Intellectual Property1. Copyright1.1. Copyright RequirementsA - FIXATION Subject Matter 102(a) Copyright protection subsists . . . in original works of authorship fixed in a tangible medium of expression . . . . Works of authorship include the following categories:(1) Literary Works(2) Musical Works(3) Dramatic Works(4) Pantomimes and Choreographic Works(5) Pictorial, Graphic and Sculptural Works(6) Motion Pictures and Other Audiovisual Works(7) Sound Recordings(8) Architectural works 103 Compilations and Derivative WorksCollective Works 101. A collective work is a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole. 101. A compilation is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term compilation includes collective works.101. Literary works are works, other than audiovisual works expressed in words, numbers or other verbal symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, manuscripts, phonorecords, film, tapes, disks, or cards, in which they are embodied.101 Sound recordings are works that result from the fixation of a series of musical, spoken, or other sounds, but not including the sounds accompanying a motion picture or other audiovisual work, regardless of the nature of the material objects, such as disks, tapes, or other phonorecords, in which they are embodied.101 Motion pictures are audiovisual works consisting of a series of related images which, when shown in succession, impart an impression of motion, together with accompanying sounds, if any.101 Audiovisual works are works that consist of a series of related images which are intrinsically intended to be shown by the use of machines or devices such as projectors, viewers, or electronic equipment, together with accompanying sounds, if any, regardless of the nature of the material objects, such as films or tapes, in which the works are embodied.Requirements: Original Work of Autorship; Fixation; and Formalities 102(a) Copyright protection subsists . . . in original works of authorship fixed in any tangible medium of expression.Fixation US Constitution Article I, 8, cl. 8 Congress shall have power to promote the progress of science and the useful arts, by securing for limited times, to authors, the exclusive right to their respective writings and discoveries (respective construed to mean any physical rendering of the fruits of intellectual activitiy)

101. A work is fixed in a tangible medium of expression when its embodi-ment in a copy or phonorecord, by or under the authority of the author, is sufficiently stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A work consisting of sounds, images, or both, that are being transmitted, is fixed for purposes of this title if a fixation of the work is being made simultaneously with its transmission.

B - ORIGINALITY 102(a) Copyright protection subsists . . . in original works of authorship . . .

1 Independent Creation facts and historical research are not copyrightable.

2 Modicum of Criativity To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice (Feist, 499, U.S. 340 (1990))

Facts are not copyrightable, but original compilations of facts are.

Idea/Expression Dichotomy - 102(b) In no case does copyright protection . . . extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.Related Doctrines: Baker v. Selden (modelos de contabilidade/book keeping); Blank Forms Doctrine; Merger (Where there is only one or but a few ways of expressing an idea, then courts will find that the idea behind the work merges with its expression and the work is not copyrightable); Scnes Faire (Copyright does not extend to the incidents, characters or settings which are as a practical matter indispensable, or at least standard in the treatment of a given topic).

1.2. Copyright EnforcementWho may enforce a copyright: copyright owner, assignee, or exclusive licensee ( 501(b))Remedies: Injunctive Relief (impounding and disposition of infringing articles); Monetary Relief (actual damages and infringers profits OR statutory damages - 412); Criminal Prosecution (NET Act); Costs and Attorney Fees (412)

17 U.S.C. 504 (b) Actual Damages and Profits - (b) Actual Damages and Profits. The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages. In establishing the infringers profits, the copyright owner is required to present proof only of the infringers gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.

17 U.S.C. 504 (c) Statutory Damages - (c) Statutory Damages.(1) . . . the copyright owner may elect . . . instead of actual damages and profits, an award of statutory damages for all infringements involved in the action, with respect to any one work, for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in a sum of not less than $750 or more than $30,000 as the court considers just. For the purposes of this subsection, all the parts of a compilation or derivative work constitute one work. (2) In a case where the . . . the court finds[] that infringement was committed willfully, the court . . . may increase the award of statutory damages to a sum of not more than $150,000. In a case where . . . the court finds[] that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200.

1.3. Copyright InfringmentExclusive Rights/Protections:

a) Reproduction Right106. Subject to sections 107 through 120, the owner of a copyright under this title has the exclusive rights to do and to authorize any of the following:(1) to reproduce the copyrighted work in copies or phonorecords;

Two pronged test of infringement: actual reproduction (factual copying) of protected material (copying as a legal matter) (the distribution is not a requirement for violation).

