barnes & thornburg llp - intellectual property

An Overview ofIntellectual Property

Felicia J. BoydPartnerBarnes & Thornburg LLP

Jason BernsteinPartnerBarnes & Thornburg LLP

1

What is Intellectual Property?

• “Intellectual Property” suggests thinking aboutcopyright, patents and trademarks by analogywith property rights

• How is IP like real and personal property?– Can it be jointly owned?– Can it be bought, sold, mortgaged, rented?

• How is IP unlike real and personal property?– Can it be subject of adverse possession?– Can others be excluded from using it? How?

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What is Intellectual Property?• "If nature has made any one thing less susceptible than

all others of exclusive property, it is the action of thethinking power called an idea, which an individual mayexclusively possess as long as he keeps it to himself;but the moment it is divulged, it forces itself into thepossession of every one, and the receiver cannotdispossess himself of it. Its peculiar character, too, isthat no one possesses the less, because every otherpossesses the whole of it. He who receives an idea fromme, receives instruction himself without lessening mine;as he who lights his taper at mine, receives lightwithout darkening me.“– From a letter by Thomas Jefferson to Issac McPherson, dated

August 13, 18123

What is a patent?

• Government gives you a legal right• You give the public a written description• You give the invention away

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Exclusivity

Give Innovation to thePublic

The Bargain is Memorializedin a Patent Document

• Utility• Design• Plant

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WrittenContract

Utility Patent

• Processes– A method, e.g., step 1,

step 2, then step 3.

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Utility Patent

• Processes• Machines

– A computer orapparatus withmoving/movable parts

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Utility Patent

• Processes• Machines• Articles

– Something withoutmoving parts, e.g., achair; computerreadable medium(flash drive)

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Utility Patent

• Processes• Machines• Articles• Compositions

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Design Patent

• Look/Appearance– New, ornamental and

not obvious featureseligible for protection

• Simple• Limited

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Plant Patents

• Asexually ReproducedPlants

• Not Very Common

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Is it patentable?

• For an invention to be patentable, it must be:– Novel: never been done before– Non-Obvious: not obvious to one of

ordinary skill in the art who knows the art– Patentable subject matter: process,

manufacture, composition, machine• Human genes?• Computer software?

• Patent Office makes final determination

It doesn’t have to be High Tech

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America Invents Act

• First Inventor to File– Eliminates first-to-invent system (3/16/2013)– Priority is based on application filing dates

• Prior art inquiry keyed to effective filing date• Definition and Scope of Prior Art

– Patents and published patent applications, and allother public disclosures

– “Public use” and “on sale” activities in any countryare prior art – not just public use or on sale in theU.S.

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America Invents Act

• Grace Period for Inventor Disclosures– One-year grace period prior to the “effective filing

date” for public disclosures by inventor or anotherwho obtained the subject matter from the inventor

– Once an inventor discloses invention, that disclosuremay be used as a shield against later disclosures andpatent filings

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America Invents Act

• Prior User Defense– A prior commercial use rights defense is available

against all patents, not just business method patents

– Burden on prior user to prove use by clear andconvincing evidence

• Prior commercial use:– Must have been in the U.S.

– At least one year before patentee’s effective filingdate or earlier publication (i.e., grace period)

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Patent System

• Exclusively federal law• Must file application with U.S. Patent and

Trademark Office• Right to exclude others from “making, using,

offering for sale, or selling” the patentedinvention

• 20 years from the filing date

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Which of the following isnot patentable?

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Nailfile

Instantmessaging

Ponytailholders

Electromagnetism

Answer:

20

Nailfile

Instantmessaging

Ponytailholders

Electromagnetism

Who is the only US Presidentto hold a patent?

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George Washington

Abraham Lincoln

John F. Kennedy

Thomas Jefferson

Answer:

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George Washington

John F. Kennedy

Thomas Jefferson

Abraham LincolnPatent #6,469 for “A Device forBuoying Vessels Over Shoals” onMay 22, 1849

Trade Secrets

• Creature of state law– Uniform Trade Secrets Act adopted by many states

• No registration or administrative agency• Protected indefinitely as long as it remains a

secret and provides competitive advantage• Formula for Coca-cola most famous example

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Trade Secret: Two Elements

• Element 1 – Information that is valuablebecause not generally known or ascertainableby others who can profit from its disclosure oruse; and

• Element 2 – Reasonable efforts to maintain itssecrecy

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Trade Secret: First Element

• Information:

Formula

Pattern

Compilation

Program

Device

Method, Technique, or Process

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Trade Secret: Second Element

2.The knowledge or information sought to beprotected must have been the subject of effortsthat are reasonable under the circumstance tomaintain its secrecy

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Trade Secret: Second Element

• Reasonable Precautions to Maintain Secrecy

Maintain written trade secret protection plan

Restrict access to trade secret

Inform employees of trade secrets

Label trade secret documents

Use confidentiality agreements

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Misappropriation of Trade Secret

1.Acquisition of trade secret by improper means

or

2.Disclosure or use of trade secret withoutconsent

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Misappropriation: Acquisitionthrough Improper Means

• Proper Means

Independent Invention or reverseengineering

License from the owner of the trade secret

Published literature

Seeing finished product in public

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Misappropriation: Acquisitionthrough Improper Means

• Improper Means

Criminal or illegal conduct - theft or bribery

Fraud or misrepresentation

Breaching a duty to maintain secrecy

Legal but still improper - commercialespionage such as aerial photography

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Misappropriation: Disclosure orUse Without Consent

• Only when a person knew or had reason toknow that trade secret was improperlyobtained, disclosed, or accidentally revealed

• Covers wrongful use or disclosure by

person in confidential relationship

stranger or someone who is not in

confidential relationship with trade secret owner

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Challenge Question 3

Trade secretmisappropriation includes:

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Aerialphotography

New employeeinterviews andtraining

Wire-tapping

Adhesive tape onyour shoe during

a public tour

Answer:

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Aerialphotography

New employeeinterviews andtraining

Wire-tapping

Adhesive tape onyour shoe during

a public tour

ALL OF THESE

Challenge Question 4

A trade secret is not a tradesecret if:

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You memorize it

You tell yourmother

You use itpublicly without

telling anyone

You write it inChinese on an

obscure website

Answer:

38

You memorize it

You tell yourmother

You use itpublicly without

telling anyone

You write it inChinese on an

obscure website

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Copyright Law Protects . . .

