Tom Walsh
September 20, 2006
TYPES OF INTELLECTUAL PROPERTY
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Patents
Trade Secrets
Trademarks
Copyrights
PATENT
 Grant of a property right to an
inventor by the government in
exchange for disclosure of the
invention
2004 PATENT STATISTICS
 Total U.S. patent applications filed in 2004: 382,139
 Total U.S. patents issued in 2004: 181,302
 Top ten companies for issued U.S. patents in 2004:
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IBM (3,248)
Matsushita (1,934)
Canon (1,805)
Hewlett-Packard (1,775)
Micron Technologies (1,760)
Samsung (1,604)
Intel (1,601)
Hitachi (1,514)
Toshiba (1,310)
Sony (1,305)
TYPES OF PATENTS
 Utility Patents - protect functional aspects of an
invention (i.e., the way something works or
structure that makes it work)
 Design Patents - protect ornamental aspects of an
article of manufacture
 Plant Patents - protect new types of plants
NATURE OF THE
PATENT PROPERTY RIGHT
Right to exclude others from
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making
using
offering for sale
selling
importing
in the U.S., for a limited duration (20 years
from application)
REASONS FOR OBTAINING A PATENT
 Excludes Others from the Market
 Provides Impediments to Competition
 Source of Revenue (Licensing, Infringement
Suits)
 Defensive Device (Cross-Licensing)
 Marketing Device
WHAT CAN BE PATENTED
 New, useful, and nonobvious:
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process;
machine;
article of manufacture;
composition of matter; and
new and useful improvements thereof
WHAT IS NOT PATENTABLE
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laws of nature
physical phenomena
abstract ideas
mere ideas or suggestions
WHO CAN OBTAIN A PATENT
 Only inventors
 If non-inventor applies, patent is invalid
 Joint inventors apply jointly
PATENT CLAIMS
 Claims define the patent rights
 Process or method claims - series of
steps to achieve result
 Apparatus claims - combination of
hardware elements
 Composition of matter claims chemicals
WHAT ARE THE REQUIREMENTS FOR
A PATENTABLE INVENTION?
 Pitfalls –
 “Public Use” and “On Sale” Bar
o An invention that is “in public use” or “on sale” more than
one (1) year before filing for patent protection is BARRED
from patent protection in the United States
 Absolute novelty in foreign countries
o It is generally best to file for patent protection
before any public disclosure or offer of the
invention for sale, since some countries have an
“absolute novelty” requirement
PROVISIONAL PATENT APPLICATIONS
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Less formal
No claims
Temporary – expires after one year
Obtain filing date
Not examined
Risks
PATENT INFRINGEMENT
 Unauthorized making, using, etc.
 Patent holder may sue in federal court
 Court may:
 Issue an injunction
 Award damages
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Lost profits; or
Reasonable royalty
SUGGESTIONS FOR MANAGING
A PATENT PORTFOLIO
 Good Recordkeeping
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Notebooks
Invention disclosure forms
Keep track of public disclosures and offers for sale
(Remember the 1 year bar!)
Patent Review Committee
Employment Agreements
Independent Contractor Agreements
Monitor the Competition
Mark Patented Products
WHAT IS A TRADE SECRET?
 A valuable and confidential formula, pattern,
program, device, method, technique, process, or
piece of information
 Derives independent economic value by not being
known by others
 Not generally known and not readily ascertainable by
proper means by other persons who can obtain
economic value from its disclosure
DURATION OF A TRADE SECRET
 Duration of trade secrets is
PERPETUAL as long as you
maintain the secrecy of the trade
secret
TRADE SECRET MUST BE MAINTAINED BY
OWNER IN SECRECY
 Can't claim trade secret if disclosed to others
without restriction of confidentiality
 Must be either a written or implied agreement to keep
secret
 Important to have company policies in place to
protect trade secrets
EXAMPLE POLICIES
 Confidentiality agreements with employees and third
parties
 Restricted access to and disclosure of trade secrets to
employees who need to know
 Security of building and facilities to prevent
inadvertent disclosure
 Limitations of plant tours, sales displays, etc.
 Computer security and limited access
 Disposal of trash
WHAT IS A TRADEMARK?
 A trademark is any word, phrase,
symbol or design, or a combination
of words, phrases, symbols or
designs, which identifies and
distinguishes the source of goods or
services of one party from those of
others.
TYPES
 "brand names" identify goods such as KODAK® film or
TROPICANA® orange juice
 "trade dress" consists of distinctive traits such as the color
or shape of goods and/or packaging, such as the shape of
a glass COCA-COLA® bottle or the color and design of
the TIDE® detergent package
 "collective marks" identify goods, services or members of
a collective organization such as SAE® or the AFLCIO®
 "certification marks" identify goods or services meeting
certain qualifications, such as UL® or the GOOD
HOUSEKEEPING SEAL®
CHOOSING A TRADEMARK
 Choose a distinctive mark.
 Marks are usually classified in one
of four ways: (i) arbitrary/fanciful,
(ii) suggestive, (iii) descriptive; or
(iv) generic.
HOW SHOULD A TRADEMARK BE USED?
 Trademarks should only be used as proper
adjectives and should be followed by a generic
noun.
 Buy PAMPERS® diapers.
 Do not use a trademark as a verb.
 “Xeroxing”
HOW SHOULD A TRADEMARK BE USED?
 Trademarks should be set off from surrounding
text.
 Correct use of federally registered marks:
o
®
 Correct use of unregistered marks:
o
™
HOW TO PROTECT A TRADEMARK
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Federal Registration
State Registration
Common Law Rights
International Registration
SCOPE
 Copyright protection is available for an
original work of authorship that is fixed in a
tangible form
 “Authorship” defined broadly
 Ownership initially vests in the author
 Copyright is a property right that can be
transferred to another party
PROTECTED
 Software (source code
and graphics)
 Music
 Video
 Photography
 Art
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Manuals, books
Compilations
Brochures
Web site artwork
Architectural works
NOT PROTECTED
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Names
Titles
Short phrases
Useful articles (functional)
Ideas
Facts
DATABASE
 Generally not copyrightable
 Feist rule
 Copyrightable databases
 Trade secret protection
THE BUNDLE OF RIGHTS
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Reproduce
Prepare derivatives
Distribute copies
Perform work publicly
Display work publicly
Prevent mutilation (visual art only)
FAIR USE
 Certain uses that would otherwise be infringing are
permitted if fair.
 Common fair uses:
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News reporting
Comment
Scholarship
Criticism
Teaching
Research
 Note:
 Copying articles for your private library is probably not a
fair use.
WORK MADE FOR HIRE
 Exception to rule that ownership vests in the
author
 Vests in the employer
 Must be created within the scope of employment
 Must be an employee
INDEPENDENT CONTRACTORS
 Independent contractor work can only be work
made for hire when the parties have it in writing
before the work begins and the work is:
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Contribution to collective work
Part of a motion picture/visual art
Translation
Supplemental work
Compilation
Instructional text
Test or answer to a test
OWNERSHIP
 Single author is life of the author plus 70 years
 Joint authors expires 70 years after the death of
the last surviving author
 Work made for hire is 95 years from first
publication or 120 years from creation,
whichever is shorter