Intellectual Property: an Overview Inventions Valuable Secrets Works of Authorship Commercial Symbols

Common Forms of IP Patents Patents Trade Secrets Trade Secrets Databases Databases Copyrights Copyrights Unfair Competition Unfair Competition Trademarks & Trade Dress Trademarks & Trade Dress Sui Generis Protections: Sui Generis Protections: Semiconductor chips, asexual plants, designs, petty patents, Databases, boat hull design, contractual restrictions Semiconductor chips, asexual plants, designs, petty patents, Databases, boat hull design, contractual restrictions

Distinguishing IP from Tangibles Tangible Property Tangible Property Physical substance Physical substance Only one copy exists, totally exhaustible Only one copy exists, totally exhaustible Intangible Property Intangible Property No physical substance No physical substance Often only represented by something of substance Often only represented by something of substance Apparent inexhaustibility Apparent inexhaustibility

IP Theory & Economics Incentive Theory Incentive Theory Investment likely when exclusivity assured Investment likely when exclusivity assured Suboptimal investment w/o ownership & control Suboptimal investment w/o ownership & control Lockean theory of initiative: innovation forthcoming w/ rewards of private property Lockean theory of initiative: innovation forthcoming w/ rewards of private property Contract Theory Contract Theory Maximize the public domain Maximize the public domain Ltd. monopoly exchanged for disclosure Ltd. monopoly exchanged for disclosure

Patentable Subject Matter New, Useful & Human-made 1. Process 2. Machine 3. Manufacture 4. Composition of Matter

Novelty Not in The Public Domain Not in The Public Domain Statutory Bars:“Known or Used...Patented or Published” Statutory Bars:“Known or Used...Patented or Published” Diligence Diligence Not abandon, suppressed or concealed Not abandon, suppressed or concealed The U.S. One Year Grace Period The U.S. One Year Grace Period No Public Use or Sale No Public Use or Sale US: no use or sale US: no use or sale World: no patent or publication World: no patent or publication

Non-Obviousness Patent should not grant if the advancement is small, merely minor improvements over prior art Patent should not grant if the advancement is small, merely minor improvements over prior art Not obvious at the time of invention to one skilled in the art Not obvious at the time of invention to one skilled in the art Graham v. John Deere: Graham v. John Deere: 1. Determine scope and content of the prior art 2. Determine differences between prior art and the claim(s) at issue; and 3. Determine the level of ordinary skill in the pertinent art

Confidentiality of Application Materials Trade Secrets Maintained? Trade Secrets Maintained? Most nations - confidential only for 18 mos after filing Most nations - confidential only for 18 mos after filing U.S. law changed to Int’l Standard: U.S. law changed to Int’l Standard: Confidential only for 18 months if application is also filed in country that publishes files after 18 months Confidential only for 18 months if application is also filed in country that publishes files after 18 months Otherwise, confidential until patent issues, then publicly available unless national security matter Otherwise, confidential until patent issues, then publicly available unless national security matter

Trade Secret Under Uniform Act information (formula, pattern, compilation, program, device, method, technique or process) information (formula, pattern, compilation, program, device, method, technique or process) derives independent economic value from secrecy or by proper means discovery by potential competitors, and derives independent economic value from secrecy or by proper means discovery by potential competitors, and subject of efforts, reasonable under the circumstances, to maintain secrecy. subject of efforts, reasonable under the circumstances, to maintain secrecy.

Eligible Information: pattern, device, engineering data, formulas, customer lists or preferences, raw materials, manufacturing processes, design manuals, operating & pricing policies, price codes, bid information, method, technique, bookkeeping methods, market studies/research, sales data, marketing plans/strategies, new product information, business plans, equipment & machinery, program, software, flow charts, drawings, blueprints, negative results, unique compilation or combination of public domain info, know-how

Duty of Secrecy Implied Confidentiality Duty Implied Confidentiality Duty Fiduciary duty of loyalty Fiduciary duty of loyalty Express Confidentiality Agreements NDA Express Confidentiality Agreements NDA Employment contract; covenant not to compete Employment contract; covenant not to compete independent contract, consulting contract, certain distribution contracts, franchise agreement, prior assignment of innovations, independent contract, consulting contract, certain distribution contracts, franchise agreement, prior assignment of innovations,

Employee Confidentiality Agreements (NDA) Provision or addendum to employment contract imposing confidentiality Provision or addendum to employment contract imposing confidentiality Continuously updated list of specified documents, projects, corporate functions, etc. Continuously updated list of specified documents, projects, corporate functions, etc. Establish ownership of particular innovations Establish ownership of particular innovations Define theft of IP, custody or removal of documents, files, computer disks, Define theft of IP, custody or removal of documents, files, computer disks,

What are Databases under Law? Systematic data accumulation/ordering Systematic data accumulation/ordering Collections of works, data or other materials arranged in a systematic or methodical way for retrieval or access by manual or electronic means Collections of works, data or other materials arranged in a systematic or methodical way for retrieval or access by manual or electronic means Used for learning, research, science, governing & control, commerce Used for learning, research, science, governing & control, commerce File composed of records, each with fields, operations search, sort &/or recombine for useful report File composed of records, each with fields, operations search, sort &/or recombine for useful report

