Basics Of Intellectual Property
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An overview of intellectual property including patents, trademarks, copyrights, and trade secrets.
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Basics Of Intellectual Property
- 1. Basics Of Intellectual Property© 2007 O’Melveny & Myers LLP Paul Veravanich Alison Taub Corporate Counsel Seminar Series February 27, 2007
- 2. Overview Of Presentation Copyright law basics Trademark law basics Patent law basics and contrast with trade secret protection
- 4. What Is A Copyright? A form of protection provided to the authors of “original works of authorship”. The exclusive right of an author to – copy a work, – distribute copies – create derivative works, and – perform or display a work publicly Is of a limited term
- 5. Requirements For Copyright Work must be original – not copied – meet a minimal threshold for originality Work may be any work of authorship – books, poems, plays, movies, dances, ballets, musical compositions, audio recordings, paintings, drawings, sculptures, photographs, software Work must be fixed in a tangible medium of expression
- 6. What Is A Copyright? Key statutes: – 1976 Copyright Act – Berne Convention Implementation Act (1988) – Sono Bono Copyright Term Extension Act (1998)
- 7. What Can’t Be Protected By Copyright? Works that have not been fixed in a tangible form of expression. Titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents. (Trademark can cover some of these) Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration. (Patents can cover some of these) Works consisting entirely of information that is common property and containing no original authorship.
- 8. Term Of A Copyright Life of the author plus 70 years (works created after Jan. 1, 1978) Works of corporate authorship: 95 years from the date of first publication or 120 years from the date of creation, whichever expires first Term for works created before 1978 is complex Works published before 1923 are all in the public domain
- 9. Copyright Notice Requirements Use of a copyright notice was part of previous U.S. statutory requirements – "©“ or "Copyright", followed by the year of the first publication of the work and the name of the copyright holder Use of copyright notice now optional – Since 1976, when the U.S. passed a new Copyright Act that followed the 1886 Berne Convention Notice of copyright and damages “All rights reserved” – Result of the Buenos Aires Convention of 1910; now superfluous
- 10. Other Copyright Concepts Works made for hire Federal works International rights – Berne Convention Remedies – Generally civil law court, but criminal statutes exist
- 12. What Is A Trademark? A distinctive sign of some kind which is used to uniquely identify an entity’s products and/or services to consumers - an “Indicator of Source” – A trademark comprises a name, word, phrase, logo, symbol, design, image, or a combination of these The function of a trademark is to exclusively identify the commercial source or origin of products or services.
- 13. What Is A Trademark? Trademark rights arise out of the use and/or registration of a mark in connection only with a specific type or range of products or services. – Think of Apple Computer v. Apple Records; United Airlines v. United Parcel; – It may be possible to prevent the use of a mark in relation to products or services outside the specific range if it is likely that the business would expand into that range.
