TEXT
CLDP
Commercial Law Development Program
Office of General Counsel
United States Department of Commerce
INTELLECTUAL PROPERTY LAW
Joe Yang, Attorney-Advisor, Commercial Law Development Program
CLDP
Commercial Law Development Program
Office of General Counsel
United States Department of Commerce
I. PATENTS
II. COPYRIGHTS
III. TRADEMARKS
IV. TRADE SECRETS
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PATENTS- Key Concepts
Anyone who invents or discovers any
new and useful process, machine,
article of manufacture or composition
of matter, or any new and useful
improvement thereof, may obtain a
patent.
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PATENTS, KEY CONCEPTS continued..
1/ Main domain of relevance for engineers and scientists
Patents are the main form of protection of the research and development work that results in a new product or a
new process.
2/ Purpose of the rights
The main purpose of patents is to promote research and economic development. In exchange for a detailed
description of a new product or new process, the inventor (or its employer – if there is an assignment of right) has
the exclusive right to make, use, sell, offer for sale and import the patented product or process, in the
country/countries where the patent was granted.
3/ Nature of the rights
The patent owner has the right to exclude others from unauthorized making, using, selling, offering for sale and
importing the patented product or process, in the country/countries where the patent was granted.
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PATENTS, KEY CONCEPTS continued..
4/ Limits of the rights
The rights attached to a patent are only valid in the country/countries where the patent was granted.
The rights attached to patents are valid for a limited time period, which in most countries is 20 years from the filing
date of a patent application.
5/ Requirements to acquire rights
In most countries patents are only granted if the invention meets three conditions:
a) It must be useful;
b) It must be new; and
c) It must be non-obvious (involves inventive step).
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PATENTS, KEY CONCEPTS continued..
6/ Types of disputes
Most disputes have to do with claims of patent infringement: organization A claims that organization
B is manufacturing, using, or selling a product or process in a territory in which A has a patent
on the product or the process.
The rights of patent holders are enforced either through licensing agreements or through law suits.
7/ Transfer of rights
Patent rights can be sold or licensed. Licenses can be either exclusive (i.e. to one party) or nonexclusive and (i.e. to more than one party) and can be limited by duration, territory and/or
specific products/processes.
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Patent Exercise
Exercise 1
Country X has a long tradition of medicine an important feature of which has always been the use of
herbs.
Medicinal properties of some herbs and flowers, in particular periwinkle, have been known since the
Middle Ages. Periwinkle extracts and preparations have been described in numerous books and
articles on the subject.
Based upon this knowledge, A, a pharmacist, has developed a syrup consisting mostly, but not
exclusively, of periwinkle extract. She claims that this composition can boost the immune system and
protect against common cold.
All of the exercises in this presentation are entirely fictional. Any similarity with real persons, organizations or
countries would be a mere coincidence.
Several of the exercises below are excerpted or adapted from CLDP’s Intellectual Property Manual.
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PATENT EXERCISE continued
Question 1: May A apply for a patent? If yes, what must A demonstrate in order to prove
that she is entitled to a patent?
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PATENT EXERCISE continued
Answer to Patent Exercise Question 1: In order to obtain a patent she must
demonstrate:
1/ That her composition is new (novel).
2/ That it involves an inventive step (is non-obvious over similar products that
have been known/described before).
3/ That it is capable of industrial application (useful).
Since similar periwinkle-based products have been described before her
invention, most likely she will not be able to satisfy the novelty and/or
inventive step requirements.
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PATENT EXERCISE continued
Assume that A was granted a patent. Another pharmacist, B has bought A’s syrup,
analyzed it and made a syrup with the same ingredients. B wants to sell his syrup in
the same country under a different name.
Question 2: May B do so?
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PATENT EXERCISE continued
Answer to Patent Exercise Question 2: If A obtains a patent protection
for her invention then she would have an exclusive right to make,
use, sell, offer for sale and import the patented product. In that
case, B would not be able to sell the same product in that country.
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PATENT EXERCISE continued
B has bought A’s syrup, analyzed it and made a syrup with the same
ingredients. However, B prepares a very diluted version of A’s
syrup and wants to sell it as a medicine for very young children.
Question 3: May B do so?
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PATENT EXERCISE continued
Answer to Patent Exercise Question 3: If A obtains a patent protection
for her invention, mostly likely B’s diluted version of the product
would infringe the A’s patent since it contains the same formula as
the patented invention.
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COPYRIGHTS-Key Concepts
Copyright law protects original works of authorship
fixed in any tangible medium of expression.
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Literary works
Musical, dramatic and choreographic works
Pictorial, graphic and sculptural works
Audiovisual works
Sound recordings
Architectural works
Compilations and collective works
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Copyrights, key concepts continued..
