Intellectual Property Update for the General Practitioner

Intellectual Property Update for the
General Practitioner
presented by
Crissa A. Seymour Cook
Recent Developments in the Law 2014
University of Kansas School of Law

Types of Intellectual Property
• Trademarks
- Source indicators
• Copyrights
- Works of Authorship:
*Writings
*Music
*Software
®

Types of Intellectual Property
• Patents
- Inventions:
*Processes/Methods
*Machines/Devices
• Trade Secrets
- Confidential information which has economic value:
*Formulas
*Customer lists
*Manufacturing processes

Trademarks
• Trademarks
- Assets of a Business – Both as property and as
goodwill
- family of marks
- slogans
- designs/icons
- product configuration

Trademarks
You should always use a TM symbol with all
trademarks whenever possible. TM may be
used for any mark in commerce.
You should always use the registration symbol (®)
for registered trademarks.
- Removes defense of innocent infringement

Is the Mark Available for Registration
or Use?
SEARCHES help to determine whether the mark is available for
registration and use
– Federal searches [www.uspto.gov]
– State searches [secretaries of state] – not tasked with
searching or enforcement
– Domain Name searches
– “Common Law” – internet, phone books, business names
– Proprietary Databases – CT Corsearch, Thomson

Trademark Protection
• Trademark Rights Acquired Through Use of the
Mark in Commerce
– Common law rights
– can use the ™ symbol
– Limited to geographic region in which mark is used
– Enforcement through state common law usually via
unfair competition statute

• Federal protection/registration – benefits
– others will find it in making a search
– gives rights to use the mark throughout the United
States except as against prior users in their areas of
use, regardless of owner-registrant’s actual area of
use;
– after five years exclusive and continuous used mark
and its registration are incontestable*; and
– constructive notice nationwide of the trademark
owner's claim

• Federal protection – benefits (continued)
– Evidence of ownership of the trademark
– Jurisdiction of federal courts may be invoked
– Registration can be used as a basis for obtaining
registration in foreign countries
– Registration may be filed with U.S. Customs Service
to prevent importation of infringing foreign goods
– Domain Name rights - Ability to receive special
rights with regard to domain names

Federal Trademark Protection
1. Trademarks Must be Distinctive
A. Inherently Distinctive Marks
– Fanciful: no other meaning than its meaning as a
trademark [STARBUCKS, LEGO, VERIZON]
– Arbitrary: words with separate meaning, but nothing to
do with the associated product/service [CAMEL for
cigarettes, APPLE for computers]
– Suggestive: suggest a characteristic of a good or service
without actually describing that characteristic.
[COPPERTONE for sunblock, EARTHLINK for internet
service, JETBLUE for airline service]

1. Trademarks Must be Distinctive (continued)
B. Descriptive:
- merely identifies a characteristic of the article or service it
marks [WORLD WATERPARK ASSOCIATION]
• A descriptive mark entitled to federal protection only if it
acquires distinctiveness (aka secondary meaning)
» Shown through long-term use, advertising expenditures,
sales revenue, testimonials, etc.
C. Generic:
- never entitled to trademark protection, i.e. “laptop
computer” [ASPIRIN, ELEVATOR, CELLOPHANE, YO-YO,
GOOGLE?]
1. Famous marks must ward against genericide

2. Trademarks Must Not be Confusingly Similar to Other Marks
- Factors to consider: In re E.I. DuPont du Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973)
A. visually, audibly, or phonetically similar?
B. are the goods/services related or competing?
B. trade channels overlap?
C. sophistication of consumers
**Notably, PTO Examiners will only search PTO database for
pending/registered marks

Domain Names
Claim of Cybersquatting 15 U.S.C. § 1125(d): registering, trafficking in,
or using a domain name with bad faith intent to profit from the
goodwill of a trademark belonging to someone else
– “typosquatting” [i.e., www.kleeneks.com]
Domain Name Disputes
– Arbitration proceeding and is relatively inexpensive
– Usually involves 1 complaint and 1 response and then decision
by appointed arbitrator
- can have oral argument before some tribunals
- no discovery
** key hurdle in both scenarios is that the Respondent must have acted
in bad faith

Domain Names
Hot issue: Use of others trademarks as a keyword or adword for a
Google search.
• 1-800 Contacts, Inc. v. Lens.com, Inc., 10th
. Cir. July 16, 2013.
– Court held that using a competitor’s trademark as a keyword
that activates sponsored lines in Google’s search engine does not
constitute trademark infringement.
– Issue: sponsored link had a “clickthrough” rate of only 1.5% -
not enough to evidence a likelihood of confusion.
– Sponsored links in general rarely have a clickthrough rate of
greater than 10%, which is normally necessary for the court to
find a likelihood of confusion.