- 14. Trademark Rights Trademark rights are established through actual use in the marketplace Benefits of registration A registered trademark confers a bundle of exclusive rights upon the registered owner – the right to exclusive use of the mark in relation to the products or services for which it is registered. Once trademark rights are established in a jurisdiction, these rights are generally only enforceable in that jurisdiction
- 15. Types Of Trademarks Fanciful Arbitrary Suggestive Descriptive Generic Apple Windows
- 16. Trademark Notice Requirements The ™ symbol may be used when trademark rights are claimed in relation to a mark, but the mark has not been registered Services marks – SM The ® symbol is used to indicate that the mark has been so registered. It is not mandatory to use either symbol, but such notice can improve available remedies in the event of infringement Either symbol is typically placed in the top left- or right-hand corner of a mark. TM ®
- 17. Other Trademark Concepts Secondary Meaning Abandonment Genericide Naked Licensing
- 18. Patent Law Basics and Contrast With Trade Secret Protection
- 19. What Is A Patent? Exclusive right for inventions – Right to exclude others from making, using or selling a patented invention – Not a right to practice invention Limited time duration – Twenty years after filing date
- 20. Public Policy Considerations Objectives of a patent system – Reward inventor for skill and labor – Stimulate further efforts in the field – Secure to the public immediate knowledge of the invention, and unrestricted right to use after patent expires Contrast with trade secret law Contract theory – Limited monopoly in exchange for complete disclosure of invention
- 21. Reasons To Get A Patent Competitive advantages Additional economic value Intangible value
- 22. Requirements For Patentability Utility (§ 101) Novelty (§ 102) – Anticipation by prior art – Loss of right to patent invention Non-Obviousness (§ 103) – Secondary considerations Sufficiency of Disclosure (§ 112) – Written description – Best mode
- 23. Elements Of A U.S. Patent Bibliographical data Specification – Drawings – Background – Invention Summary – Detailed Description of Preferred Embodiment Claims
- 24. Process Of Obtaining A Patent Identification Patent prosecution
- 25. Identifying A Patentable Invention Conception Review committee Communicate with patent counsel
- 26. Drafting A Patent Application Meeting between inventor and patent counsel Drafting of application Inventor review
- 27. Prosecuting The Patent Application Process Time Cost
- 28. What Is A Trade Secret? California Uniform Trade Secrets Act, Civil Code § 3426.1: “Trade secret” means information, including a formula, pattern, compilation, program, device, method, technique, or process, that: – Derives independent economic value, actual or potential, from not being generally known to the public or to others who could derive economic value from its disclosure or use; and – Is the subject of reasonable efforts under the circumstances to maintain its secrecy.
- 29. Examples Of Trade Secrets “Trade secret” means information, including a formula, pattern, compilation, program, device, method, techniques, or process …. Traditional examples of information that may constitute a trade secret “Negative information”
- 30. Maintain Secrecy Trade secrets must be the subject of “reasonable efforts” to maintain secrecy: Cal. Civ. Code § 3426.1(d)(2) – A “trade secret” … “is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.”
- 31. Secrecy Issues Websites Patent Disclosures Articles SEC FilingsSEC Filings Plant ToursPlant Tours SpeechesSpeeches Trade ShowsTrade Shows
- 32. Comparing Patents & Trade Secrets Trade Secret Patent Term Potentially unlimited Twenty years after filing date Disclosure Destroys protection Necessary for protection Requirements Reasonable efforts to maintain secrecy File with USPTO within one year of sale or publication Scope of protection Any technical or business information or data of value to a competitor if known Technical apparatus or methods, compositions of matter, business methods Reverse Engineering Not actionable Actionable as infringement
- 34. O’MelvenyO’Melveny&Myers O’Melveny & Myers LLP 610 Newport Center Drive, 17th Floor Newport Beach, CA 92660 (949) 760-9600 www.omm.com Paul Veravanich (949) 823-6983 pv@omm.com veravanich@yahoo.com http://www.linkedin.com/in/veravanich Alison Taub (949) 823-6979 ataub@omm.com For More Information, Contact:
Hinweis der Redaktion
- Thank you for attending Introduce
- We are going to discuss copyrights, trademarks, patents, and trade secrets, as well as factors a company may consider to determine which of these avenues to pursue to best protect its intellectual property.
- Covers copyrights and patents (Inventor’s discoveries)
- Copyright laws are standardized through international conventions such as the Berne Convention and are required by international organizations such as the World Trade Organization from their member states. Works prepared by officers or employees of the U.S. government are in the public domain. The Berne Convention provides for national treatment of other countries' copyright. In other words, the U.S. must treat a work that is copyrighted in the UK as if it were copyrighted in the U.S. The original holder of the copyright may be the employer of the actual author rather than the author himself if the work is a "work for hire". Copyrights are generally enforced by the holder in a civil law court, but there are also criminal infringement statutes.
- The Bass Red Triangle was the first trademark registered in Britain in 1876.