Any original work of authorship that is fixedin a tangible medium of expression:

• “Original Work” – independently created with amodicum of creativity

• “fixation” of idea in a tangible medium• Mdium can be one that requires use of a device before it can be

perceived

• Copyright is exclusively federal law

• Copyright protection attaches automaticallyupon creation in a fixed form of expression

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Copyright Law Protects . . .

• Literary works, including software• Musical works, including words• Dramatic works, including music• Choreographic works• Pictorial, graphic and sculptural works• Motion pictures and other audiovisual works• Sound recordings• Architectural works• Compilations (anthologies, encyclopedias, etc.)• Derivative works (e.g. – movie based on a book)

Expression vs. Ideas

• Copyright Protection Extends Only to theExpression of an Idea – Not the idea itself

• “Idea” Behind a Work Will Involve Methods of Operation or Functions Procedures Processes Systems Concepts Principles Discoveries Facts

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Idea vs. Expression

Copyright Does Not prohibit:

• Odds and Ends– Titles– Slogans– Short phrases– Names– Familiar symbols– Lists of ingredients– Basic instructions– Simple blank forms

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Rights Covered by FederalCopyright Protection

• The Right to Reproduce the Work• The Right to Make Derivative Works Based

on the Original Work• The Right to Distribute Copies of the Work• The Right to Perform the Work Publicly• The Right to Display the Work Publicly

Copyright infringement is a violation of any oneof these exclusive rights

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Limitations on Exclusive Rights

• Compulsory Licenses• Useful Articles• “First Sale” Doctrine• Digital Performances of Sound Recordings• “Fair Use”

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Ownership of Copyright

• Ownership initially vests in the Author• Author of a Work is the Creator of the Work

UNLESS the Creator’s contribution constitutes a“Work Made for Hire”– Independent contractor– Employee

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Duration of Copyright

• For Works created on or after 1/1/1978

– Life of the Author plus 70 years

– Works Made for Hire: 95 years from date of firstpublication or 120 years from creation, which ever isless

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The U.S. Copyright Officeoffers special instructions onhow to copyright photos of

Elvis sightings.

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True False

Answer:

50

True False

Who owned the originalcopyright in the Declaration

of Independence?

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Thomas Jefferson

King George III The people

John Hancock

Answer:

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Thomas Jefferson

King George III The peopleIt was a workmade for hire.

John Hancock

Definition

• A “trademark” is a word, name, symbol, deviceor any combination thereof adopted and usedor intended to be adopted and used by amanufacturer or merchant to identify his goodsand distinguish them from those manufacturedand sold by others

• 15 U.S.C. § 1127

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What Is a Trademark?

– Word

– Symbol

– Slogan JUST DO IT.

– Product or packagingdesign

that identifies a specific product and distinguishes itfrom others in the marketplace.

Service Mark

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Nontraditional Trademarks• Color

• Fragrance

• Product Packaging

• Design of a businessestablishment

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A TRADEMARK is . . .

Virtually any designation thatidentifies and distinguishes the

source of goods or services.

Functions of a Trademark

- Indicates the source or origin of goods or services

- Assures consumers of the quality of goods bearingthe mark

- Creates business goodwill and brand awareness

Trademark vs. Trade Name

• Trade name – Identifies a company or business

The Coca-Cola Company

• Trademark – Identifies the goods or services ofthat company

Not All Marks Are Created Equal

Spectrum of Distinctiveness

Not All Trademarks AreCreated Equal

The word “apple” is more or less distinctive as asource-identifier depending on how it is used:

– APPLE for computers is arbitrary

– Apple-A-Day for vitamins is suggestive

– TomApple for combination tomato-apple juiceis descriptive

– Apple for a variety of apple fruit is generic

No Government Monopoly

• Trademark owners do not own names and logosin gross (rights are tied to a business)

• Trademarks identify the source or origin ofparticular goods or services.

APPLE for computers andAPPLE for recording label

DELTA for airline servicesand DELTA for faucets

Use It or Lose It

• Trademark law rewards use, not creativity– The name Coca-Cola was conceived by Frank Robinson in 1887,

but had no value as a trademark until it was used to sell thesoft drink a decade later.

• Use and priority – the first party to use hasexclusive rights in a particular market

• Use is required to obtain and maintain federalregistration

• Rights can last indefinitely as long as the markcontinues to be used (and does not becomegeneric)

Genericide – The Price of Fame• aspirin• thermos• zipper• escalator

• GOOGLE• XEROX• FEDEX• BAND-AID

• cellophane• cellophane• linoleum• formica

Not Even Xerox Can Xerox.

Challenge Question 7

Which color of Post-it® brandnotes is a trademark?

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CanaryYellow

Pink

Blue

Green

Answer:

69

CanaryYellow

Pink

Blue

Green

Challenge Question 8

Which is the oldestregistered food trademark?

71

Underwood’sdeviled ham

Oreo General Mills

SPAM

Answer:

72

Oreo General Mills

SPAMUnderwood’sdeviled hamThe oldest registeredfood trademark still inuse in the United Statesis the red devil on cansof Underwood’s deviledham. It dates back to1886.