1/ Main domain of relevance for engineers and scientists
Copyright is the main form of intellectual property protection for computer programs. A “computer program” consists of a
set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.
This includes both source code and object code.
2/ Purpose of the rights
The purpose of copyright is to protect the authors of original (not copied) works of authorship. Computer programs are
considered “literary works” and are therefore copyrightable. The person who actually creates the computer program
is generally considered the owner of any copyright that may exist in that program.
Depending on the laws of a particular jurisdiction, the employer of the person who created the computer program is
considered the copyright owner if the computer program was created within the scope of that person’s employment.
A computer program will be protected by copyright only if it contains a sufficient amount of original literary expression.
The protectable “original literary expression” in a computer program consists of the actual statements and instructions
(the code) used to express the author’s ideas..
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Copyrights, key concepts continued..
3/ Nature of the rights
The owner of the copyright in a computer program enjoys certain exclusive rights to that program (e.g. the right to
authorize the reproduction or distribution of the computer program). The owner of the copyright may also
license the use of particular copies of the protected computer program to individual purchasers and, pursuant
to such sales, place contractual restrictions on how that particular copy of the computer program may be
used. For example, many software licensing agreements for use in places of business will place restrictions
on the number of computer terminals to which the computer program may be copied and used.
4/ Limits of the rights
Copyright does not protect ideas, only the expression of ideas. In the case of computer programs, copyright
protects the code drafted by the computer program developers.
Copyright protection for a particular computer program does not prevent others from writing their own original
machine readable code to achieve the same function as the existing copyright protected program.
Terms of copyright protection vary by jurisdiction. The Berne Convention (Article 7) requires that the minimum
term of protection be the life of the author plus 50 years. For non-person copyright owners (such as
corporations), the TRIPS Agreement (Article 12) requires a term of at least 50 years measured from the time
of the first authorized publication of the work.
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Copyrights, key concepts continued..
5/ Requirements to acquire rights
According to the Berne Convention, copyright vests at the moment of creation. The rights for computer programs
exist as soon as the program is developed.
6/ Types of disputes
Most disputes have to do with claims of computer program piracy: organization A claims that organization B is
using, copying, distributing, etc. computer programs developed by A without having been authorized to do so.
The rights of copyright holders are enforced either through licensing agreements or through law suits.
7/ Transfer of rights
The exclusive rights associated with the copyright in a particular computer program are often licensed.
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Copyright Exercises
Exercise 1
Using directories and websites from all major Country X research institutions and
universities, A creates a web-based database of 1000 scientists from Country X; this
database makes it possible to conduct searches by scientific fields and to find
scientists who have published scientific papers in each field.
Question 1: Does A have a copyright?
Question 2: Can A charge people for using his database?
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Copyright Exercises continued…
Answer to Copyright Exercise question 1: Possibly, provided that the selection
and arrangement of the contents in the compilation of data constitutes an
original intellectual creation. Assuming such originality exists in the
selection or arrangement of the data compilation, it is important to note that
such copyright protection would extend ONLY to the original manner in
which the data has been selected and/or arranged and would not extend to
the data or material itself. To the extent the data itself is in the public
domain or otherwise not subject to copyright protection, others would be
free to copy such data. Copyright protection would also exist for the
display of the information on the website.
Answer to Copyright Exercise question 2: Nothing under copyright law prevents
A from charging for access to his website.
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Copyright Exercises continued…
Exercise 2
B and C have developed a computer program that makes it possible to conduct searches in
databases of pharmaceutical patents to identify domains of possible pharmaceutical research
that are not covered by patents. They call this computer program “Pharmasearch”. B and C
send their computer program to Company Y, a software company that specializes in “data
mining”, and offer to sell or license this computer program to Company Y. A month later,
Company Y sends back the computer program to B and C with a letter saying that Company Y
is not interested in buying or licensing the computer program. A year later, Company Y
publishes and starts selling computer program that makes it possible to conduct searches in
databases of pharmaceutical patents to identify domains of possible pharmaceutical research
that are not covered by patents. Company Y calls this computer program “Moleculesearch”. B
and C obtain a copy of “Moleculesearch”, analyze it, and conclude that the source code of the
computer program, its structure, and the screen displays are different from the source code, the
structure, and the screen displays of “Pharmasearch”.
Question: Has Company Y infringed B and C’s copyright?
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Copyright Exercises continued…
Answer to Exercise 2 Question: No. Copyright does not protect ideas but the
expression of ideas. So long as Company Y has not copied any of the
protected expression of “Pharmasearch”, it has not infringed B and C’s
copyright. Copyright does not prevent someone from creating a computer
program (1) which performs the same functions, as another program (2), so
long as program 1 does not reproduce the protected expression of
computer program 2, the original. This protected expression includes the
code, its screen displays, and, in certain instances, the structure, sequence
and organization of the program.