- Copyright laws are standardized through international conventions such as the Berne Convention and are required by international organizations such as the World Trade Organization from their member states. Works prepared by officers or employees of the U.S. government are in the public domain. The Berne Convention provides for national treatment of other countries' copyright. In other words, the U.S. must treat a work that is copyrighted in the UK as if it were copyrighted in the U.S. The original holder of the copyright may be the employer of the actual author rather than the author himself if the work is a "work for hire". Copyrights are generally enforced by the holder in a civil law court, but there are also criminal infringement statutes.
- A company may be faced with the decision of pursuing either patent protection or trade secret protection for a particular piece of intellectual property, but choosing one will preclude the other.
- Obtaining a patent provides a company with a monopoly over the particular technology for a set period of time. Specifically, a patentee is entitled to exclude its competitors from making, using, selling, or offering to sell a product that is covered by the patent. Note the right to exclude others from using – means that customers and end users may also be liable for infringement. In practice, though, most companies would refrain from suing customers as the customers of its competitors are likely their own or potential customers. Patent protection is not limited to a tangible product but can encompass methods of use and methods of manufacture. For example, a company may obtain a patent on its medical device, methods for using the device, and also methods of manufacturing the device. [contributory infringement: activity where, although not technically making, using, or selling, the defendant displayed sufficient culpability to be held liable – joint tortfeasor theory – one who intentionally caused, aided, or abetted the infringement. Ex., a seller sells a component not technically covered by the patent but has no other use except with the patented product or process. Need only knowledge, not intent, that activity causes infringement.] [active inducement: requires proof of actual intent to cause acts that constitute infringement.] Important to understand that, strictly speaking, a patent does not confer the right to practice the invention but, instead, enables the patentee to exclude. There are situations in which a patentee, by practicing its own covered invention, might also infringe another party’s patent. Ex., Microsoft sells a product, portions of which are covered by its patents – ex. MSFT owns patents covering methods and systems for protecting digital content that are implemented in its Windows Media Player. By selling that system it can still infringe another party’s patent. Recently, Microsoft was found liable for $1.52 billion for infringing patents relating to MP3s by selling its Windows Media Player. Patentee receives a monopoly, but only for a limited time – twenty years after the filing date of the application.
- Competitive advantages protect products or services from copying block competitor’s access to technology marketing advantages Litigation – sword and shield (shield – bargaining chips to avoid litigation) Additional economic value generate revenue from licensing (even when not practicing the invention) Intangible value reward / recognize employee contributions intangible asset for financing and valuation
- Utility – Promoting useful arts and sciences. See Section 8 of the U.S. Constitution: Congress shall have 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. Novelty – cannot be something already known Obvious Cannot be patented if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art (kind of like a reasonably prudent person instead of a particular individual/tortfeasor - that’s why it’s an objective and not subjective standard). Cannot be an obvious variation of something known. Ex. if a blue pen is known, cannot obtain patent on a fuschia pen even if there had never been a fuschia pen (unless there is something other than color that provides utility). Secondary considerations (commercial success, long felt but unsolved needs, failure of others). Commercial success. Disclosure Sufficient written description to allow any person skilled in the art to make and use the invention. Best mode – the inventor must disclose the best way of carrying out the invention.
- On the front of the patent is bibliographic data such as the title of the invention, the names of the inventors, when assigned the name of the assignee. The specification provides the substance of the patent. A person of skill in the art should be able to pick up the patent and, based on the specification, proceed to make and use the invention. Typically includes drawings, background of the invention, a summary of the invention, and a detailed description of the invention. Finally, each patent includes a series of claims that distinctly points out the subject matter that the inventors consider to be their invention. Oftentimes, the claims themselves are narrower in scope than what is described by the rest of the patent. Whether or not a third party infringes a patent is dependent on whether that party makes, uses, offers to sell, or sells a product that is covered by a claim.
- A company needs to identify whether it has an invention and, if so, whether it is sufficiently valuable to seek patent protection for the invention. And, if the company decides to seek patent protection, there is an involved process that is more complex, time consuming, and expensive than filing for a trademark or copyright registration.
