5020 Montrose Blvd., Suite 750 Houston, TX (fax) (mobile) WHAT IN-HOUSE COUNSEL NEEDS TO KNOW ABOUT IP August 14, 2015

Types of IP & What They Protect 2

Protect inventions process machine article of manufacture composition of matter improvement Patents 3

E.g..: hammer way to use the hammer hammer’s ornamental design 4

Patents Invention must be: new useful nonobvious 5

Patents Indicia of nonobviousness: (1) long felt but unsatisfied need (2) appreciation problem existed but unrecognized what it was (3) unsuccessful attempts to solve the problem (4) commercial success (5) invention’s replacement of prior art (6) copying of the invention (7) acquiescence to patent’s validity by licensing or avoiding infringement (8) teaching away from the invention (9) invention’s unexpected results (10) disbelief and incredulity that the invention worked 6

Copyright Protects original works of authorship fixed in a tangible medium of expression 7

Copyright E.g.: (1) literary works (2) musical works (3) dramatic works (4) pantomimes and choreographic works (5) pictorial, graphic, and sculptural works (6) motion pictures (7) sound recordings (8) architectural works 8

Copyright Protects expression of an idea, not the idea of a fact, not the fact 9

Marks & Trade Dress Trademark word name symbol device or combination thereof that identifies and distinguishes goods and indicates source of goods 10

Marks & Trade Dress Service mark word name symbol device or combination thereof that identifies and distinguishes services and indicates source of services 11

Marks & Trade Dress Trade Dress design or packaging that has obtained secondary meaning—i.e., identifies product with its manufacturer or source 12

Marks & Trade Dress Trade Dress design or packaging that has obtained secondary meaning—i.e., identifies product with its manufacturer or source 13

Trade Secret Protects information having economic value because of secrecy and subject to reasonable secrecy efforts 14

Trade Secret E.g.: formula compilation program device method list—actual or potential customers list—actual or potential suppliers 15

Violations of IP Rights (Infringement) 16

Patent Infringement Direct Infringement without patent owner’s authority - make, use, offer to sell, or sell within the U.S. or - import into the U.S. the claimed invention ask for FDA approval of a patented (drug or use) drug claimed in a patent or the use of which is claimed in a patent 17

Patent Infringement Infringe a claim, not a patent generally Name of the game is the claim. 18

Patent Infringement Infringement accused device/use/etc. has every element of a claim - literally or by an equivalent Doctrine of Equivalents No substantial difference between claim element and accused element

Patent Infringement Inducing Patent Infringement encouraged infringing act knew of the patent and knew, or should have known, induced acts would infringe 20

Copyright Infringement make copies create derivative works distribute copies perform publicly display publicly 21

Copyright Infringement Fair Use purposes such as -criticism -comment -news reporting -teaching -scholarship -research 22

Copyright Infringement Fair Use Factors -use’s purpose and character (e.g., commercial nature or nonprofit educational) -copyrighted work’s nature -amount and substantiality used in relation to copyrighted work as a whole -use’s effect on copyrighted work’s potential market or value 23

Copyright Infringement Potential statutory damages if work is federally registered 24

Marks Infringement (1) mark ownership (2) mark is valid and legally protectable and (3) other’s use of the mark to identify goods or services is likely to create confusion concerning the origin of the goods or services 25

Marks Infringement Factors type of mark infringed similarity between -the two marks -similarity of the products or services identity of -retail outlets and purchasers -advertising media used defendant’s intent actual confusion 26

Marks Infringement Potential treble damages and attorney fees if mark is federally registered 27

Trade Secret Misappropriation 1.acquire TS if knew or had reason to know acquired by improper means 2.disclose or use TS if acquired by improper means 3.disclose or use TS if knew or had reason to know obtained: under duty to keep secret or limit use from entity who owed such a duty or from entity who obtained by improper means 4.disclose or use TS—before a material change of your position—you knew or had reason to know: TS was a TS and obtained by accident or mistake 28

Patents: USPTO chart: Process for Obtaining a Utility Patent: USPTO’s Inventors Assistance Copyrights: Copyright Basics Fair Use Trademarks: Federal Trademark process Likelihood of Confusion Trade Secrets: Texas Uniform Trade Secrets Act Texas Penal Code § – Theft of Trade Secrets Additional links: at 29

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