INTELLECTUAL PROPERTYINTELLECTUAL PROPERTYPatents, Trademarks, & Patents, Trademarks, &

CopyrightsCopyrights

IBS UTM City Campus, KLIBS UTM City Campus, KL

IBS UTM City Campus, KLIBS UTM City Campus, KL

INTELLECTUAL PROPERTYINTELLECTUAL PROPERTY

• PATENTS - relate to inventionsPATENTS - relate to inventions• TRADEMARKS - relate to TRADEMARKS - relate to

product names or symbolsproduct names or symbols• COPYRIGHT - relate to literary COPYRIGHT - relate to literary

or creative worksor creative works• INDUSTRIAL DESIGNS-relate to INDUSTRIAL DESIGNS-relate to

external forms and external forms and configurationconfiguration

Top Five Companies Granted US Top Five Companies Granted US PatentsPatents

CompanCompanyy

Patents Patents GrantedGranted

CompanyCompany Patents Patents GrantedGranted

19819877

CanonCanon 847847

19819822

General General ElectricElectric

739739

HitachiHitachi 845845 HitachiHitachi 476476

ToshibToshibaa

823823 RCARCA 465465

GeneraGeneral l ElectricElectric

779779 IBMIBM 435435

PhillipsPhillips 687687 SiemenSiemenss

434434

PATENTSPATENTS

• Patent holders receive exclusive rights to make, Patent holders receive exclusive rights to make, use, or sell an invention, design, or plant. use, or sell an invention, design, or plant.

• The patentee must file a detailed description of The patentee must file a detailed description of the invention which is published by the the invention which is published by the government. government.

• Public disclosure provides a reservoir of technical Public disclosure provides a reservoir of technical information. information.

• Some companies prefer to protect their inventions Some companies prefer to protect their inventions called Trade Secrets kept private to maintain a called Trade Secrets kept private to maintain a company’s competitive advantage.company’s competitive advantage.

TYPES OF PATENTS GRANTED TYPES OF PATENTS GRANTED TO INVENTORSTO INVENTORS

Patent laws provide for granting of patents Patent laws provide for granting of patents in three categories:in three categories:

• Utility PatentsUtility Patents - - new, useful, or improved new, useful, or improved processes, machines, apparatuses, articles of processes, machines, apparatuses, articles of manufacture, or compositions of mattermanufacture, or compositions of matter

• Design PatentsDesign Patents - - new, original, and new, original, and ornamental designs for an article of manufactureornamental designs for an article of manufacture

• Plant PatentsPlant Patents - - inventions, discoveries, or inventions, discoveries, or asexually reproduced distinct and new varieties of asexually reproduced distinct and new varieties of plants; including cultivated sports, mutants, plants; including cultivated sports, mutants, hybrids, newly found seedlings, and living hybrids, newly found seedlings, and living organismsorganisms

LENGTH OF PATENTSLENGTH OF PATENTS

PATENTS ARE GRANTED TO PATENTS ARE GRANTED TO THE TRUE INVENTOR FOR:THE TRUE INVENTOR FOR:

UTILITY & PLANT UTILITY & PLANT PATENTS FOR 20 PATENTS FOR 20 YEARSYEARS

DESIGN PATENTS FOR DESIGN PATENTS FOR 14 YEARS14 YEARS

Utility PatentsUtility Patents

• utility: new or useful invention, process, or utility: new or useful invention, process, or significant improvement on existing objects or significant improvement on existing objects or methodsmethods

• most patents are utility patentsmost patents are utility patents• examples: bicycle handlebars, but not the examples: bicycle handlebars, but not the

bicycle; new metal alloys; drugs (Prozac, aka bicycle; new metal alloys; drugs (Prozac, aka fluoxetinefluoxetine; genetically modified organisms ; genetically modified organisms (GMOs); molecules(GMOs); molecules

• term length: 20 yrs; after that it becomes public term length: 20 yrs; after that it becomes public domain, e.g., generic drugsdomain, e.g., generic drugs

Contents of Utility PatentsContents of Utility Patents

• references, abstract, claims (specifications), drawing references, abstract, claims (specifications), drawing figures figures

• references are to “prior art”: previous inventions that references are to “prior art”: previous inventions that this one has improved upon, making it “state-of-the-this one has improved upon, making it “state-of-the-art”art”

• abstract explains the basic operating principles of the abstract explains the basic operating principles of the inventioninvention

• claims: “brief descriptions of the subject matter of the claims: “brief descriptions of the subject matter of the invention… reciting all essential features necessary to invention… reciting all essential features necessary to distinguish the invention from what is old.”distinguish the invention from what is old.”

