This document provides an overview of intellectual property law basics. It discusses why intellectual property matters economically for the US, common myths about IP, and the main types of IP including trademarks, patents, trade secrets, and copyrights. It also discusses securing, licensing, and enforcing IP rights and provides examples of common IP issues companies may face. The concluding thoughts emphasize that every company has IP assets and a proactive strategy is generally less expensive than a reactive one.

1. Basics of
Intellectual Property Law
Jim Chester, J.D. / LL.M.
1
© J F. C hester 201 2
.

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