Reese’s cup candies
S = Starburst candies T = Tide detergent
U = Uncle Ben’s rice V = V-8 drink
W = Wisk cleaner X = X-14 cleaner
Y = York Peppermint Patty Z = Zest soap
Key to Alphabet Images
42. Examples
NBC peacock, and chimes
Logo and trade dress
Color pink for insulation
Nike “swoosh”
Phrase “Intel Inside”
44. Music, Sounds, Voice, Scent
3,034,331 – McDonald’s – “I’m lovin it”
– the notes A B C E D
2,315,261 – Intel – Intel inside
– the notes D FLAT, D FLAT, G, D FLAT and A FLAT
AOL
– rapid series of chime-like musical notes written on the
treble clef in the key of C major, comprising a
progression of the musical notes C, D, F, G, C, and the
combined notes A and D
45. 3,020,512 – Brown and Brown, Inc.
– insurance brokerage services
– sound of a wild cat growling
916,522 – NBC chimes
Music, Sounds, Voice, Scent
46. Trademarks – Weak to Strong
Generic words – pizza, shoe
Descriptive – describe a feature of the goods
Suggestive – requires mental connection
Arbitrary – use word with different meaning
Coined, Fanciful – totally made up
47. Trademarks – Weak
Generic - common names not capable of exclusive
ownership (pizza, house, automobile)
Descriptive - describe a characteristic, element,
function, of the product; very weak, but inexpensive to
put in use
Not protectable till acquire "secondary meaning" in
consumer's mind. “So associated with the product that it
identifies the source of the product and distinguishes the
product from those of others”. Jeld-Wen v. Dalco
Industries (8th Cir. 11/10/99)
48. Trademarks – Strong
Suggestive - suggest something about the product,
but do not describe it
Requires imagination, thought, and perception
49. Trademarks – Strongest
Fanciful or "coined" – meaningless
Arbitrary
– well-known words - arbitrary use
51. Trademarks
Infringement: Likelihood of confusion as to source or
sponsorship between two marks
– Many factor test
– Similarity of marks
– Similarity of goods / services
– Strength of mark
– Similarity of channels of trade
– Sophistication of purchasers (Lexus vs Lexis)
53. Suggestions:
How To Protect Your Trademark or Servicemark
Select – brainstorm, differing “strengths”
Search – clearance, “knockout”, full name
Register – federal, state, pharma
Use it
– Correctly – as an indicator, not as a noun (Aspirin)
– Consistently – not different versions
– With markings – ®, TM, SM,
– Use or Lose – must use to keep rights
Police – keep track of others’ uses
Broaden – Int’l market needs? Logo? Design? Tagline?
Maintain – perpetual, 5 to 6 year, renewal, $$
54. Trademarks – Typical Matters
Registrations
Infringement cases
– Radio stations
– Financial institutions
– Residential developments
Domain name disputes
– Arbitration
– Worldwide
– Bad faith use
– Pro-rata accounting – if not otherwise agreed
– Obtain rights from all contributors
Licensing
56. Trade Secrets
Think : “Trade” PLUS “Secret”
Information used in trade or business. Has significant
economic value
Included in formula, pattern, compilation, computer
software, drawing, device, method, technique, or
process
Has significant economic value
Not publicly known
Not generally known to trade or business
Can’t be derived from publicly available sources
Has been subject to efforts to keep it secret
57. Definitions - Misappropriation
Misappropriation
– Acquisition of a trade secret by improper means; or
– Unauthorized disclosure or use by a person who
acquired by improper means, or who knew . . . it was a
trade secret or was acquired by improper means.
“Improper Means”
– theft, bribery, misrepresentation, breach or inducement
of a breach of a duty to maintain secrecy or limit use, or
espionage through electronic or other means.
58. Basics of Loss of Trade Secrets
Trade secret law will protect you from misappropriation
and theft.
Trade secret law will not protect you from your
revelation of your trade secrets (purposeful or
careless).
Trade secret law will not protect you from your failure
to protect in the first instance.
59. Misappropriation, Value, Secrecy
Misappropriation or theft usually easy to identify
Information, economic value, and advantage over a
competitor
Secrecy – If a trade secret is not kept secret, then the
legal protections will be lost
State and Federal causes of action for trade secret
misappropriation
60. The Unwanted Truth
By the time misappropriation
(use or unwanted and
unauthorized disclosure) of
trade secrets occurs, the case
already may be lost due to
failure to take steps to keep
them secret!
61. Plan for Protection
Identify trade secrets
Routine trade secret audits
Steps for ongoing protection of trade secrets
62. Key People Identify Trade Secrets
Manufacturing processes
Computer programs
Business know-how
Formulas
Business methods
Vendor/Supplier/Customer Lists
Marketing plans
“Negative” information (what doesn’t work)
63. Potential Trade Secrets
Is the process/invention/information a secret?
