Overview of Intellectual Property:
The Legal Perspective
Michael Edelman
Dechert LLP
650.813.4857
michael.edelman@dechert.com
Presented at the University of Arizona (Optical Sciences Center) February 17, 2005
© 2005 Dechert LLP
Summary
• Different types of intellectual property
• How to obtain rights in intellectual property
• Enforcement of intellectual property rights
• Issues specific to patent litigation
• Recent case law on intellectual property issues
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Different Types of Intellectual Property
• Patents
• Copyrights
• Trademarks
• Trade secrets
• Other related claims
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Different Types of Intellectual Property
• Patents
– Government issued grant, conferring upon
owner the right to exclude others from
making, using, offering for sale, or selling an
invention
• Does not convey a positive right to make, use,
or sell the invention
– Patent term lasts for 20 years after filing date
(for patents filed after 6/8/1995)
– Rooted in Article I, Section 8 of the
Constitution
• Congress is given the 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”
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Different Types of Intellectual Property
– To be patented, invention must be
useful and novel
• “On-sale” bar
• Anticipation defense
• Obviousness defense
– Arguably most powerful type of
intellectual property
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Different Types of Intellectual Property
• Copyright
– Protects expressions of a work of authorship
– Does not protect ideas themselves:
• Section 102 of Copyright Act: “In no case does copyright
protection for an original work of authorship extend to any idea,
procedure, process, system, method of operation, concept,
principle, or discovery, regardless of the form in which it is
described, explained, illustrated or embodied in such a work”
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Different Types of Intellectual Property
– Examples of works that can
be the subject of copyright
protection: Books; designs;
musical recordings; source
code
– Though one can own
copyright without
registration, owner needs a
registration to sue
– In order to sue, must show
“substantial similarity”
between copyrighted work
and infringing work
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Different Types of Intellectual Property
• Trademarks/trade dress
– Protects against consumer confusion
– Typically not considered a “property” right
in the same way as patents
– Do not need trademark registration to
sue, but it is extremely helpful for
enforcement
– To succeed in suit, need to show mark is
distinctive and that there is likelihood of
confusion
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Different Types of Intellectual Property
– Federal trademarks governed
by Lanham Act; state protection
also available
– Trade dress: Packaging or nonfunctional product design that
becomes identified with
particular source
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Different Types of Intellectual Property
• Trade secrets
– Governed by state law rather than federal law
– Uniform Trade Secrets Act enacted by most states
– Trade secret must be subject of reasonable efforts
to preserve secrecy, and have independent
economic value from secrecy
– Often difficult to enforce; difficult to adequately
define trade secret and prove it has stayed secret
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Different Types of Intellectual Property
• Other
– Corporate opportunities
– Ideas protected by
contract/agreement
– Unfair competition laws
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How to Obtain Intellectual Property Rights
• Common misconception: Intellectual property rights are
only obtained through certificate with PTO
– Not true for certain types of IP
• Patents
– Must obtain patent registration to have rights
– Newer federal law permits recovery of damages for preissuance infringement under certain circumstances
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How to Obtain Intellectual Property Rights
• Copyrights
– Can possess a
common law
copyright without
obtaining a
registration certificate
– Cannot proceed with
infringement suit
without obtaining
registration
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How to Obtain Intellectual Property Rights
• Trademarks
– Trademark rights acquired by use, not by registration
– Registration provides procedural advantages, but is not
requirement for infringement suit
• Trade secrets
– No registration required; can possess a trade secret even if
never used
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How to Obtain Intellectual Property Rights
• Obtaining a patent
– Can be expensive and arduous
process
– First file a patent application
with PTO, which should include
written description and
proposed claims (the
“specification”), and drawings
• Specification often includes
background of invention,
summary of invention, detailed
description of invention, abstract,
and oath or declaration
– Can file “provisional” application
to protect rights
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How to Obtain Intellectual Property Rights
– After filing, often have to wait many months or
possibly years before PTO issues an “office action”
• Examiner will search for prior art, and also examine
application for other defects
– Office action usually rejects claims, often because of
Examiner’s belief that inventions in application are not
novel (can be “anticipated” by prior art or inventions
can be “obvious”)
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How to Obtain Intellectual Property Rights
– Applicant can then file response to Office Action,
arguing why invention is novel compared to prior art
• This is “danger area” for litigation, because statements
made by applicant can come back to haunt it
– Eventually, PTO either issues a final rejection, or
accepts some or all of claims and patent is issued
– After issuance, patent is presumed valid, and it is