Elements of Copyrightability Must be original Must be original Must be fixed in a tangible medium of expression Must be fixed in a tangible medium of expression Must be directly or indirectly perceivable by humans Must be directly or indirectly perceivable by humans

Types of Copyrightable Works Literary works Architectural works Sound recordings Motion pictures and A/V works Pictorials, graphics, and sculptures Musical works Dramatic works Pantomimes and choreography

Non-copyrightable Material Ideas are not copyrightable – only the expression of ideas. Ideas are not copyrightable – only the expression of ideas. Includes ideas, procedures, processes, systems, methods of operation, concepts, principles, or discoveries. Includes ideas, procedures, processes, systems, methods of operation, concepts, principles, or discoveries. The idea-expression dichotomy rule states that creators can maintain control over ideas only if they qualify as patentable or remain as trade secrets. The idea-expression dichotomy rule states that creators can maintain control over ideas only if they qualify as patentable or remain as trade secrets.

Trademark Protection Word, Name Symbol, Device Word, Name Symbol, Device Recently: color, sound, smell Recently: color, sound, smell Identifies Source of Goods or Services Identifies Source of Goods or Services Distinguishes from competitors Distinguishes from competitors Protection Schemes: Protection Schemes: State C/L, misappropriation, unfair competition State C/L, misappropriation, unfair competition Federal registration under the Lanham Act Federal registration under the Lanham Act Int’l: Paris Conv, Madrid Arrange, Pan-Am Int’l: Paris Conv, Madrid Arrange, Pan-Am

Trademark’s Fundamental Purpose Trademarks differ conceptually from patents, trade secrets, or copyrights. Trademarks differ conceptually from patents, trade secrets, or copyrights. Promote business ethics Promote business ethics Prevent palming off Prevent palming off Symbol or device identifies source Symbol or device identifies source Knowledge about prior use Knowledge about prior use Likelihood of confusion Likelihood of confusion Protect investments in goodwill Protect investments in goodwill Promote Distributional Efficiency Promote Distributional Efficiency Consumer search costs savings outweigh costs of regulation & forgone competitor opportunities Consumer search costs savings outweigh costs of regulation & forgone competitor opportunities Identifiers are often suggestive Identifiers are often suggestive

Distinctiveness Capacity to distinguish owners goods or services Capacity to distinguish owners goods or services Protectability Scale Protectability Scale Ranges from Descriptive to Distinctive Ranges from Descriptive to Distinctive Spectrum of Distinctiveness – a Scale of Decreasing Protectability Spectrum of Distinctiveness – a Scale of Decreasing Protectability Arbitrary or Fanciful Arbitrary or Fanciful Suggestive Suggestive Descriptive Descriptive Generic Generic

Trade Dress Configuration of package, product &/or premises Configuration of package, product &/or premises 3D design, ornamentation, color scheme, sound, smell, ambience, look & feel 3D design, ornamentation, color scheme, sound, smell, ambience, look & feel Not merely decoration; must serve to distinguish & make a commercial impression Not merely decoration; must serve to distinguish & make a commercial impression Must be distinctive & not primarily functional Must be distinctive & not primarily functional Separate protection & consumers impression Separate protection & consumers impression EX: EX: Website, homepage distinctive graphics Website, homepage distinctive graphics Pole lamp Pole lamp Taco Cabana patio Mexican restaurant Taco Cabana patio Mexican restaurant

Trademark Subject Matter Words Words Titles Titles Numerals Numerals Abbreviations Abbreviations Product package design Product package design Slogans Slogans Colors Colors Smells Smells Sounds Sounds Manufacturer’s premises Manufacturer’s premises The Coca Cola trademark is an example of a product in which the recipe, bottle design, and brand name are all trademarks.

Legal Tools for Technology Transfer Assignments Assignments Licensing: scope, duration, fields of use, compensation, geographic limits, etc. (e.g., software “sales,” terms & conditions of website use) Licensing: scope, duration, fields of use, compensation, geographic limits, etc. (e.g., software “sales,” terms & conditions of website use) Shop Rights Shop Rights Work Made for Hire; Hired to Invent; M-S & S/E Work Made for Hire; Hired to Invent; M-S & S/E Confidentiality Duties Confidentiality Duties Non Disclosure Agreements (NDA) Non Disclosure Agreements (NDA) Non-Competition Agreements (non-competes) Non-Competition Agreements (non-competes) Emerging Inevitable Disclosure Doctrine Emerging Inevitable Disclosure Doctrine Leasing, Franchising Leasing, Franchising

Common License Terms Scope & Exclusivity Scope & Exclusivity Duration & Termination Duration & Termination Geographic Limitations Geographic Limitations Confidentiality & Non-Competition Confidentiality & Non-Competition Establishes & Perpetuates Trade Secrets Establishes & Perpetuates Trade Secrets Limits on Improvements & Sub-Licensing Limits on Improvements & Sub-Licensing Warranties of IP Ownership Warranties of IP Ownership Infringement indemnity Infringement indemnity