overview of intellectual property an overview of intellectual property david r. todd workman...

Overview of Intellectual Property

An Overview of An Overview of Intellectual PropertyIntellectual Property

David R. Todd

Workman NydeggerSalt Lake City, Utah


Intellectual PropertyIntellectual Property::TrademarksCopyright

Trade SecretsPatents


TrademarkTrademark

Any word, name, symbol, or device used to identify and distinguish goods and

services


Types of MarksTypes of MarksWords

HyattXerox

McDonald’s

Excedrin


Types of MarksTypes of MarksDesigns


Types of MarksTypes of MarksCombination Word/Design


Types of MarksTypes of MarksSlogans


Types of MarksTypes of MarksShape/Product Configuration


Types of MarksTypes of MarksColors


Types of MarksTypes of MarksSounds


Types of MarksTypes of MarksSmells

In re Clarke, 17 USPQ2d 1238 (TTAB 1990).–Granting registration on “a high impact, fresh floral fragrance reminiscent of Plumeria blossoms” for “sewing thread and embroidery yarn.”


Purposes of TrademarksPurposes of Trademarks

1. Protect the Public

a. Identify, distinguish, and indicate source of goods and services

b. Assure of consistent quality

2. Protect Owner

a. Protect investment in goodwill


Exclusive RightsExclusive Rights

Prevent Others From Using The Mark So As To:

• Likely Cause Confusion As To Affiliation or Origin of Goods or Services

• Likely Cause Dilution of Distinctive Quality of A Famous Mark


Choosing a Strong Word MarkChoosing a Strong Word MarkChoosing a Strong Word MarkChoosing a Strong Word Mark

WeakerWeaker StrongerStronger

Generic Descriptive Suggestive Arbitrary & Fanciful


Choosing a Strong Word MarkChoosing a Strong Word Mark

Weaker Weaker StrongerStronger

Generic Descriptive Suggestive Arbitrary & Fanciful

Glue™ Extra Gentle™ Coppertone® Apple®

Adhesive Hand Lotion Suntan Lotion Computers


• As Long As The Mark Is Used

Length of Trademark Length of Trademark ProtectionProtection


CopyrightCopyrightSubsists in original works of authorship fixed

in any tangible medium

Examples

Music on cassette Paintings on canvas

Movies on DVD Novels in book form

Software on CD Articles in magazine

Sculpture in stone Reports in notebook


Purpose of CopyrightPurpose of Copyright Protect manner of Expression and Form

• No Copyright in Facts

• No Copyright in Ideas

• No Copyright in Functional,

Utilitarian Aspects of a Work



1. Reproduction of the Work

2. Preparation of Derivative Works

3. Public Distribution of Copies of the Work

4. Public Performance of the Work

5. Public Display of the Work


Fair Use ExceptionFair Use Exception

– (commercial / nonprofit)

– (fictional / nonfictional)

– (small portion / significant portion)

– (most important factor)

• Purpose of Use

• Nature of Work

• Amount of Work Used

• Effect of Use on Potential Market


Length of Copyright Length of Copyright ProtectionProtection

• Depends on date of creation, publication

• Created after Jan. 1, 1978:

• Author’s life + 70 years

• Work for hire: 95 years from publication or 120 years from creation, whichever comes first


Trade SecretTrade Secret

Anything that derives economic value from not being generally

known or readily ascertainable


Trade Secret ExamplesTrade Secret Examples• Coca Cola Recipe and Process

• Methods Embodied in Computer

Source Code

• Invention Disclosed Only to

Patent Office



Prevent Others From Using or

Disclosing “By Improper Means”:

• Theft, Bribery

• Breach of Duty or Agreement

• NOT Reverse Engineering


Length of Trade Secret Length of Trade Secret ProtectionProtection

• As Long As It Remains Secret


Utility PatentsUtility Patents

Right to exclude others from

making, using, or selling the

patented invention in the

United States


Patentable Subject MatterPatentable Subject Matter “Anything Under the Sun That Is Made By Man”