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TRADEMARKS KEY CONCEPTS
A trademark is any word, name, symbol, or device,
or any combination thereof –
(1)
(2)
used by a person or
which a person has a bona fide intention to use in
commerce
to identify or distinguish his or her goods from those
manufactured or sold by others and to indicate the source of
the goods.
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Trademarks, key concepts continued..
1/ Main domain of relevance for engineers and scientists
Trademarks or service marks are “signs” used in commerce to identify the goods or services of a
business. Trademarks can be company names--if they are used in commerce to identify goods or
services--or can be other signs, names or logos that are used by a business to identify specific goods
or services provided by that business. Trademarks can consist of words, letters, numerals, or
combinations thereof. They may also consist of designs, symbols, colors, three-dimensional shapes,
sounds or scents.
2/ Purpose of the rights
The purpose of trademark protection is two-fold:
1/ To prevent consumer confusion as to the source of the goods or services associated with a trademark.
2/ To provide the owner of the trademark with the exclusive right to prevent others from using the mark for
goods or services where such use would likely cause confusion as to the source of the goods or
services.
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Trademarks, key concepts continued..
3/ Nature of the rights
The owner of a trademark has the exclusive right to prevent others from using the mark on goods
or services where there would be a likelihood of confusion in the country/countries where the
trademark is used or registered, (whether rights are dependent on registration or mere use in
commerce depends on the legal regime of the particular country where protection is sought).
This protection extends to use of the same or similar marks on same, similar, related, or even
unrelated goods or services, depending on the facts of the case.
4/ Limits of the rights
Trademark rights are territorial; that is, they only exist in the country where the trademark is used
or registered.
A trademark registration generally has a 10 year term in most countries, but can be renewed every
10 years indefinitely, provided the appropriate maintenance documents are submitted to the
national trademark office.
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Trademarks, key concepts continued..
5/ Requirements to acquire rights
Whether rights in a trademark exist through mere use in commerce in a country or only through registration with
national authorities depends on the legal regime of a country. However, registration nearly always provides
more certainty for trademark owners and an easier burden of proof in court proceedings. The trademark
application process at a national office will include examination of the trademark in the application for
consistency with formality and statutory requirements. Many trademark offices around the world do a search
of their Trademark Register to determine if there is a conflict with a prior registration. If there is a conflict, the
Office may refuse the application. Other offices do not search their Trademark Register but merely publish
the application for opposition by interested third parties. If a third party objects to an application and files an
opposition to the application, a court or administrative tribunal will generally hear the case, with both sides
presenting evidence of the conflict or the lack of a conflict.
7/ Types of disputes
Trademark infringement occurs when an unauthorized party uses the same or similar mark on the same, similar,
related or unrelated goods or services where such use is likely to cause confusion with the public as to the
source of the goods or services. Counterfeiting is a type of infringement where the mark being used by an
unauthorized party is an imitation (a “spurious” mark) of a mark that is used on same or similar goods as the
protected mark. Counterfeiters, often times crime syndicates, make imitations of original products and sell
them under well-known brands.
The rights of trademark owners are enforced through suits brought in courts.
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Trademarks, key concepts continued..
8/ Transfer of rights
Trademarks can be sold, although they generally must be sold along with the business with which
the trademark is used. Also, trademarks can be licensed to third party distributors or
franchisees, as long as the trademark owner controls the nature and quality of the goods or
services being sold or provided under the trademark.
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Trademark Exercises
Exercise 1
Two college students have developed a software program that makes access to the Internet faster. They
decide to sell their software program to people and companies that operate “internet cafés.” They use
the mark “Moscrosoft” for their new software program because it will tell people that their software is
as good as the software developed by “Microsoft.”
Question: Does their use of the “Moscrosoft” mark on their software violate any trademark rights of the
Microsoft Company?
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Trademark Exercises continued..
Answer to Trademark Exercise 1 Question: Yes. Although the mark is not
identical to the Microsoft mark, it is sufficiently similar, and is used on
sufficiently similar goods, that the unauthorized use of the mark is likely to
confuse the public regarding the source or affiliation of the Moscrosoft
goods.
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Trademark Exercises continued..
Exercise 2
PHARMAGALEN is a well-known drug manufacturer. In several countries, PHARMAGALEN holds a
patent for a drug that helps prevent heart attacks in people who suffer from high blood pressure. It
markets its patented drug under the registered trademark “Plasmoff.” PHARMAGALEN has
discovered a number of counterfeit versions of its patented drug being sold in Country Y. These
counterfeit versions are sold under various marks including “Plasmoff” “Plasmaff”, “Plasmov.”
PHARMAGALEN does not have a patent in Country Y.