burden of defendant to disprove validity
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Enforcement of Intellectual Property
Rights
• Limited ways in which party can protect IP position
in PTO
– Interference proceedings
– Re-examination proceedings
– Filing an opposition to another party’s trademarks
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Enforcement of Intellectual Property
Rights
• Typically, serious attempt to enforce IP rights requires
sending of cease and desist letters and/or resort to the
courts
• For high-tech companies, patent litigation is often critical
– Remember “defensive” as well as “offensive” value of
patents
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Enforcement of Intellectual Property
Rights
• Strategies for enforcement of rights
– Always enforce rights as part of an overall strategy –
never take action in a vacuum
– Always consider whether there is something that can
be done in PTO that can avoid the need for litigation
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Enforcement of Intellectual Property
Rights
– Always make sure you evaluate the claims that
can be asserted against you by opposing party
– Always carefully evaluate the costs and all other
burdens that litigation will entail before sending
cease and desist letter
– Do not hire a “litigation mill”
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Enforcement of Intellectual Property
Rights
– For patent litigation:
• Always make sure that file histories and files of
prosecuting attorneys are reviewed
• Always make sure that attorneys have analyzed
claim construction issues before filings
• Never assume that you have a “slam dunk” case –
there is no such thing in patent litigation
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Issues Specific to Patent Litigation
• Patent litigation is typically the most expensive and
burdensome type of IP litigation
• Patent litigation is the most intellectually challenging
type of IP litigation
– Extreme tension between arguments on infringement
and validity
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Issues Specific to Patent Litigation
• Patent litigation has unique procedures
– “Markman” hearing: Up to the court to
decide “what the claims mean”; this
usually requires a mini-trial on claim
interpretation
– Interpretation of claims is a heated and
difficult issue
• District courts get it wrong almost half of the
time
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Issues Specific to Patent Litigation
• To prove patent infringement:
– Must show you have a valid patent
• Typical invalidity defenses: “on-sale” bar; anticipation;
obviousness; lack of enablement; lack of written description
– Must show you have an enforceable patent (no
inequitable conduct)
– Must show defendant infringes, either literally or
under “doctrine of equivalents”
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Recent Case Law
• Knorr-Bremse v. Dana Corp., 383 F.3d 1337 (Fed.Cir. 2004).
– No inference of willful infringement because of failure to produce
advice of counsel
• NTP v. Research in Motion, 392 F.3d 1336 (Fed.Cir. 2004).
– Affirming in part trial court’s finding that BlackBerry infringes
plaintiff’s patents
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Recent Case Law
• Centricut v. ESAB, 390 F.2d 1361 (Fed. Cir. 2004)
– “[W]here the accused infringer offers expert testimony negating
infringement, the patentee cannot satisfy its burden of proof by
relying only on testimony from those who are admittedly not
expert in the field”
• KP Permanent Make-Up v. Lasting Impressions I, 125 S.Ct.
542 (2004)
– To succeed on fair use defense in trademark case, defendant
does not have a burden to negate any likelihood that the practice
complained of will confuse consumers
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Summary
• The field of intellectual property is very diverse.
• Important to be familiar with basic mechanics of how to obtain
intellectual property rights, and whether you need to use the
PTO.
• Important to be familiar with the different strategies for
enforcing rights, and come up with overall intellectual property
plan.
• Patent litigation is a complex and costly endeavor, which
requires planning and excellent legal advice.
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Michael Edelman
Dechert LLP
Palo Alto, California
650.813.4857; michael.edelman@dechert.com
Michael N. Edelman is a partner in Dechert LLP’s intellectual property litigation group, resident in
the Palo Alto office. He focuses his practice on patent infringement, trademark infringement,
trade dress infringement, unfair competition, and misappropriation of trade secrets. He also has
extensive experience handling disputes between employers and former employees concerning
claims of misappropriation of trade secrets and diversion of corporate opportunities.
In one of Michael's most recent trade secret and patent infringement cases, he won significant
pre-trial orders and sanctions that helped lead to an extremely favorable settlement for his client.
In this high-profile dispute between two public software companies, Michael supervised a team
of computer forensic experts who used state-of-the-art technology to uncover the defendants'
"disk wiping" activities.
Michael is admitted to practice in California state courts, the Northern District of California, and
the United States Court of Appeals for the Ninth Circuit. He is a graduate of the University of
California at Santa Cruz (B.A., 1990) and the Santa Clara University School of Law (J.D., 1995),
where he was the ethics editor of Volume 35 of the Santa Clara Law Review and was also the
author of "Ethics Year in Review" and "Attorney Withdrawal From Concurrent Representations,"
which were published in the Santa Clara Law Review. He was also a recipient of American
Jurisprudence Awards in Legal Research, Writing, and Commercial Transactions and
participated in various Moot Court competitions.
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