Is it valuable to the company?
Is it known generally in the industry?
Is it obvious to others?
Can it easily be reverse engineered?
Be wary of temptation to claim “everything” is a trade
secret
64. Trade Secret Audit
Are there measures in place to identify trade secrets?
Are the measures effective or are others needed?
Where are trade secrets maintained?
Who has access?
Are there written policies?
Nondisclosure agreements?
Further safeguards?
65. Efforts to Keep Secret - Examples
Visitor logs
Secure spaces
Need to know
Shredding discipline
Garbage
Cleanse old computer hard drives
Markings
Don’t release outside company
66. Steps to Protect Trade Secrets
Segregate trade secrets from non-trade secrets
Label trade secret documents
Employees - manuals, training, exit interviews, notice
letters
Physical and virtual barriers
Restrict/control plant access
Prevent dissemination to public
Nondisclosure agreements
67. Use of Non-Disclosure Agreements
Critical element of a successful trade secret program
Very common business document, but rarely gets the
legal scrutiny it needs
“Internal” NDAs with employees and contractors
“External” NDAs with business partners and
transaction candidates
One size does NOT fit all!
68. What is Covered by the NDA?
Definition of “confidential information” should be
precise but manageable
Usually should specifically list “trade secrets,” or
include the statutory definition as a type of information
that is covered
List specific categories that are important (e.g.
customer lists, product formulas, etc.)
69. Labeling Requirements
Labeling requirements (or follow-up requirements) are
often not followed
Result = possibly important information not expressly
covered by NDA
Very large companies use labeling for risk
management
– Reduces risk of either party’s unintentional
noncompliance
If you are concerned about your own client’s ability to
comply with a marking requirement, make it a
separate obligation and NOT a part of the definition of
Confidential Information
70. Common Exceptions
Publicly available through no fault of receiving party
Independently developed without use of disclosing
party’s confidential information
Received from a third party not bound by a duty not to
disclose
Residuals – usually defined as “information retained in
unaided memory”
71. Obligations Under NDAs
Obvious one = don’t disclose!
– Be careful of efforts limitations
– Restrictions on reverse engineering
Less obvious but still important = don’t use it for
any other purpose
72. Permitted Disclosures
Employees who “need to know”
Representatives (e.g., attorneys, accountants) only if
bound by a similar duty of nondisclosure
Court order or other legal obligation
– This should NOT be an exception to what is covered (but
often is drafted this way)
– Require advance notice and efforts to seal it
73. Term
Term is ok for non-trade secrets
– Typically some period of time after relationship ends,
discussions stop, or last confidential information is
disclosed
Exclude trade secrets
– Expiration with respect to trade secrets could be
problematic to efforts to enforce a trade secret that was
disclosed under expired NDA
74. A Final Thought on NDAs
Self-Protection in disclosure
Just because there is an NDA with a third party, there
is not an obligation to disclose “everything”
Only disclose what is needed for success of the
venture/experiment/collaboration
Be wary of disclosing “crown jewels” even with an
NDA
75. Summary
Information that is not kept secret is not protected as a
trade secret
Take steps on the front end
Regularly assess what the company wants to protect
as trade secrets and the steps being taken
NDAs are vital for dealings with third parties that may
require disclosure of confidential information or trade
secrets
76. Typical Trade Secret Matters
Misappropriation cases
– Lack of secrecy measures
– Public info already
Covenants not to compete
– Territory
– Time
New employee / Ex-employee
– Retain information
– Lab books
– Software
77. If Info is Public, Then No Longer TS
(Mobile Medical Int’l Corp v. United States, No. 10-148C, Redacted version , 16Nov10, Fed. Cl.)
78. If Info is Public, Then No Longer TS
(Mobile Medical Int’l Corp v. United States, No. 10-148C, Redacted version , 16Nov10, Fed. Cl.)
79. If Info is Public, Then No Longer TS
(Mobile Medical Int’l Corp v. United States, No. 10-148C, Redacted version , 16Nov10, Fed. Cl.)
80. Use of Contracts for IP Protection
Licenses
– Click-wrap
– Formal, negotiated
– Field of use, types of rights, territory
Assignments – employees, independent contractors
Non-disclosure agreements
Non-compete agreements
Terms of use agreements
82. What is a Patent?
A patent is the right to exclude others from making,
using, selling, or offering to sell the patented invention
during the term of the patent
83. What a Patent is NOT
A patent is not the exclusive right to practice (make,
use, or sell) the patented invention.
In some cases, such as with improvement patents,
you may need a license from others to practice your
own invention.
84. Patentable Subject Matter
What Is Patentable?
– “Any new or useful process, machine, manufacture, or
composition of matter, or any new and useful
improvement therefor”
New, Useful, Nonobvious
What is Not Patentable?
