The Basic Fundamentals of Intellectual

Property

6th Edition

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Most businesses encounter intellectual property law issues at least occasionally. A basic understanding of the various aspects of intellectual property law is an important and useful business tool. The Brooks Kushman Intellectual Property Primer can help you spot intellectual property issues, preserve and protect your rights, avoid potential liability, and effectively enforce your intellectual property rights. With these goals in mind, we wrote the First Edition of the Brooks Kushman Primer in 1983 for entrepreneurs, companies, accounting professionals and lawyers who do not specialize in intellectual property. Our readers have provided positive feedback over the years, and we have continued the tradition as the landscape of intellectual property law has changed.

Intellectual property has changed more in the last ten years than ever before. The Supreme Court has dramatically influenced injunctions in patent cases and the question of patent validity. The Federal Circuit has weighed in on calculating damages in the modern era. Congress’ introduction of the America Invents Act (AIA) of 2011 (“Patent Reform”) has been the most dramatic overhaul of the patent system since the Patent Act of 1952.

Brooks Kushman is proud to provide you with the Sixth Edition of the Intellectual Property Primer, reflecting these and other changes in the law. Thank you for your interest in these materials, and do not hesitate to contact us with any questions you may have.

Introduction

G. Foreign Patents 26

Filing Time Period 26

Absolute Novelty 26

Direct National Filing 26

PCT Application 26

Annuities and Working Requirements 27

H. Other Types of Protection 28

I. Patent Portfolio Management 29

Patent Development and Procurement 29

Patent Enforcement 30

Patent Valuation 31

J. Opinions of Counsel 33

Novelty Opinions 33

Clearance Opinions 34

Reliance Opinions 35

CHAPTER II – TRADEMARKS

A. Introduction 39

B. Selecting Trademarks 40

C. Registering Trademarks 41

Benefits of Registration 41

State Versus Federal Registration 42

D. Timing Considerations 43

E. The Federal Registration Process 44

F. Trademark Traps 45

G. Internet Domain Names 46

H. Protecting Marks in Foreign Countries 47

PREFACE

CHAPTER I - PATENTS

A. Introduction 15

B. Two Regimes of Patent Laws 16

C. Patents Versus Trade Secrets 17

D. Types of U.S. Patents 18

Utility Patents 18

Design Patents 18

Plant Patents 18

E. Provisional Patent Applications 19

F. The U.S. Patenting Process – Preparation and Prosecution 20

Invention Disclosure 20

Inventorship 20

Assignment 20

Prior Art Search 21

Filing 21

Information Disclosure Statement 21

Publication 21

Patentability and Examination (Patent Prosecution) 22

Preissuance Third Party Submission 23

Derivation Proceedings 23

Allowance and Issuance 24

Post-Grant Submissions 24

Post-Grant Proceedings 24

Maintenance Fees 25

Marking 25

TABLE OF CONTENTS

CHAPTER V – OPEN SOURCE SOFTWARE

A. What is Open Source Software 69

B. Understanding the Applicable Open Source

Software License Terms 70

C. Failure to Comply with Open Source

Software Licence Terms 71

D. Develop a Compliance Program 72

CHAPTER IV – FORMS

A. Employee Technology Agreement – Form A 75

B. Invention Record – Form B 80

C. Visitor Agreement – Form C 86

D. Technology Rights and the Consultant – Form D 89

E. Non-Confidential Disclosure Agreement – Form E 95

F. Confidential Disclosure Agreement – Form F 98

G. Confidential Submission Letter – Form G 101

H. Employee Termination Interview Regarding

Technology – Form H 103

I. Outline of Technology License – Form I 106

J. Outline of Trademark License – Form J 110

K. Proprietary Notice – Form K 112

L. Copyright Notice – Form L 113

M. Patent Notice – Form M 114

N. Trademarks, Service Marks and Certification

Marks Notice – Form N 115

O. Intellectual Property Audit Guide – Form O 116

I. Trade Dress 48

Registration of Trade Dress 49

Trade Dress Registration Process 49

Trade Dress Traps 50

CHAPTER III – TRADE SECRETS

A. Introduction 53

B. Definition of Trade Secrets 54

C. Misappropriation 55

D. Enforcement 56

E. Protection 57

CHAPTER IV – COPYRIGHTS

A. Introduction 61

B. Copyrightable Matter 62

C. Obtaining Rights 63

Copyright Notice 63

Ownership 63

Term of Copyright 63

D. Digital Millennium Copyright Act (DMCA) 64

Anti-Circumvention Provisions 64

Online Service Providers 64

E. Enforcement 65

Copyrights protect creative expression, not technology or brand identifiers. In this sense, copyrights are very different than patents, trade secrets, trademarks and trade dress. Copyrights may protect a wide range of subject matter, including books, art, audio and video recordings, photographs and illustrations, engineering drawings, computer programs, instruction manuals, and advertising brochures. Copyright protection begins when an original work is created and fixed in a tangible medium, and extends significantly longer than patent protection. Similar to trademarks, prompt copyright registration is encouraged, provides various legal benefits, and is relatively quick and inexpensive when compared to obtaining a patent.