Question: Which of the marks above, if any, violate PHARMAGALEN’s trademark rights?
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Trademark Exercises continued..
Answer to Trademark Exercise 2 Question: All of them since they are virtually indistinguishable
from the Plasmoff mark. The unauthorized use of the marks violate PHARMAGALEN’s trademark
rights. It does not matter whether or not the drugs at issue are subject to patent protection. The
violation lies in the unauthorized use of the confusingly similar trademarks.
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Trade Secrets Key Concepts
A trade secret is any formula, pattern, device,
technique, process or compilation of information
that
 Is the subject of reasonable efforts to maintain secrecy, and
 Which derives economic value from not being generally known
or readily ascertainable by others.
Trade secrets are protected by keeping the relevant
information secret.
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Trade Secrets, key concepts continued..
1/ Main domain of relevance for engineers and scientists
Allow companies to protect processes, formulas, patterns, methods, techniques, programs,
devices, techniques that they may otherwise not be able or want to patent.
2/ Purpose of the rights
While is it generally legal to try to reverse engineer new products, new processes or new formulas,
it is illegal (and in many countries it is a crime) to try to acquire trade secrets through industrial
espionage, theft, bribery, or breach of contract.
3/ Nature of the rights
Owners of trade secrets can prevent others from illegally acquiring, disclosing or using their trade
secrets.
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Trade Secrets, key concepts continued..
4/ Limits of the rights
Trade secrets protection lasts for as long as the reasonable efforts have been made under the
circumstances to maintain the secrecy of the information. Once the information is made public, trade
secret protection ends.
5/ Requirements to acquire rights
In order benefit from the protection of the law, owners of trade secrets must have made reasonable efforts
under the circumstances to maintain the secrecy of the information they wish to protect.
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Trade Secrets, key concepts continued..
6/ Trade secret misappropriation
In general, a trade secret is misappropriated when it is acquired, used or disclosed without
permission by a person through improper means such as theft, bribery, breach of an obligation
to not use the trade secret, espionage, etc. Specific examples include: flying over a new plant
under construction and taking photographs in order to discover trade secrets, employee who
uses a trade secret in breach of a confidentiality agreement not to use or disclose a trade secret
after he leaves a company, consultant who developed a machine to make a new product and
uses a trade secret to later develop a similar machine to make the same product
for another client.
7/ Transfer of rights
Owners of trade secrets or of know-how can share these through licensing agreements; the
licensees commit to preserving the confidentiality.
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Trade Secret Exercises
Exercise 1
Company CB’s engineers invented an industrial glue that made it possible to glue composites to
metals. CB decided not to apply for a patent on its invention, but rather to keep the formula a
secret. CB’s glue is sold under the brand SUPRAMOLECULE. Company AD, a competitor,
bought a container of SUPRAMOLECULE and analyzed its content. After several weeks, AD
was able to determine precisely the chemical composition of SUPRAMOLECULE. AD then
started manufacturing and selling glue with the same composition as SUPRAMOLECULE. AD’s
glue is sold under the brand BONDATOM.
Question: Was CB’s intellectual property violated?
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Trade Secret Exercises continued..
Answer to Trade Secret Exercise 1 Question:
No. AD obtained the bottle of glue through legal channels and learned BC’s
secret composition through appropriate means (i.e. reverse engineering).
Consequently, AD is allowed to use this information.
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Trade Secret Exercises continued..
Exercise 2
Company CB’s engineers invented an industrial glue that made it possible to glue composites to
metals. CB decided not to apply for a patent on its invention, but rather to keep the formula a
secret. As part of its desire to keep the formula a secret, CB asked all the personnel of its
research and development department to sign a confidentiality agreement under which each
employee agreed not to disclose the glue’s formula without authorization from CB. CB’s glue is
sold under the brand SUPRAMOLECULE. Company AD, a competitor, bought a container of
SUPRAMOLECULE and tried to analyze its content. After several weeks, AD was unable to
determine precisely the chemical composition of SUPRAMOLECULE. AD then asked an
executive recruitment firm to hire CB’s head of research and development, Samuel A. by
offering him a very high salary. Samuel A. agreed to work for AD.
Six months after Samuel A. started working for AD, AD started selling a glue similar in its chemical
composition to SUPRAMOLECULE. AD’s glue is sold under the brand BONDATOM.
Question: Was CB’s intellectual property violated?
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Trade Secret Exercises, Questions continued..
Answer to Trademark Exercise 2 Question: If AD acquired the formula improperly (which would be
subject to proof in court proceedings) it might be liable for trade secret misappropriation. If
Samuel A. violated his confidentiality agreement by disclosing the trade secret to AD, he might
be liable for breach of contract.
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Thank you.
jyang@doc.gov
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