– Laws of Nature, Natural Phenomena, Purely
Mathematical Algorithms
85. Enforcement
The patent owner is responsible for discovering
infringing activities and enforcing the patent against
the infringer, which may require initiating litigation in
federal court.
The Patent Office does not attempt to detect or stop
patent infringement.
86. Why Seek Patent Protection?
Exclude others. Without patent, others can copy with
impunity.
Secure financing / funding
Joint ventures or joint development
Royalty revenue
Cross – licensing
Premium value when selling Company
87. Limited in Territory
Applies to activities only in United States.
Patent protection is available in other countries.
88. Government-granted Monopoly
20 years from date of filing for currently issued
patents.
17 years for patents issued before June 8, 1995.
89. Filing a Patent Application
File Before Disclosure if Possible
Beware of Invention/Patent Marketing Services
Hire a Qualified Patent Attorney
Mark Products with “Patent Pending” after Filing
90. Selecting a Patent Attorney
Hire a only a Registered Patent Attorney
Attorney should be experienced in the preparation
(“prosecution”) of patent applications
Attorney should have experience and/or background in the
technical area
An IP Attorney will be able to help you and your clients
develop a comprehensive Intellectual Property Plan that
includes:
– Patents
– Trademarks
– Copyrights
– Trade Secrets
– Licensing
– Enforcement
91. What and When to Patent?
Patent Application should be considered when a
change is made to a product or process to:
– Solve a Problem
– Make an Improvement
– Increase Efficiency
Invention may be an improvement on another party’s
product, even if that product is already patented
Complexity of an invention DOES NOT equate with the
value of a patent
92. What Are Parts of Application?
Abstract
Specification
– Field of invention
– Background (problems solved).
– Summary
– Detailed description
– Drawings
– Claims (defines scope of monopoly)
93. Important Questions
Can I design around someone else’s patent?
What if my invention is just a slight improvement?
How long after my filing will my application be
published?
Patent applications can be kept confidential.
94. Why A Patent Search?
Helps inventor and patent attorney draft better
application
Increases likelihood of getting patent
May reveal that the “invention” has already been
invented
Saves money!
95. Design Patents
For ornamental features
Important, unique, and worthy of separate protection
Examples:
– Furniture
– Jewelry
– Christmas ornaments
96. Patent Markings
After patent application filed, mark goods
“Patent Pending”
After patent issues, mark goods with patent number.
EX: “U.S. Pat. No. 6,123,456”. Failure to mark, could
limit infringement damages.
97. America Invents Act
The most substantial reform of U.S. patent laws in
over 50 years.
98. AIA - First-to-File Provisions
U.S. has moved from a first-to-invent system to a first-
to-file system.
– first true inventor to FILE will be awarded the patent
rights.
First-to-file system appliesto applications with priority
claims that fall 18 months after the date of enactment
(March 16, 2013).
99. Public Disclosure Grace Period
The AIA retains an inventor’s one year personal grace
period for filing an application after disclosure, if the
public disclosure :
– Was made by the inventor;
– Was made by a third party that obtained the information
from the inventor
BUT, no grace period for a third party disclosure of an
independently-created invention
100. Derivation Proceeding
The AIA replaces the current interference system with
a derivation proceeding.
– Derivation proceedings will determine whether an
inventor named in an earlier-filed application derived the
claimed subject matter from the inventor of a later-filed
application.
– Derivation proceedings apply to applications having
priority claims that fall 18 months after the AIA’s
enactment (March 16, 2013).
101. Patent Prosecution Changes
The AIA includes a mandatory 15% increase in all
patent fees, which became effective on Sept. 26, 2011.
– A $400 fee was also imposed for all non-electronic
patent filings, effective Nov. 16, 2011
The AIA also created a new entity for fee calculation
purposes, the “micro entity,” which qualifies for a 75%
reduction in most patent fees.
102. Micro Entities
To qualify as a micro entity an applicant must:
– Qualify as a small entity;
– Be named as an inventor on no more than 4 previously-
filed U.S. applications;
– Have less than three times the median household
income in the previous calendar year (as defined by the
IRS); and
– Have not granted or be under an obligation to grant a
license or other ownership interest in the application to
an entity that has three times the median household
income in the previous calendar year (as defined by the
IRS).
Institutes of higher education, as defined by the AIA,
also qualify for micro entity status.
103. If ALL You Remember:
Patents
– U.S. is now “First to File” – so FILE
– Establish a culture of IP awareness
Trademarks
– If early – do a clearance SEARCH – (traction lost?)
– If “Intend” to use – file an “Intent To Use”
– Design mark – if change logo (a lot or a little)- REFILE
– ®, TM, SM – USE
– Foreign markets? Global economy – Foreign filing
Copyrights – benefits to filing BEFORE the infrgmt
– Joint Authorship issues
Trade Secrets – Keep it SECRET
Use ALL available forms of protection
Joint Dev. Contracts – decide who owns the baby