Intellectual Property PatentCopyright Trade Marks Trade Secrets

Avoid the IP Confusion ! Patent Inventions Patent Inventions Machine, Manufacture, Composition of Matter, Process Machine, Manufacture, Composition of Matter, Process Copyright Works: form of expression Copyright Works: form of expression Literary, Pictoral/Graphic, Musical, A/V, Dramatic, Sound Recording, Choreography, Architectural Literary, Pictoral/Graphic, Musical, A/V, Dramatic, Sound Recording, Choreography, Architectural Trade Secret Information Trade Secret Information Data, formula, pattern, compilation, program, device, method, technique or process Data, formula, pattern, compilation, program, device, method, technique or process Trademark – Commercial Symbol, Trademark – Commercial Symbol, Word, Name, Symbol, Device, color, sound, smell Word, Name, Symbol, Device, color, sound, smell Trademark, Service Mark, Trade Dress, Dilution Trademark, Service Mark, Trade Dress, Dilution

Common IP “Elements” Comparison Chart: Comparison Chart: Subject Matter Subject Matter Protection Standards Protection Standards Sources of Rights Sources of Rights Regulatory Agency Regulatory Agency Acquisition Procedure Acquisition Procedure Infringement Standards Infringement Standards Infringement Remedies Infringement Remedies

Patent New, Useful & Non-Obvious New, Useful & Non-Obvious Novelty Novelty Useful = Utility Useful = Utility Non-Obvious Non-Obvious Inventive, bigger advancement step than person of ordinary skill might usually make Inventive, bigger advancement step than person of ordinary skill might usually make Prior Art Determines both Novelty & Non- Obviousness Prior Art Determines both Novelty & Non- Obviousness Costly & Time Consuming Qualification Process Costly & Time Consuming Qualification Process Prosecution through the PTO Prosecution through the PTO

Copyright Originality Originality Min. personal creativity/intellect required Min. personal creativity/intellect required Works of Authorship Works of Authorship Fixation in Tangible Medium Fixation in Tangible Medium Expression Expression Idea-Expression Dichotomy Idea-Expression Dichotomy Generally not Ideas Generally not Ideas Most Data Not Copyrightable Most Data Not Copyrightable Collective Work or Compilation Collective Work or Compilation

Bundle of Rights under Copyright Reproduce Reproduce Derivative Works Derivative Works Distribution Distribution Performance Performance Display Display License vs. Assignment License vs. Assignment Fair Use Defense Fair Use Defense  Purpose and character of use;  Nature of copyrighted work;  Amt/substantiality of used portion;  Effect of use on potential market

Trade Secrets Information Information Derives independent economic value from secrecy Derives independent economic value from secrecy Subject of efforts, reasonable under the circumstances, to maintain secrecy Subject of efforts, reasonable under the circumstances, to maintain secrecy Misappropriation as Infringement No regulator DoJ can bring criminal misappropriation cases

Trademark Use in Commerce Use in Commerce Connected to Particular Products/Services Connected to Particular Products/Services Spectrum of Distinctiveness Spectrum of Distinctiveness Arbitrary or Fanciful Arbitrary or Fanciful Suggestive Suggestive Descriptive Descriptive Generic Generic Costly & Time Consuming Qualification Costly & Time Consuming Qualification Prosecution through the PTO Prosecution through the PTO

Sui Generis Protections Semiconductor chips Semiconductor chips Asexual plants Asexual plants Design Patents Design Patents Petty patents Petty patents Databases Databases Boat hull design Boat hull design Petty Patents & Utility Models Petty Patents & Utility Models

Legal Tools for Tech. Transfer Not same as Int’l Econ., Foreign Aid, Developing Nations Not same as Int’l Econ., Foreign Aid, Developing Nations Assignments vs Licensing: Assignments vs Licensing: scope, duration, fields of use, compensation, geographic limits, etc. (e.g., software “sales,” terms & conditions of website use) scope, duration, fields of use, compensation, geographic limits, etc. (e.g., software “sales,” terms & conditions of website use) EULAs EULAs 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) Inevitable Disclosure Doctrine Inevitable Disclosure Doctrine Leasing, Franchising Leasing, Franchising

Contemporary IP Problems Turn-of-the-20 th Century Concepts Turn-of-the-20 th Century Concepts Designed for non-digital expression, mechanical inventions, physical supply chains Designed for non-digital expression, mechanical inventions, physical supply chains Difficulty Adapting to Digital Creation, distribution Difficulty Adapting to Digital Creation, distribution IP Strategic Behavior IP Strategic Behavior Patent Trolls, IP Portfolios, Misuse to Monopolize Patent Trolls, IP Portfolios, Misuse to Monopolize Very Costly Very Costly Rights Defense Rights Defense Infringement Determination Certainty Infringement Determination Certainty Int’l Enforceability Challenges Int’l Enforceability Challenges