Proof of copying: (i) Direct Evidence or (ii) Circumstantial Evidence (access + similarity) Ex: Levels of Abstraction: Story (main idea) > Plot Outline > Subplots > General Characters and Scenes > Specific character elements > Text Idea/Expression Dichotomy 102(b) In no case does copyright protection . . . extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

b) Improper AppropriationObjective Test: Elements in Defendants Work are similar to protected expression.Subjective Test: Intended Audience perceives substantial similarity between Defendants work and Plaintiffs protected expression.

c) Infringement Analysis (de novo access and similarity)(i) Literal Infringement analogous to literal patent infringement and trespassing: wholesale copying and fragmented copying.(ii) Nonliteral Infringement analogous to DOE, nuisance comprehensive nonliteral similarity: abstractions test; patterns test; total concept and feel; iterative test; similarity of limited segments.Abstraction > Filtration > ComparisonWho is liable for copyright infringement?(i) Direct Liability;(ii) Indirect Liability:a. Contributory: 1. Knowledge of infringing activity; or 2. Induces, causes, or materially contributes to direct infringing activity of another.b. Vicarious: 1. Right and ability to control direct infringers acts; or 2. Receives a direct (or possibly indirect) financial benefit from the infringement.

d) Defenses Fair Use and 512 Safe HarborDefenses: Fair Use; Independent Creation; Consent/License; Innocent Infringer; Inequitable Conduct; Copyright Misuse; First Amendment (freedom of religion, speech, press, etc); Statute of Limitations; OSP Safe Harbor.(i) Fair Use:107 Limitations on Exclusive Rights: Fair Use. . . the fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular use is a fair use the factors to the considered shall include 1. the purpose and character of the use; (transformative) (public interest)2. the nature of the copyrighted work;3. the amount and substantiality of the portion used in relation to the work as a whole; and4. the effect of the use upon the potential market for or value of the work. (most weight) (supplanting?)

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all of the above factors.

Parody: For the purposes of copyright law, . . . the heart of any parodists claim to quote from existing material [] is the use of some elements of a prior authors composition to create a new one that, at least in part, comments on that authors works. If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from anothers work diminishes accordingly (if it does not vanish), and other factors, like the extent of its commerciality, loom larger. Parody needs to mimic an original to make its point, and so has some claim to use the creation of its victims [] imagination, whereas satire can stand on its own two feet and so requires justification for the very act of borrowing. (Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994))

(ii) 512 Safe HarbourDMCA (1998) 512 - (c) Information Residing on Systems or Networks at Direction of Users. (1) In general. A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider (A) (i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing; (ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or (iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material; (B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and (C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.Notification and counter notification.

[T]he phrases actual knowledge that the material or an activity is infringing, and facts or circumstances indicating infringing activity, describe knowledge of specific and identifiable infringements of particular individual items. Mere knowledge of prevalence of such activity in general is not enough. (EX. Specific url in youtube)

2. PatentsPatent Application: Subject Matter > Utility > Novelty > Obviousness > Disclosure= Claims (Term: 20 years from filing)

Patent Components:

Patent Scope: ALL claim elementsA) NOVELTYAmerican Invents Act of 2011 102. Conditions for Patentability; Novelty(a) NOVELTY; PRIOR ART.A person shall be entitled to a patent unless -- (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

What does it mean for a reference to anticipate an invention? Prior Art contains all of the claim elements.A single species may anticipate genus claim, if one or more claimed embodiment(s) are disclosed, then no novelty exists. (single embodiment anticipates)

Exception: Experimental Use ( 102.(b))Factors: good faith effort to reduce invention to practice invention cannot feasibly be tested in private due diligence under control of inventor

Ps. Limited to reducing invention to practice; not refinement.

B) OBVIOUSNESSDefining the Invention Threshold: IngenuityBut this [substitution] can never be the subject of a patent. . . . The difference [between this new manufacture and the prior art is] destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.[U]nless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application to it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of the degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skilled mechanic, not that of the inventor. (Hotchkiss v. Greenwood, 52 U.S. 248 (1850))

Non-Obviousness Requirement: 103 (OLD)103 (AIA)

A patent may not be obtained...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 to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

A patent for a claimed invention may not be obtained . . . if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

FIRST TO INVENTFIRST TO FILE

Would a skilled artisan, faced with the same problem, and with no knowledge of the patent, select the patented elements to combine?

First to invent: USC 102(a), (e), (f), (g)Timely Filing: USC 102(b), (c), (d)

Scope of Prior Art: Analogous Art to which said subject matter pertainsTwo approaches: (1) product-function (focus on industry) or (2) problem-solving (focus on nature of the problem) (Federal Circuit leans toward 2)

Factor to be considered on determining the PHOSITA: Level of Ordinary skill in the ArtFactors that may be considered: Educational level of the inventor Type of problems encountered in the art Prior art solutions to the problems Rapidity with which innovations are made Sophistication of the technology Educational level of active workers in the fieldBut Extraordinary Knowledge: A person of ordinary skill is presumed to know of all relevant prior art.

Comparison of Differences: Subject matter sought to be patented must be considered as a whole (strict identity not required)Graham Framework: Step 1: Determine the scope and content of the prior art Step 2: Ascertain the differences between the prior art and the claims at issue. Step 3: Find the level of ordinary skill in the pertinent art. Step 4: Determine the obviousness or nonobviousness of the subject matter. Step 5: In some situations, consider secondary indicia of nonobviousness such as commercial success, long felt but unsolved needs, failure of others, etc.