• drawings: how it works; molecular structure, etc.drawings: how it works; molecular structure, etc.

Plant & Design PatentsPlant & Design Patents

• similar in format to utility patentssimilar in format to utility patents• plants: invention, discovery, mutation or asexual plants: invention, discovery, mutation or asexual

reproduction of new kinds of plants; e.g., grafts, reproduction of new kinds of plants; e.g., grafts, hybridshybrids

• term length: 20 yrsterm length: 20 yrs• designs: “new, original and ornamental design for designs: “new, original and ornamental design for

an an article of manufacturearticle of manufacture;” not artwork ;” not artwork (copyright) or logos (trademark); e.g., the Coke (copyright) or logos (trademark); e.g., the Coke Bottle RadioBottle Radio

• term length: 14 yrsterm length: 14 yrs

PARTS OF THE PATENTPARTS OF THE PATENT

• Typical patent includes:Typical patent includes:• DrawingsDrawings

• Brief Abstract or SummaryBrief Abstract or Summary

• Patent SpecificationPatent Specification

• Detailed Description of How To Detailed Description of How To Make or Use the InventionMake or Use the Invention

Strategies When Blocked by Strategies When Blocked by Competitors PatentsCompetitors Patents

1. Buy the patent or the company 1. Buy the patent or the company (Microsoft vs Stac)(Microsoft vs Stac)

2. Create better technology & patent 2. Create better technology & patent aroundaround

3. Sue for infringement or invalidate 3. Sue for infringement or invalidate patent by legal actionpatent by legal action

4. Oppose pending applications4. Oppose pending applications

Better Strategy for Blocking Better Strategy for Blocking PatentsPatents

1. Cross License or swap the IP 1. Cross License or swap the IP

2. Form a patent pool 2. Form a patent pool

3. Initiate a joint venture with 3. Initiate a joint venture with combined IPcombined IP

Works best with industry giants such Works best with industry giants such as IBM and Intel.as IBM and Intel.

Two Most Important Variables in Patent Two Most Important Variables in Patent ScenariosScenarios

1. Amount of Prior1. Amount of Prior

ArtArt

2. Rate of Change2. Rate of Change

in Fieldin Field

Patent LitigationPatent LitigationValue BonanzaValue Bonanza• Example: STAC develops data Example: STAC develops data

compression technology.compression technology.• Files patents and buys existing Files patents and buys existing

patents to build strong portfolio. patents to build strong portfolio. • Microsoft loses infringement case to Microsoft loses infringement case to

the tune of $120 Mil. In 1994the tune of $120 Mil. In 1994• Wake up call for IT industryWake up call for IT industry

• Rambus once allied Rambus once allied with Intelwith Intel

• Now Rambus suing Now Rambus suing Hitachi for Hitachi for infringement of DRAM infringement of DRAM patentspatents

• Huge profits from Huge profits from extorting licenses.extorting licenses.

WHAT IS A TRADEMARK?WHAT IS A TRADEMARK?

• TRADEMARK - Either a word, name, phrase, color, TRADEMARK - Either a word, name, phrase, color, smell, symbol or design, or combination of words, smell, symbol or design, or combination of words, phrases, symbols, or designs that identifies and phrases, symbols, or designs that identifies and distinguishes the source of the goods or services of one distinguishes the source of the goods or services of one party - appears on the product or on its packaging (TM - party - appears on the product or on its packaging (TM - trademark)trademark)

• TRADENAME - virtually the same as trademarkTRADENAME - virtually the same as trademark• SERVICE MARK - Identifies and distinguishes the SERVICE MARK - Identifies and distinguishes the

source of a service rather than a product - appears in source of a service rather than a product - appears in advertising for the services (SM - service mark)advertising for the services (SM - service mark)

TRADEMARKSTRADEMARKSTRADEMARKSTRADEMARKS

Trademarks are renewable Trademarks are renewable indefinitely as long as the mark is indefinitely as long as the mark is being usedbeing used

RIGHTS IN A MARKRIGHTS IN A MARKRights arise from either: Rights arise from either:

• RIGHT TO USE - actual use of a mark in commerceRIGHT TO USE - actual use of a mark in commerce• RIGHT TO REGISTER - or the filing of an application RIGHT TO REGISTER - or the filing of an application

to register a mark in the PTO stating that the to register a mark in the PTO stating that the applicant has a bona fide intention to use the mark in applicant has a bona fide intention to use the mark in commerce. The registration symbol is used when the commerce. The registration symbol is used when the mark is registered and signifies ownership and all the mark is registered and signifies ownership and all the commercial and legal benefits that may derive by commercial and legal benefits that may derive by virtue of ownership.virtue of ownership.

