Intellectual Property Basics
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This document discusses key intellectual property issues for new business leaders. It covers the main types of intellectual property - patents, trade secrets, copyrights, and trademarks. For each type, it describes what they are, how to obtain them, their value, and important considerations. The overall message is that business leaders need to understand intellectual property in order to protect their ideas and brands through the appropriate legal means. They must also be aware of enforcement and ownership issues related to intellectual property.
Intellectual Property Basics
- 1. Intellectual Property What New Business Leaders Need to Know Presented by: Matti Neustadt Storie Attorney Stoel Rives LLP Technology and Intellectual Property January 28, 2010 1
- 2. What is it? Trade Secrets Ideas ™ Under license Pat. Pending US Patent No. 6,366,389 © Brand Names Expressions 2
- 3. How do you get it? • INVENT IT – patents, trade secrets • CREATE IT – copyright, trade secrets • USE IT - trademark • REGISTER IT – patent, copyright, trademarks • BUY IT 3
- 4. What is it worth? • Commercial or Competitive Advantage – Monopoly rights – Exclusivity – Consumer Preference – Good Will • Generate Revenue – Licensing – Merchandising • Defensive Value – Cross Licensing – MAD 4
- 5. Invent It. PATENTS 5
- 6. Patents • A government grant of a limited right to exclude others from making, using, selling, offering, and importing the claimed invention • What a patent is not: – A right to “practice” your invention – You may not be free to practice your invention if it infringes someone else’s patent • A right to sue, not a right to do • “Flavors” of patents: utility, design, and plant 6
- 7. Patents • Where do inventions come from? – Necessity – Shortcomings of prior solutions – Applications of new technologies – Customer requests – Engineers 7
- 8. Patents • To obtain a utility patent, applicant must show that the invention is: – New – Useful – Nonobvious • New inventions have not been disclosed, or (in the U.S.) are applied for within one year of disclosure. • Non-obvious inventions means that it is not readily ascertainable by a “person of ordinary skill in the art” based on prior art. 8
- 9. Patents • Utility Patents – for useful inventions – Term of 20 years from earliest filing date (for new application) • Design Patents – for designs (cannot be usesful) – Term of 14 years from grant – Narrowly interpreted – best against knock offs that don’t include labels. • Average of 32 months from application to grant (all patents) 9
- 10. Key Patent Issues for Business Leaders • Patents must be registered – there is no common law right in an idea – First-to-invent system in the U.S. – One year grace period for filing • Disclosure Requirements • Cost • Business Benefit / ROI • Ownership/Inventorship – Employee is inventor – Employer will only own the patent under certain circumstances. 10
- 11. Hide It. TRADE SECRETS 11
- 12. Trade Secrets • Examples: – Marketing and business plans – Computer source code – Secret recipes, formulas – Product development efforts, including information about what doesn’t work (“negative information”) 12
- 13. Trade Secrets • A trade secret is something that gives a business a commercial advantage in the marketplace because it is secret. • A trade secret is a creature of state law, both common and statutory law. • Trade secrets may exist in either tangible or intangible form and creation of a trade secret depends on how the information is used and protected. No registration system is available. • Misappropriation and use of trade secrets may be subject to US state and federal law as well, e.g., the RICO statute, the Economic Espionage Act, and the Lanham Act. 13
- 14. Trade Secrets • A trade secret will only be protected by the courts if a business takes care to keep it secret! • How? – Employment agreements – Security and treatment of information – Non Disclosure Agreements with third parties – Limited Access – Avoiding infection 14
- 15. Key Trade Secrets Issues for Business Leaders • Developing and implementing policies regarding the security of information. • Implementing systems to reduce the risk of disclosing trade secrets. • Drafting and using appropriate non-disclosure agreements with employees and third parties. • Appropriate use of Non-Compete Agreements with key employees. 15
- 16. Create It. COPYRIGHTS 16
- 17. Copyrights • Copyright protects “original works of authorship.” • What are “works of authorship”? – An idea or concept that is “fixed in a tangible medium of expression.” – What is fixed? – What is an expression? • Copyright protection only the EXPRESSION of the idea, and not the idea itself. – Monopoly rights in an idea are only granted through patents. 17
