Intellectual Property Patents & Trademarks TC 310 June 19, 2008

Patent Background Patent Clause is in Constitution  Power of Congress  Needs statute to have effect Protects products, processes Allows a temporary monopoly  Make, use, sell Incentive to innovate

Process Patent Statutes create Patent Office Application necessary  Provisional  Formal Patent Office examines  New  Useful  Nonobvious

Novelty (newness)‏ Something brand new Make use of prior knowledge  Cite literature  Inevitableness Conflicts over Priority  Conception  Reduction to practice  Due diligence

Utility Must have some use of value Novelty/ curiosity fails test Something can be novel, no utility Specific Utility Substantial utility  Research process no  Effective drug, not on people, yes

Nonobviousness Similar to novelty BUT, now we deal with inevitable Fail this test if  Others could do it easily  Indicated as possible Still use old inventions  Add synergy is key

Abusing Patents Double Patents  Break up invention  Several patent protections  Terminal Disclaimer used instead Only 1 Patent Ever Allowed per invention No extensions

Infringement Two-step process  Examine patent  Apply description to object Do not need to be identical, just similar Can apply to sub-parts of patent Ignorance not a defense  Patent holder must make infringer aware

Telecom Patents Laws of Nature not patentable  Includes algorithms Processes using laws of natures are What is patentable?  Software  Video game hardware  Infrastructure devices  Online processes (facebook example)‏

Trademarks Unlike Patents, Trademarks are purely statutory  Problems with federalism  Lanham Act of 1946  Cover only Interstate matters Serves to identify producer, market producer

Rules for Trademarks Must be in use before protected  Can expire Federal registry of trademarks  This is optional Distinctiveness  Marks must be sufficienty different

Loss of Protection Abandonment  Discontinue use, no intent to resume 3 years  Not changing to remain distinctive Excused abandonment  Discontinued, but want to resume  Economic situations  Burden is on users

Infringement Confusion is the standard Similarity  Sound, connotation, appearance, goods, “trade channels” Conditions of sale  Impulse v Considered Actual confusion  Amount of time, similarity of goods

Telecom Trademarks Importance in Telecom  Use of AT&T name by Cingular  Services very similar, name matters Use of URLs  Want trademark to match URL  Willing to pay?