USC 102(a) Novelty; Prior Art. A person shall be entitled to a patent unless(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.(b) Exceptions.(1) Disclosures made 1 year or less before the effective filing date of the claimed invention. A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.(2) Disclosures appearing in applications and patents. A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.(c) Common Ownership Under Joint Research Agreements. Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.(d) Patents and Published Applications Effective as Prior Art. For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365 (a), or 365 (b), or to claim the benefit of an earlier filing date under section 120, 121, or 365 (c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

C) UTILITY

101 Inventions Patentable: Whoever invents or discovers any new and useful process, machine . . .Principal Contexts: unsuccessful inventions (e.g., perpetual motion machines) chemical inventions biotechnology (express sequence tags) questionable social benefits (morality)

Credible Utility - Whether a person of ordinary skill in the art would accept that the invention is currently available for its purported use. (vs. illogical and not factually supported)Specific and Substantial Utility particular practical purpose: specific (high biological activity alone insufficient); substantial - real world use (e.g., link to a disease) not trivial (e.g., use as landfill) [Utility Examination Guidelines 66 Fed Reg. 1092 (2001)]

The basic quid pro quo contemplated by the Constitution and the Congress for granting a patent monopoly is the benefit derived by the public from an invention of substantial utility. Unless and until a process is refined and developed to this point where specific benefit exists in currently available form there is insufficient justification for permitting an applicant to [monopolize] what may prove to be a broad field.

Specific and substantial utility must be shown: object of scientific research exclusion: an invention that is only useful to study itself lacks 101 utility; a process that merely produces an intended product is not useful unless the product is useful; real world utility is required which in the pharmaceutical field implies an association with a disease or physiological process or condition.

D) PATENT ENABLEMENT(i) Specification: 112 1 The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

3 requirements: written description; enablement; best mode (best execution/results).

Disclosure must be commensurate with scope.

(ii) Enablement: Test: Whether a person of ordinary skill in the art would be required to engage in undue experimentation in order to make and use the invention. In re Wands, 858 F.2d 731 (Fed. Cir. 1988)

Enabled: everything the inventor teaches one skilled in the art. (original claims, drawings, patent specification)Factors to consider (illustrative, not mandatory): quantity of experimentation necessary amount of direction or guidance presented presence or absence of working examples nature of the invention state of prior art at time of filing relative skill of those in the art predictability or unpredictability of the art breadth of claims reasonable correlation

E) CLAIM CONSTRUCTION AND INFRINGEMENTFoundational Principals of Claim Construction: Claims define the invention (i) claims are given their ordinary and customary meaning; (ii) perspective: person having of ordinary skill in the art; (iii) timing: as of effective application filing date. The specification is . . . the primary basis for construing the claims In most cases, the best source for discerning the proper context of claim terms is the specification. Importance of specification derives from its statutory role to define claimed invention in full, clear, concise, and exact terms. Extrinsic sources may not be used to contradict claim meaning that is unambiguous in light of the intrinsic evidence Much of the time, upon reading the specification [from the perspective of a PHOSITA], it will become clear whether the patentee is setting out specific examples of the invention to [teach how to make and use the invention], or whether the patentee instead intends for the claims and the embodiments in the specification to be strictly coextensive. The manner in which the patentee uses a term within the specification and claims usually will make the distinction apparent.

Rights of Patent Holders: (i) Right to exclude others from making, using, offering to sell, or selling the patented invention within the United States or importing the patented invention into the United States; and (ii) Right to license, assign, and transfer interest.

Infringement of Patent: 271 Infringement of Patent: (a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

without authority; makes, uses, sells, or imports the patented invention; or imports product made by a patented process (271 (g)). within the United States; during the patent term;

Infringement Analysis: Claim Construction: (i) validity; and (ii) comparison of claimed invention and accused device.a) Direct infringement:Literal Infringement: ALL elements

b) Indirect Infringement: Direct infringement by another and either:2a. Active Inducement 271(b):(1) Intent (can be circumstantial); and(2) Providing instructions (or otherwise aiding)Or2b. Contributory Infringement 271(c):(1) Knowledge of infringing behavior;(2) Contributory acts; and(3) No substantial non-infringing uses.

Design Patent Design of Useful Articles 35 USC 171-173 - Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title . . . Requirements for Protection Novelty; Non-Obviousness; Ornamentality; Nonfunctionality.101 A useful article is an article having an intrinsic function that is not merely to portray the appearance of the article or to convey information.101 (Definition of PGS works). [T]he design of a useful article . . . shall be considered a PGS work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of , the utilitarian aspects of the article.Capable of existing independently of = physical or conceptual separabilityPgina 12 de 12