Copyrights
Copyrights exist upon creation; benefits of federal
registration
–Anything that contains creative expression, i.e.
advertisement, software, website, movies, songs
–May immediately use the copyright notice, i.e. ©
2014 University of Kansas

REQUIREMENTS FOR COPYRIGHT
PROTECTION
• Work of original creative authorship
• Fixed in a tangible form of expression from
which it can be perceived, reproduced, or
otherwise communicated, directly or with aid of
a device

Copyrights
1. literary works - fiction and nonfiction books, manuscripts,
computer programs, manuals
2. musical works (and accompanying words) -- songs, operas,
and musical plays
3. dramatic works -- including music - plays and dramatic
readings
4. pantomimed and choreographed works
5. pictorial, graphics, and sculptural works – photos, maps,
globes, charts, technical drawings, diagrams, and models
6. motion pictures and audiovisual works
7. sound recordings and records – digital recordings, CDs,
MP3s, and tapes

EXCLUSIVE RIGHTS IN COPYRIGHTED
WORKS
• Right to Reproduce or copy
• Right to Distribute
• Right to Display
• Right to Perform
• Right to Make Derivative Works

Copyright Protection
• Unregistered Copyright
– Author owns immediately
• Registered Copyright
Author or owner may register copyright to avail itself of
statutory rights
- Ability to sue for infringement
- Statutory Damages (Requires Timely Registration)
• Up to $30,000/infringing work
• Up to $150,000 for willful infringement of work
• Attorneys’ fees/legal expenses

Why Register?
• Proof of ownership
– If you don’t register within five years of creating the
work, the court doesn’t have to recognize the
registration you do file as self evident proof.
• Access to courts
• Statutory damages
– Must register within 3 months of publication or
before infringement
– Otherwise, only an award of actual damages and
profits is available to the copyright owner.

Ownership
• Author is the presumptive owner
• Transfer of Work
– Work for hire
• Employer owns copyrights of employees if work was
prepared “within the scope of employment”
• Employer does not automatically own copyrights for work
created by independent contractors, even if employer paid
for the work
• If not employer/employee relationship, must obtain a
written “Work for Hire Agreement” and must fall within
statutorily enumerated categories
• Commissioning Party is considered the author
– Assignment (in writing)
• Subject to termination

WORKS MADE FOR HIRE (17 USC § 101)
• Works made by an employee within the course of
employment;
OR
• Works specially ordered pursuant to a signed
written work for hire agreement AND if the
works are in eligible categories

WORKS FOR HIRE CATEGORIES
• contribution to a collective work
• part of a motion picture or other
• audiovisual work
• a translation
• a supplementary work
• a compilation
• an instructional text
• a test or answer material for a test
• an atlas

WORKS MADE FOR HIRE (17 USC § 101)
• In drafting contracts that include assignment clauses, do
not make the mistake of calling a creation a “work for
hire.”
• Best practice: Provide for a present assignment of the
material to be created. (“…does hereby assign…” and
NOT “promises to assign”)
• Exemplary pitfall: Assumption that hiring a software
developer to develop your website is a work for hire…
guess who owns the copyright on your website??

Duration of Copyright
• For individual authors, a copyright persists for the
author’s life plus seventy years for works created on or
after January 1, 1978.
• For works made for hire, anonymous and
pseudonymous works, the duration of copyright will be
95 years from publication or 120 years from creation,
whichever is shorter.
• For works created prior to January 1, 1978, the duration
of copyright may vary depending upon when the work
was created and/or published.

Copyright
• Must get permission to use copyrighted material
from the copyright owner or their licensing
agent
• Music – compulsory licensing (BMI, Harry Fox
Agency, ASCAP, Copyright Office)
• Movies – movie studios
• Photographs – stock photo companies (Getty
Images); photographers

Copyright
• Certain works are NOT protected by copyright law
• Works that are in the public domain unoriginal reprints
of public domain works
• U.S. Government Works
• 17 U.S.C.§ 105: Copyright protection under this title
is not available for any work of the United States
Government, but the United States Government is
not precluded from receiving and holding copyrights
transferred to it by assignment, bequest, or
otherwise.

Copyright
• Facts and ideas
– While the protection does cover the particular, distinctive words
a writer uses to present ideas or facts, control over the
underlying concepts or truths cannot be owned. Thus, a
biography about a famous athlete qualifies for copyright, but the
events and facts of his life do not.
– Feist Publications, Inc., v. Rural Telephone Service
Co., 499 U.S. 340 (1991).
• Data is not protected by copyright.
– Selection and arrangement of data can be protected by copyright
– However, must have “modicum of creativity”

Unprotectable Works (Examples)
• Works which have not been fixed in a tangible
form of expression
• Titles, names, short phrases, and slogans
• Mere listings of ingredients or contents
• Works consisting entirely of information that is
common property and which contains no
original authorship (e.g. height & weight charts,
tape measures, calendars, etc.)