- 18. Patent vs. Copyright • Patent law allows the owner the right to exclude all others from making, using, or selling the invention. The scope of the invention is determined by the patent claims. It does not matter if the infringer independently developed the same invention. • Copyright law prevents the copying of the expression of ideas. Copyright law does not protect ideas themselves. As a result, copyright law does not protect against someone else stealing an invention, nor does it prevent anyone else from independently creating the same or similar expression. 18
- 19. Copyrights • An owner of a copyright has certain monopoly rights. • These rights include the right to: 1. Reproduce the work; 2. Prepare derivative works based on the original work; 3. Distribute copies of the work by sale, rental, lease or lending; 4. Perform the work publicly; 5. Broadcast the work (in the case of a sound recording; and 6. Display the work publicly. 19
- 20. Copyright • Ownership – The Works Made for Hire Doctrine – Works created by employees as part of their job are generally owned by their employers. • Government • Professors – However, paying a non-employee to create a work does NOT guarantee ownership of the copyright. • Consultants • Independent Contractors • Software Developers 20
- 21. Copyrights • Registration is not required to create a copyright interest. • Registration can provided added benefits – Required to file an infringement suit – Collect statutory damages and attorney fees. • Marking a work with a copyright notification symbol is also not required, but it avoids claim of “innocent” infringement. – If you place a copyright notice on a work, it should be as required by statute. – ©2009. Stoel Rives, LLP 21
- 22. Copyrights • Infringement • Defenses – Music Downloads – Fair Use – Linking – Public Domain – Framing – Safe Harbor – Tweeting 22
- 23. Key Copyright Issues for Business Leaders • Ownership – Copyright ownership is always vested in the author or creator of the work. – Right vest immediately upon fixation • Term – Life of the author plus 70 years (individual) – 120 years after creation or 95 years after publication (corporate) • Registration – Registration a prerequisite to suit, recovery of statutory damages • Infringement and Defenses 23
- 24. Use it. TRADEMARKS 24
- 25. Trademarks 25
- 26. Trademarks 26
- 27. Trademarks • Trademark law is a type of consumer protection. • Trademarks identify source of goods or services. • Consumers associate familiar sources with past experience and reputation. • Result: protection of the consumer from confusion as to source and quality. 27
- 28. Trademarks • An owner only has monopoly rights for the goods which are associated with the mark. • A mark is only protectable if it is inherently distinctive or has acquired distinctiveness (“secondary meaning”) Most Least distinctive distinctive 28
- 29. Trademarks • United States • Abroad – Words – Words – Designs (Logos) – Designs (Logos) – Packaging and Product – Packaging and Product Configurations Configurations – Colors – Touch Marks – Sounds – Holograms – Fragrances – Taste marks – Combinations of the Above 29
- 30. Trademarks 30
- 31. Trademarks • Trademark rights exist as soon as a distinctive mark is used in commerce. – For descriptive marks, rights are gained after it can be shown that the mark has acquired distinctiveness. • Registration of a trademark is not required for an owner to have rights or to assert those rights. – However, it has benefits. 31
- 32. Senior User 32
- 33. Senior User Junior User Registered 33
- 34. 34
- 35. After Incontestability: Senior user’s territory frozen from time junior user applied? Maybe. 35
- 36. Trademarks • Registration – Registration provides enhanced rights and constructive notice to the world. • Marking – ™ and ® – Marking can be a requirement for damages for infringement. – Erroneous marking may lead to lawsuits. • Use – Consistent use. – Trademarks are generally used as adjectives, not nouns and NEVER verbs. • Genericide 36
- 37. Trademarks • Infringement – Passing Off (counterfeiting) – Consumer Confusion • Actions for infringement based on counterfeit goods will only be available if the counterfeit goods are sold under the trademark. • The main test of infringement is whether the use of the allegedly infringing trademark creates consumer confusion. • Senior user generally has priority and can stop subsequent users. 37
- 38. Key Trademark Issues for Business Leaders • Ensuring no prior use of the brand you are seeking • Branding strategy – Don’t pick brands likely to infringe – Create and implement policies to protect your brand • Registration plan • Enforcement plan – It is true that if you don’t use it, you will lose it. 38
- 39. Key IP Issues for Business Leaders • Make sure you own it. • If not, make sure you have the right to use it. • Utilize protections available. • Careful contracting. • Monitor your rights, and be prepared to enforce them. 39
- 40. Thank You! Matti Neustadt Storie Stoel Rives LLP Technology and Intellectual Property (503)294-9523 mnstorie@stoel.com 40