An Intellectual Property Primer
jrnifong@nkkpatentlaw.com
What is Intellectual Property?
How Important is Intellectual Property?- A
case study of Star Scientific
Types of Intellectual Property
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Trademarks-identify the source of goods
Copyrights-protect works of art
Trade Secrets-secrets within an organization
Trade Dress-protects the look and feel of an
organization
• Patents-protects goods and methods of
making and using those goods
Trademarks
• Any word, name, symbol, or device used to
identify and distinguish goods from those
manufactured or sold by others.
• A trademark is valid for as long as it is used by
the Organization.
• Service Marks are a form of a Trademark and
are used to identify the source of a service.
Trademarks continued…
What Protection Do Trademarks Offer?
• A Registered Federal Trademark protects against any
confusingly similar uses by a third party within the
United States.
• Strong marks are entitled to protection across a large
spectrum of goods and services. E.g. McDonalds Hotel
would be a trademark infringement of McDonalds
marks.
• Weaker marks are entitled to protection amongst
confusingly similar goods and services. E.g. Deer Park
Printing Services would not likely be an infringement of
Deer Park Water’s Trademark, but Deer Park Refreshing
Wine Coolers likely would be an infringement.
Copyrights
• Protect works of art
• Books, maps, charts, prints, musical
compositions, dramatic works, photographs,
paintings, drawings, sculptures, screen prints,
computer programs, movies, sound recordings,
dances, and architectural works.
• Last for life of the author plus 70 years.
• A “Fair Use” of copyrights is allowed. Fair use
allows a limited copying of a work.
• Teachers use portions of textbooks for teaching
purposes under the Fair use doctrine.
Trade Secrets
• Confidential information that is closely held
within a company may be subject to trade
secret protection.
• This is important when an employee with
confidential information leaves to join a
competitor. In this case, the Courts may
enjoin the employee from taking the new job.
• Trade Secrets are very difficult to establish and
win on in Court.
Trade Secrets continued
Trade Dress
• Applies to the visual
appearance of a
product or packaging.
• Only protects
nonfunctional aspects
of the design.
Patents
• Patents are a government granted monopoly
on new, nonobvious, and useful inventions.
• There are two types of patents in the United
States- Utility and Design.
• Utility patents protect the utility and function
of something.
• Design patents protect the look of something.
Patents continued
• Design patents last for 14 years from date of
issuance.
• Utility patents last for 20 years from date of
issuance.
Patents continued
• Patents give you the right to exclude others from
making, using, selling, or offering to sell a
patented product.
• Kodak v Polaroid- Kodak paid $925 million dollars
in a settlement.
• Blackberry v NTP- Blackberry paid $612 million
dollars in a settlement.
• Richardson v Microsoft- Microsoft paid $537
million dollars in a settlement to an independent
inventor.
Types of Agreements In Business
• Employment agreement: Non-compete, nondisclosure, IP rights assignment
• Non-disclosure agreement between parties
• Joint Venture agreement
• Licensing agreements
• Distribution agreements
• Franchise agreements
Intellectual Property Myths- Fact or
Fiction?
• I can make millions of dollars off of a patent.
– Maybe
• I don’t need a trademark before picking a
business name.
– Maybe
• I must get IP to make my business thrive.
– Maybe
• Big Companies will just steal my idea like they did
Robert Kearns in “Flash of Genius.”
– Maybe
Myths continued
• Provisional patent applications are the coolest
thing since sliced bread.
– False
• I can get an international patent.
– False
• I can download copyrighted music and no one
will care.
– False
• I can put a SASE containing my idea in the mail
and get a poor man’s patent.
– False
Finishing Up- A few real life examples
• Trade dress infringement?
Examples continued
• Trademark infringement?
Examples continued
Examples continued
• Copyright infringement?
Examples continued
• Pixelated images on TV- infringement?
Questions?