Copyright hot topic
• ABC v. Aero: Case pending before the U.S. Supreme
Court
– Decision expected by Summer.
– Using tiny “personal” antennas to collect broadcast
television without paying fees that apply to cable
companies, the broadcast is stored and can be replayed –
like a DVR, but stored someone other than your living
room and accessed over the internet.
– Sets the stage for reinterpreting digital and video law, and
the definition of “public” vs “private performances”

America Invents Act (AIA)
• Signed into law September 16, 2011
• The most sweeping changes to U.S. Patent
Law in nearly 60 years
• Change from a first to invent to a first
(inventor) to file system

Patentable subject matter
• Hot topics at the U.S. Supreme Court
– Software
– Business methods
– Biotechnology
• Tug of war between the pro-patent Federal
Circuit and the somewhat anti-patent Supreme
Court.

• What’s patentable?
– §101 Patentable Inventions
• "New and Useful" OR Improvement thereof
• Process, machine, manufacture, composition of matter
– “Anything under the sun made by man”
• Diamond v. Chakrabarty 447 U.S. 303 (1980)

• “Anything under the sun made by man” – key
language
• Laws of nature, abstract ideas, natural phenomenon,
algorithms, etc. are not patentable
– Are not made by man – handiwork of nature
– Presence of a law of nature, algorithm, etc. does not
automatically render an otherwise patentable claim
unpatentable
– Application or implementation may be patentable.

• List of recent cases at U.S. Supreme:
– Bilski v. Kappos (2010) – computer process
unpatentable
– Mayo v. Prometheus (2012) – medical diagnostic
process unpatentable
– AMP v. Myriad (2013) – isolated DNA unpatentable

Patent Ownership Primer
In the U.S., patent rights initially vest in their human inventors,
and thus only inventors can apply for a patent. The application
and/or patent can be assigned (and issue) to a company.
In the International realm and many foreign countries,
companies can apply for patents on behalf of the human
inventors (usually their employees).

“Employee” created IP
•General practitioners who draft agreements relating to
employment, confidentiality, research, manufacturing, etc. need
to be cognizant of IP provisions and the proper approach to
establishing a clear chain of title.

“Employee” created IP
The term “employee” is used very broadly herein to encompass inventors that
might not be traditional employees, but have some relationship to the
company which may entitle the company to intellectual property created by
that individual.
Essentially, any IP created by an organization is employee-created IP –
because only human individuals can “invent” under the U.S. patent scheme.
This raises several issues with respect to establishing proper ownership and
transfer of invention rights to the company or organization.

Stanford v. Roche
2011 Supreme Court case that involved an HIV diagnostic test, developed as
a result of joint efforts between Stanford and Cetus (a biotechnology company
later acquired in-part by Roche).
Specifically, a Stanford researcher was working as a visitor at Cetus’s facility
when he first conceived of the invention and devised a procedure for the HIV
test. He then returned to Stanford and completed his work to test the
procedure. Stanford was ultimately granted three patents on the invention.
Roche acquired various Cetus assets, including those relating to the HIV
procedure developed at Cetus. After conducting clinical trials with the
procedure, Roche began commercializing the HIV test kits worldwide.

Stanford v. Roche
When Stanford later sued Roche for patent infringement, Roche
claimed co-ownership of the invention by virtue of a contract the
researcher had signed with Cetus as a condition to gaining access to
Cetus’s facility. This contract contained a provision for the assignment
of both present and future rights to inventions.
Key Language: “will assign and do[es] hereby assign...right,
title and interest in ...the ideas, inventions, and
improvements...[made] as a consequence of [his] access” to the
Cetus facility

Stanford v. Roche
In contrast, Stanford’s employment agreement contained a promise to
assign inventions, but not a present assignment of rights.
Key language: “agree to assign” to Stanford the inventor’s
“right, title and interest” in inventions resulting from
employment there
Stanford tried to argue that it did not need a present assignment from
the researcher, because its rights automatically vested in the invention
by virtue of the Bayh-Dole Act.

Stanford v. Roche
The Supreme Court confirmed that since 1790 U.S. patent rights
initially vest in "the inventor" and that the non-specific language
of the Bayh-Dole Act did not change this setup.
The Court pointed out that Bayh-Dole only confers the option to
“retain” rights, but that one has to have those rights in the first
place before being able to “retain” them. Thus, although the
researcher was under a duty to assign his rights to Stanford, he
had actually assigned them to Cetus (and thus Roche) first.

