Overview of

1. Basics of
Intellectual Property Law
Jim Chester, J.D. / LL.M.
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© J F. C hester 201 2
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2. Why does IP matter?
•U.S. trad e in com m ercial knowled ge-intensive services
and intangible assets— business, financial and,
com m unications services, and paym ents of royalties and
fees— has prod uced a consistent and growing surplus.
•It reached a record $1 08 bill in 2008, sufficient to
ion
counter-balance the high-technology good s d eficit, and
has been fl since then, reflecting the recession's effect.
at

3. Top IP “Myths”
1. Only large “high-tech” companies have IP
- EVERY business has IP Assets.
- A significant am ount of innovation com es from
ind ivid ual inventors & SM E’s
- Securing your IP rights in the US will give you
protection in other countries, as well
In m ost cases, US IP rights m ean not
hing outsid e US

4. Types of IP
 Trademarks
 Any name, symbol, figure, letter, word, or mark adopted
and used by a business to designate its goods/services
and to distinguish them from those of others
 Includes service marks, certification marks
 Also Trade Dress - Identifies the source or good by:
• Packaging
• Total image of a product
• Look and feel of business

5. Trademarks (Cont)
 US is a “first to use” jurisdiction –common law
 Can also register TMs with state & USPTO
 Trademark Symbols

Federally Registered Trademark - ®
 Federally registered trademarks and service marks
 Non registered marks - (no legal significance)

Trademark -™ (goods)

Service Mark - ℠ (services)
 Must protect, or can lose:
• Gone: Aspirin; Ketchup ; Zipper; Escalator
• Going? – Kleenex, Xerox, Band-Aid, Tivo, Google

6. Trademarks (Cont)
Trade Names - A name used to identify a commercial
product or service
Ex. General Electric, Inc. – legal name
GE – Trade name (i.e., “d/b/a”)
- Trademark

7. IP ISSUE SPOTTING
Trademarks – Situations that might give rise to legal
work for a typical company include:
• Formation of new company or spin-off
• New products/marketing campaign
• Enter new markets (incl. overseas)
• Notice a similar mark used by other company
• Merger/Acquisition or Financing

8. Other Types of IP
Patents- the exclusive right to an inventor to manufacture,
use, or sell an invention.
- Can only come from the US govt.
- Must meet statutory requirements
novel, useful, non-obvious, etc.
- Expire after 20 years after filing – NO renewal
 (Design patents – 14yrs. From issue of patent)

9. IP ISSUE SPOTTING
Patents– Situations that might give rise to legal work for a
typical company include:
• Company invents a new product
• Company develops a new business method
• Start-up wants to raise money by pitching its new
invention/method to potential investors
• Learn of a competitor’s use of a patented product
• Merger/Acquisition or Financing

10. Other Types of IP
Trade Secrets- Secrets secrets kept from the world by
that relate to how to manufacture, use, or sell something
(i.e., give a competitive advantage)
- No registration required
- Does not expire
- Must be protected (e.g., limited access, NDAs, etc.)

11. IP ISSUE SPOTTING
Trade Secrets – Situations that might give rise to legal
work for a typical company include:
• Same as “Patent” Issues
• Hire new employees or get new partner
• Learn that former Employee sent company materials to
new employer while still working for company

12. Other Types of IP
Copyright- exclusive right to make copies,
license, and otherwise exploit a
literary, musical, or artistic work,
whether printed, audio, video, etc
- Can last 100 years
- Under Berne Convention, this is the one
type of US IP right that gets automatic
protection in other countries
- Don’t need registration, but registration gives
additional rights/benefits

13. IP ISSUE SPOTTING
Copyright – Situations that might give rise to legal work for
a typical company include:
• Creation of web site
• Hire software company to develop proprietary contact
management program
• Create training materials/PPTs
• Advertisements
• Develop Firm newsletter or fact sheets to distribute to
clients/post on web, etc.

14. Intellectual Property Law
Three Main Elements:
n Securing IP Rights (directly & indirectly)
h Licensing IP
h Enforcing IP

15. Securing IP Rights - Directly
-NDA’s/Confidentiality Agreements
-Partner/JV Agreements
-Assignments/Transfers
-“ Work for Hire” and development agreements

16. Securing IP Rights - Indirectly
-State
- TM/SM – Sec. of State
-Trade Secrets (no registration)
-Nationwide
-TM, SM, trade dress – USPTO
-Patents – USPTO
- Copyrights – US Library of Congress
-International
-WIPO (Patent); Madrid Protocol (TMs)
-Foreign Gov’ts

17. Licensing IP
 No “cookie-cutter”
 Type of agreement will depend on type of IP, value, etc.
 Often start with prior agreements, but each transaction will need to
be evaluated individually
 Key concerns
 Timing & calculation of payments
 Scope of license
 Rights in future developments & goodwill
 Ensure against “transfer”
 Be wary of franchise characteristics
 Don’t want to imply partnership

18. Enforcing IP
 Investigating claims/potential infringement
 Drafting letters of inquiry & “Cease & desist” letters
 Negotiating settlements & consent agreements
 Prosecuting & defending infringement lawsuits

19. More IP ISSUE SPOTTING
 International IP – Protecting US-created IP abroad continues to be a huge issue for
American companies. Counterfeiting is a multi-billion dollar annual industry
 Get Some Help at the Border - Although IP owners must typically self-police against
infringement, US Customs will seize potential infringements of US IP rights, provided
the rights are recorded with Customs
 Design Patents. Relatively new to US law, these types of patents protect the design
elements of a useful device. They can be renewed. In some cases, a given item may be
protected by a ©, a trade dress registration, and a design patent
 Computer software – can be protected by © or patent. Copyright is easier but afford
protection only against exact copies. Patent is greater protection, but harder to get
because program’s “utility” must be novel.
 Co-Developed works – each owner will own 100% of the IP
 Internet – Google terms, domain names, Adwords, Metatags, etc.

20. Questions to Ask
 Do you have any registered trademarks, copyrights or patents?
 Do you sell products/services using a unique name?
 Do you have a logo?
 Do you have a web site? Have you developed business strategies or methods
that give your company an advantage in the marketplace?
 Have you ever been sued or otherwise confronted by anyone claiming you had
infringed on a mark, name, copyright or invention?
 Have you ever noticed someone using a mark or product similar to yours?
 Have you hired 3rd parties to develop logos, web sites, brochures,
advertisements, software, or other materials for your company?
 Do employees/contractors sign agreements regarding company IP, trade secrets,
or confidential information?
 Do you (or do you plan to) sell products/services or outsource production
outside the US?

21. Concluding Thoughts
Every com pany has IP assets – though m any d on’t
ad equately protect theirs.
A “Proactive” strategy with regard to IP assets is generall
y
m uch less expensive than a “Reactive” strategy

22. Questions?
Em ail jim@chester-law.com
D irect 214.988.9248
Toll Free 1 .877.34.Worl
d