- Something gets invented. How to go about identifying an invention? Many companies implement incentive programs. Document the invention. Invention disclosure forms, notebooks. Decide whether to pursue patent protection. Ex. Consideration by invention review committee. Factors: Importance of invention to core business. Potential to block competitors. Value added to patent portfolio. Disclose or keep secret. Invention complete or return to drawing board. But note placeholder function of application. Assign invention disclosure to patent counsel for patent preparation.
- Provide complete description of the invention; discuss points of novelty; discuss what is already out there Drafting of application; already noted parts (specification, drawings, claims) Inventor should review for accuracy and completeness
- Like a negotiation with the patent office; office actions (citation of prior art, rejection of claims); claim amendments, rebuttal arguments Allowance, issuance Or, final rejections, appeals Time? Varies; can be three years before even receive initial office action for certain technology groups; even more prior to issuance (if at all). Cost? Again, varies based on time it takes to prosecute the application. Tens of thousands.
- In CA, statutorily defined. Generally speaking, a trade secret is: information not known to the public that provides economic benefits for the owner by virtue of not being known to the public or to competitors who could gain from its use and is the subject of protective measures by the owner to maintain the information secret
- “ Traditional” trade secrets: customer and supplier lists manufacturing processes technical product information computer source code business plans and marketing strategies pricing and costs data “ Negative” information is also protectable (unexpected results, shortened time to market, avoiding blind alleys). For example, when writing a software program knowing that a particular, widely known algorithm is not the most efficient way to produce an intended result. But, “negative” information such as knowing what methods do not work or do not work as well may be more difficult to establish as it is often based on public information.
- No set rules or strict def. for meeting the “reasonable efforts” req. Based on particular circumstances “reasonable under the circumstances” Fact intensive, include the type (and sophistication) of the company, industry standards, company resources, the type of trade secret. The Coca Cola formula. Original copy of the formula is held in SunTrust Bank's main vault in Atlanta. Rule restricting access to only two executives, each knows the entire formula and others, in addition to the prescribed duo, have known the formulation process. 1 Employees, independent contractors and temporary personnel execute confidentiality agreements (define trade secrets, limit how can utilize trade secrets, types of monetary and injunctive relief that a company can recover if breach). 2 Conduct regular meetings with employees to remind them about what company considers confidential and why it wants to protect it. 3 Id any info co. considers TS as conf. & proprietary by either placing it in a separate file or label “confidential and proprietary” on it. 4 Limit access to only those persons who absolutely must see it. Ex. a separate locked file cabinet or require a password to gain access to it. 5 When establishing a new employment relationship, inquire whether that person’s previous employer required him or her to sign a confidentiality agreement. Promotes awareness by the new employee that his future employer respects the confidential and proprietary information of that person’s former employer. 6 If this is the case, advise other employees, independent contractors and temporary personnel that the company has been required to enforce a confidentiality agreement. 7 Include confidentiality provisions in personnel manuals. 8 Require vendors, suppliers and potential customers to sign non-disclosure agreements about the confidential and proprietary information made available to them, and make the company’s employees aware of that policy. A non-disclosure agreement is similar to a confidentiality agreement in that both seek to protect trade secrets. (Non-disclosure agreements are typically signed by vendors, suppliers and potential customers whereas confidentiality agreements are signed by employees.) A company’s employees will develop a better understanding that the company places a significant value upon its confidential and proprietary information if they see that third parties are being required to sign non-disclosure agreements. 9 Create an understanding among employees that any conf info that they create on behalf of the company belongs to the company. 10 Hold thorough exit interviews and require personnel who have terminated their relationship with the company to return all confidential information that had been in their possession, including any information that is on their office or home computer. Compare with specific patent requirements such as a disclosure requirement, detailed description and claims, need to file within one year of a sale or public disclosure.
- Important to note that certain types of information may not be trade secrets at all as the nature of the information is not susceptible to reasonable secrecy measures.