GENERICIDEGENERICIDETRADEMARK GRAVEYARDTRADEMARK GRAVEYARD

• ASPIRINASPIRIN• CELLOPHANECELLOPHANE• CELLULOIDCELLULOID• CORN FLAKESCORN FLAKES• CUBE STEAKCUBE STEAK• DRY ICEDRY ICE• ESCALATORESCALATOR• LANOLINLANOLIN

• MALTED MILKMALTED MILK• MILK OF MAGNESIAMILK OF MAGNESIA• MIMEOGRAPHMIMEOGRAPH• MINERAL OILMINERAL OIL• POCKET BOOKPOCKET BOOK• SHREDDED WHEATSHREDDED WHEAT• THERMOSTHERMOS• TRAMPOLINETRAMPOLINE• YO-YOYO-YO

IBS UTM City Campus, KLIBS UTM City Campus, KL

Registered Design ExamplesRegistered Design Examples

IBS UTM City Campus, KLIBS UTM City Campus, KL

Trade Secrets

Coca Cola Co. probably has all possible types of intellectual property: trade secrets, utility patents, design patents, trademarks, copyrights, maybe even plant patents

Anyone catch the fuss about the couple who bought Colonel Sanders’s house and thought they found the KFC recipe? Combination of herbs & spices is a trade secret

Morehead suggests there’s no stringent definition of a trade secret, just that “adequate security measures” are taken to prevent disclosure

Secret recipes, new product plans, client lists--nondisclosure agreements are designed to cover all of these

Uniform Trade Secrets Act, Economic Espionage Act (1996)

COPYRIGHTCOPYRIGHT

Copyright Law protects authors, Copyright Law protects authors, artists, & others from theft of their artists, & others from theft of their intellectual propertyintellectual property

COPYRIGHTCOPYRIGHT• Copyright protects Copyright protects

intellectual property intellectual property

including;including;

• booksbooks

• musicmusic

• playsplays

• choreographychoreography

• photographsphotographs

• game boards & rulesgame boards & rules• artart• motion picturesmotion pictures• sound recordingssound recordings• computer programscomputer programs• architectural architectural

blueprintsblueprints• advertisementsadvertisements• labelslabels• mapsmaps

COPYRIGHTCOPYRIGHT• Copyright protection is Copyright protection is

granted for the length of the granted for the length of the

author’s life plus 50 years. author’s life plus 50 years.

Joint works are copyrighted Joint works are copyrighted

for the lifetime of the last for the lifetime of the last

surviving author plus 50 surviving author plus 50

yearsyears

COPYRIGHTABLE WORKSCOPYRIGHTABLE WORKS

• WORKS OF FACT - WORKS OF FACT - news stories, telephone news stories, telephone directories, photographs, new footagedirectories, photographs, new footage

• WORKS OF FUNCTION - WORKS OF FUNCTION - computer computer programs (operating systems) or computer programs (operating systems) or computer programs (applications)programs (applications)

• WORKS OF ART - WORKS OF ART - scripts, film, sculpturescripts, film, sculpture• Overlapping Protection - some works are eligible for Overlapping Protection - some works are eligible for

both copyright and patent protectionboth copyright and patent protection

IBS UTM City Campus, KLIBS UTM City Campus, KL

IBS UTM City Campus, KLIBS UTM City Campus, KL

IBS UTM City Campus, KLIBS UTM City Campus, KL

IBS UTM City Campus, KLIBS UTM City Campus, KL

BASMATI – RiceTec vs INDIABASMATI – RiceTec vs INDIA

• Discuss the grounds for the cases for Discuss the grounds for the cases for both partiesboth parties

• What are the broader implications of What are the broader implications of this case for developing countries this case for developing countries and their companies?and their companies?

• In your assessment, is IP policy fair In your assessment, is IP policy fair or otherwise?or otherwise?