Stanford v. Roche – Take home point 1
The Bayh-Dole Act allows universities, rather than the U.S.
government to own inventions arising out of federally-funded
research. However, what the Act does not do is automatically
vest ownership in the university. Rather, the Supreme Court, in
Stanford v. Roche confirmed that the patent rights, under U.S.
patent law originally vest in the inventor.
The university must still obtain an effective transfer of those
rights via an assignment.

The Court also stated that “it is often the case that
whatever an employee produces in the course of his
employment belongs to his employer. No one would
claim that an autoworker who builds a car while
working in a factory owns that car. But, as noted,
patent law has always been different: We have
rejected the idea that mere employment is sufficient
to vest title to an employee’s invention in the
employer.”

Employment agreements should include express
provisions clearly addressing ownership of employee-
created IP. Ownership should not be taken for granted
simply because there is an employer-employee
relationship.
The same approach should be taken for independent
contractors, etc.

Employment Agreements
Employment agreement provisions on inventions are
generally either:
(1) A promise to cooperate and assign rights; or
(2) An automatic, present assignment that occurs
constructively at the moment of invention.
If Stanford had chosen option 2 for its employment
contract, then it would have automatically taken rights
in the invention (which it could then have elected to
“retain” under Bayh-Dole.)

If possible, employment agreements
should always have a present assignment of
inventions.

A formal assignment should still be executed and
recorded once a patent application has actually been
prepared to provide notice to third parties.
Record within 3 months, otherwise can run into a BFP
situation.

Broadly define “inventions” in the employment
agreement to include those things developed pursuant
not only to the employee’s job description, but also
inventions developed that relate in any way to the
employer’s business or other interests.

Caveat - State-specific requirements:
Several states, including Kansas (KSA 44-130)
have labor laws addressing the assignment of
inventions.

KSA 44-130 (paraphrased):
(a) Assignment provisions do not apply to an invention for
which no equipment, supplies, facilities or trade secret
information of the employer was used and which was developed
entirely on the employee's own time, unless:
(1) The invention relates to the business of the employer or to
the employer's actual or demonstrably anticipated research or
development; or
(2) the invention results from any work performed by the
employee for the employer.

(b) Provisions which purport to apply to an invention
prohibited under subsection (a) is void and
unenforceable. It is unlawful to require an employee to
sign one of these provisions as a condition of
employment or continuing employment.

(c) If the employment agreement requires assignment of
employee inventions, the employer must also provide written
notice to the employee that the agreement does not apply to
inventions developed entirely by employee (own time,
resources, information, etc.), unless:
(1) it relates directly to the existing or future business or R&D of
the employer; or
(2) it results from any work performed by the employee for the
employer.

(d) The employee must disclose inventions it develops so that
the employer can determine whether it has any rights in the
invention.

• If there is no present assignment language in the
employment agreement, management needs to have
procedures in place to ensure inventions are in fact
assigned to the company once they are conceived or
created. Otherwise, the inventor/employee might be
able to validly assign them to a third party.
• Recourse would be against the employee for breach
of contract, but probably won’t be able to do
anything about the third party patent owner.

Other Pitfalls
“Work for hire” – This language is sometimes used
erroneously in employment agreements with respect to
inventions. It is specific to copyright and does not
apply to patent law.
There is, however, a “hired to invent” type doctrine, as
well as a “shop rights” doctrine that may help a
company successfully argue ownership, even where no
specific employment provisions are present.

Other Pitfalls
• “Hired to invent” does not apply to general
employee job descriptions. It must be a specific task
and the facts must make it unmistakably clear the
person was hired to achieve a specific result.
• “Shop rights” does not give the company patent-type
rights. It’s traditionally viewed as simply a license to
practice the invention.

Priority and Ownership
Equally as important as ownership.
Timing of assignment is key to establishing
priority of invention in the international realm.

Practice Pointers
•Assignments should also contain a transfer of the right
to claim priority.
•If practice in International realm, should be aware of
assignment requirements of key jurisdictions.
•Generally, want the assignor’s signature to be
notarized. In addition, some places like Europe
actually require both parties to sign. So need to also get
the assignee’s signature (does not have to be notarized).

Practice Pointers
Final point: Many of these issues are not
encountered during prosecution of the patent
application. They are only raised during litigation
when you try to assert the patent against someone –
this is the key time when ownership and priority
rights matter most!

Any Questions?
Crissa A. Seymour Cook
ccook@hoveywilliams.com
913.647.9050

ThankYou!
HoveyWilliams LLP
84 CorporateWoods
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
913.647.9050
www.hoveywilliams.com

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