• Manufacturing Processes

• Mechanical Devices

• Chemical Compositions

• Genetically Engineered Organisms

• Methods Embodied in Software

• NOT Laws of Nature, Abstract Ideas, Natural Phenomena


Patentable Subject MatterPatentable Subject Matter


Requirements for Requirements for PatentabilityPatentability

• Novel

• Not Obvious

• Useful

• Full Disclosure


Purpose of PatentsPurpose of Patents• Encourage Investment in R&D

• Encourage Disclosure

• Encourage Flow of Capital

• Allow Public Use After Limited Time


Loss of Right to PatentLoss of Right to Patent An inventor loses his right to a patent

if more than one year before filing:

1. Publication anywhere in world

2. Public use in the United States

3. Sale or offer for sale in the

United States


America Invents ActAmerica Invents Act An inventor loses his right to a patent

if before filing:

1. Publication anywhere in world

2. Public use anywhere in world

3. Sale or offer anywhere in world

…Unless inventor publishes first (within one year of filing)


Ownership of PatentsOwnership of Patents

1. Inventor Is Presumptively the Owner

2. Obligation to Assign to Employer When:

a. agreement to assign inventions

b. hired to solve a specific problem

c. hired to invent in general


Length of Patent ProtectionLength of Patent Protection

• Depends on date of issuance and date of pendency of application

• Since 1995: 20 years from filing + some possible adjustments


Scope of ProtectionScope of Protection “The Name of the Game is the Claim”

Patentability: Compare Claim to Prior Art

Infringement: Compare Claim to

Potentially Infringing

Product or Method


Scope of ProtectionScope of ProtectionYour Invention:


Scope of ProtectionScope of ProtectionYour Invention:

An apparatus comprising:

a generally flat member; and

at least one leg attached to the member for supporting the member in a generally horizontal fashion.


Scope of ProtectionScope of ProtectionAn apparatus comprising:



Not Patentable for Lack of Novelty

The Prior Art:


Scope of ProtectionScope of ProtectionAmended Claim 1a:


a generally flat, polygonally shaped member;

at least one leg attached at each corner of the polygonally shaped member for supporting the member in a generally horizontal fashion.


Scope of ProtectionScope of ProtectionAmended Claim 1b:


a generally flat member;

at least one leg attached to the member for supporting the member in a generally horizontal fashion ; and

a back rest oriented to support the back of a person sitting on the member.


Scope of ProtectionScope of ProtectionNew Competitor’s Chair:


Scope of ProtectionScope of ProtectionAmended Claim 1a:


a generally flat, polygonally shaped member;

at least one leg attached at each corner of the polygonally shaped member for supporting the member in a generally horizontal fashion.

No Infringement


Scope of ProtectionScope of ProtectionAmended Claim 1b:


a generally flat member;

at least one leg attached to the member for supporting the member in a generally horizontal fashion ; and

a back rest oriented to support the back of a person sitting on the member.

Infringement


Scope of ProtectionScope of ProtectionCompare Scope of Protection Available With Real–Live

Economic Value of That Scope


Ability to Practice Your Ability to Practice Your Own TechnologyOwn Technology

• The Ability to Practice Your Own Technology Can Be More Important Than Excluding Others From Exploiting It– Patents Provide Right to Exclude Others, Not The Right To

Practice

– Patent Office Does Not Examine for Infringement of Others’ Patents

– Avoiding Infringement of Others’ Patents Is Different From Establishing Novelty, Nonobviousness of Your Own Patent






Previous Patent:






Infringed by Your Technology!Previous Patent:



• Clearance Searches

• Designing Around

• Opinions of Counsel

• Procuring Licenses


An Overview of An Overview of Intellectual PropertyIntellectual Property

David R. Todd

Workman NydeggerSalt Lake City, Utah

overview of intellectual property an overview of intellectual property david r. todd workman...

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