barnes & thornburg llp - intellectual property
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Jason Bernstein & Felicia Boyd, Partners at Barnes & Thornburg LLP, share an Overview of Intellectual Property with NAWBO Atlanta at our October 9 monthly luncheon. We discussed how to understand your IP rights and how to protect your business's innovations, designs, and brands.TRANSCRIPT
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?
2
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
4
Exclusivity
Give Innovation to thePublic
The Bargain is Memorializedin a Patent Document
• Utility• Design• Plant
5
WrittenContract
Utility Patent
• Processes– A method, e.g., step 1,
step 2, then step 3.
6
Utility Patent
• Processes• Machines
– A computer orapparatus withmoving/movable parts
7
Utility Patent
• Processes• Machines• Articles
– Something withoutmoving parts, e.g., achair; computerreadable medium(flash drive)
8
Utility Patent
• Processes• Machines• Articles• Compositions
9
Design Patent
• Look/Appearance– New, ornamental and
not obvious featureseligible for protection
• Simple• Limited
10
Plant Patents
• Asexually ReproducedPlants
• Not Very Common
11
12
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
13
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.
14
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
15
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)
16
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
17
Which of the following isnot patentable?
19
Nailfile
Instantmessaging
Ponytailholders
Electromagnetism
Answer:
20
Nailfile
Instantmessaging
Ponytailholders
Electromagnetism
Who is the only US Presidentto hold a patent?
22
George Washington
Abraham Lincoln
John F. Kennedy
Thomas Jefferson
Answer:
23
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
24
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
25
Trade Secret: First Element
• Information:
Formula
Pattern
Compilation
Program
Device
Method, Technique, or Process
26
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
27
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
28
Misappropriation of Trade Secret
1.Acquisition of trade secret by improper means
or
2.Disclosure or use of trade secret withoutconsent
29
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
32
Challenge Question 3
Trade secretmisappropriation includes:
34
Aerialphotography
New employeeinterviews andtraining
Wire-tapping
Adhesive tape onyour shoe during
a public tour
Answer:
35
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:
37
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
39
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
40
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
41
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
43
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
44
Limitations on Exclusive Rights
• Compulsory Licenses• Useful Articles• “First Sale” Doctrine• Digital Performances of Sound Recordings• “Fair Use”
45
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
46
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
47
The U.S. Copyright Officeoffers special instructions onhow to copyright photos of
Elvis sightings.
49
True False
Answer:
50
True False
Who owned the originalcopyright in the Declaration
of Independence?
52
Thomas Jefferson
King George III The people
John Hancock
Answer:
53
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
54
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
56
Nontraditional Trademarks• Color
• Fragrance
• Product Packaging
• Design of a businessestablishment
58
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?
68
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.