This Primer attempts to introduce the lay business person to the various forms of intellectual property protection. However, like most areas of the law, this area of the law is very complicated and nuanced. Accordingly, we strongly encourage the reader to promptly obtain competent legal advice regarding intellectual property matters.

DISCLAIMER

This Primer provides a basic overview of the different types of intellectual property protection. It is not legal advice, and the distribution of this Primer does not create an attorney-client relationship between Brooks Kushman and the reader. The reader is encouraged to promptly seek competent legal advice regarding any intellectual property matter.

The basic forms of intellectual property protection are patents, trade secrets, trademarks, trade dress, and copyrights. Each form of protection confers a different type of property right, and each operates differently, as summarized below.

A patent provides an owner with the right to exclude others from making, using or selling a new technological innovation in the United States for approximately 20 years from the date of filing. Patents apply to mechanical and electrical devices, systems, chemical compositions, processes, software, and other technologies. To obtain a patent, the invention is examined for patentability, and the inventor has to disclose to the public the details necessary to make and use the invention.

Trade secrets operate very differently than patents. As the name implies, trade secrets are maintained in confidence. They can include formulas, computer programs, devices, or processes. Trade secrets are not published or examined, and they do not have a limited duration. To maintain trade secret status, owners must take reasonable steps to keep the proprietary technology or information confidential. In contrast to patents, trade secrets do not prevent another party from independently developing and using the same or very similar technology.

Trademark rights protect the names, symbols, and phrases used to represent a company or its products. Owners can prevent others from using names, symbols, and phrases that are confusingly similar to the trademark. Trademark rights arise from use, not registration, although trademark registration has several legal benefits and is encouraged.

Trade dress rights are similar to trademark rights. Trade dress is the style of a product’s packaging and, in some cases, style features of the product itself. Like trademarks, legal rights adhere to the adoption and use of a distinctive style, and enforcement is limited to situations where similar trade dress creates the likelihood of confusion, deception, or a probability that the public will be misled.

PREFACE

Chapter I PATENT

13Chapter I PATENT

12

Chapter IPATENT

Chapter I PATENT

15Chapter I PATENT

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Invention occurs any time an inventor solves a problem. An invention may be patentable if the solution is useful and was not known or obvious from what was known. It does not matter whether the invention is a major advance in a technical field or only a small improvement, as both can be important and patentable.

Patent rights are created by federal statutes pursuant to a Constitutional mandate which secures for “inventors the exclusive right to their … discoveries.” The first inventor to file a patent application for an invention is eligible to receive a patent. A United States patent gives its owner the right to exclude others from making, using, or selling the patented invention within the United States, its possessions, and territories. In exchange for these rights, the inventor is required to publicly disclose the best way he or she

Introduction A.knows of making and using the invention. In addition, enough detail must be provided to enable those of ordinary skill in the field to make and use the invention.

A patent does not give the owner an affirmative right to make, use, or sell the invention, only the right to exclude others. As such making, using, or selling the patented technology may infringe a dominant patent owned by another.

The invention covered by a patent is defined by one or more claims. A claim defines the boundaries of the invention, much like a description of property in a deed defines the boundaries of real estate. Patent rights are territorial (i.e., limited to the country that issued the patent), so foreign patents must be obtained to protect an invention outside the United States. A patent is enforceable only during its term, after which the patent owner loses exclusive rights and anyone is free to use the invention. Payments after issuance of a patent may be required to keep the patent in force for its full term.

Chapter I PATENT

17Chapter I PATENT

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Prior to the passage of the Leahy-Smith America Invents Act (“AIA”) in 2011, the United States patent system operated according to a “first to invent” system. In a first to invent regime, the first person in time to invent something is eligible to receive a patent on the invention, even if another files an application first. The AIA, however, changed the US system to a “first inventor to file” regime. In this regime, which more closely resembles the regimes used in other nations’ patent offices, the first party to file a patent application on an invention is eligible to receive a patent. This holds true even if another party was actually the first to invent.

The various provisions of the AIA are scheduled to be implemented between September of 2011 and March of 2013. Some provisions apply only to applications that are filed after the relevant implementation date, while others apply to all patents or applications regardless of filing or issuance date. As a result, there will be a long transitional period during which the old and new patent laws will coexist. This transitional period will phase out over twenty years as the patents to which the old rules apply expire. Until then, it is important to note which set of rules applies to any particular application or patent.

Two Regimes of Patent LawsB.

Patents — and the inventions described by them — are publicly disclosed and provide protection for a fixed term. Trade secret protection, on the other hand, lasts only as long as the technology remains secret. Patents are useful for protecting inventions that cannot be kept secret from being copied or independently developed; inventions that can be kept secret (e.g., secret processes) may be protected by either patents or trade secrets. The inventor must choose one of the two methods of protection, and choosing one method generally precludes choosing the other at a later date.

C.Patents Versus Trade Secrets