1. Intellectual Property
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Intellectual Property
What the General Practitioner Should Know
By Chris Michelone
Blair County Bar Association YLD Committee
Intellectual Property: What the General Practitioner Should Know
© 2007 Microsoft Corporation. All rights reserved. Microsoft, Windows, Windows Vista and other product names are or may be registered trademarks and/or trademarks in the U.S. and/or other countries.
The information herein is for informational purposes only and represents the current view of Microsoft Corporation as of the date of this presentation. Because Microsoft must respond to changing market conditions, it should not be interpreted to be a commitment on the part of Microsoft, and Microsoft cannot guarantee the accuracy of any information provided after the date of this presentation. MICROSOFT MAKES NO WARRANTIES, EXPRESS, IMPLIED OR STATUTORY, AS TO THE INFORMATION IN THIS PRESENTATION.

2. Four major areas of IP: Trademarks Copyrights Patents Trade Secrets
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Four major areas of IP:
Trademarks
Copyrights
Patents
Trade Secrets
Blair County Bar Association YLD Committee
Intellectual Property: What the General Practitioner Should Know .

3. Trademarks SHEETZ MTO®
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Trademarks
Definition: A symbol, word, or, words, legally registered or established
by use as representing a company or product.
Trademark law protects an owner’s property interest in its branding.
Word marks:
Design marks:
SHEETZ MTO®
Blair County Bar Association YLD Committee
Intellectual Property: What the General Practitioner Should Know

4. 10/2/ :39 AM
Sources of Law
Trademark Law is a creature of both federal and state law.
Lanham Act – 15 U.S.C. § 1051 et seq.
Sets up registration process through US Patent and
Trademark Office
Protects registered and unregistered marks
State unfair competition law
“Passing off” goods as the goods of another is
unlawful. Pennsylvania State Univ. v. Univ. Orthopedics.,
706 A.2d 863 (Pa. Super. Ct. 1998).
Blair County Bar Association YLD Committee
Intellectual Property: What the General Practitioner Should Know
© 2007 Microsoft Corporation. All rights reserved. Microsoft, Windows, Windows Vista and other product names are or may be registered trademarks and/or trademarks in the U.S. and/or other countries.
The information herein is for informational purposes only and represents the current view of Microsoft Corporation as of the date of this presentation. Because Microsoft must respond to changing market conditions, it should not be interpreted to be a commitment on the part of Microsoft, and Microsoft cannot guarantee the accuracy of any information provided after the date of this presentation. MICROSOFT MAKES NO WARRANTIES, EXPRESS, IMPLIED OR STATUTORY, AS TO THE INFORMATION IN THIS PRESENTATION.

5. Distinctiveness APPLE®
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Distinctiveness
Trademarks must be distinctive to achieve protection
Five levels of distinctiveness – Strongest to Weakest
Fanciful – Made up, or coined, words
APPLE®
Arbitrary – common words whose meaning has nothing to do with the product or service they brand
Suggestive – indicative of nature of product it brands
without describing the product
Descriptive – describes the product or service it brands.
Must achieve “secondary meaning” to achieve protection.
Generic – a verbatim statement of the product of service.
No trademark protection available
Blair County Bar Association YLD Committee
Intellectual Property: What the General Practitioner Should Know
© 2007 Microsoft Corporation. All rights reserved. Microsoft, Windows, Windows Vista and other product names are or may be registered trademarks and/or trademarks in the U.S. and/or other countries.
The information herein is for informational purposes only and represents the current view of Microsoft Corporation as of the date of this presentation. Because Microsoft must respond to changing market conditions, it should not be interpreted to be a commitment on the part of Microsoft, and Microsoft cannot guarantee the accuracy of any information provided after the date of this presentation. MICROSOFT MAKES NO WARRANTIES, EXPRESS, IMPLIED OR STATUTORY, AS TO THE INFORMATION IN THIS PRESENTATION.

6. Trademark Infringement
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Trademark Infringement
Use of a mark that creates a substantial likelihood of confusion with an existing mark.
AMF, Inc. v. Sleepcraft Boats, 599 F.2d 341 (9th Cir. 1979)
In determining whether infringement has occurred, Courts primarily look to:
The strength of the mark allegedly being infringed
The similarity between the two marks
The similarity between the goods and services sold under the two marks
Remedies for Infringement:
Injunctive Relief
Actual Damages
Statutory Damages
Attorney’s Fees
Ex parte seizure (in the case of counterfeit goods)
Blair County Bar Association YLD Committee
Intellectual Property: What the General Practitioner Should Know
© 2007 Microsoft Corporation. All rights reserved. Microsoft, Windows, Windows Vista and other product names are or may be registered trademarks and/or trademarks in the U.S. and/or other countries.
The information herein is for informational purposes only and represents the current view of Microsoft Corporation as of the date of this presentation. Because Microsoft must respond to changing market conditions, it should not be interpreted to be a commitment on the part of Microsoft, and Microsoft cannot guarantee the accuracy of any information provided after the date of this presentation. MICROSOFT MAKES NO WARRANTIES, EXPRESS, IMPLIED OR STATUTORY, AS TO THE INFORMATION IN THIS PRESENTATION.

7. 10/2/ :39 AM
Copyrights
Definition – original works of authorship fixed in any tangible means
of expression. 17 U.S.C. § 102
Copyright protection attaches upon authorship and lasts for 70 years after the
author’s death. Registration with the United States Copyright Office is allowed
but not necessary.
Copyright protection is available for:
And much much more…
Blair County Bar Association YLD Committee
Intellectual Property: What the General Practitioner Should Know

8. 10/2/ :39 AM
Source of Law
Article I, Section 8, Clause 8 of the U.S. Constitution empowers Congress: “To promote the Progress of Science and useful Arts by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”
And so…Congress passed the Copyright Act of 1976 – 17 U.S.C. § 101
Last major copyright act before 1976 was enacted in 1909
Passed in response to earthshaking changes in technology since 1909
The current Director of the U.S. Copyright Office, Maria Pallante has indicated that
for the same reasons, it’s time to pass a new Copyright Act
The 1976 Act grants exclusive rights in copyrighted works to their author – § 106
Right to reproduce
Right to prepare derivative works
Right to copy, distribute and perform
Blair County Bar Association YLD Committee
Intellectual Property: What the General Practitioner Should Know

9. Copyright Infringement
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Copyright Infringement
Copyright infringement is simply the violation of these exclusive rights without
permission - § 501
Remedies for Copyright Infringement:
Injunctive relief
Impounding infringing articles
Actual and statutory damages
Costs and attorney’s fees
Criminal Sanctions
However…some unauthorized uses of copyright material are not infringement:
The Fair Use Doctrine (§ 107)
The fair use doctrine provides a defense to infringement where the copyrighted
material is used for purposes of criticism, comment, news reporting, teaching,
Scholarship, or research.
Blair County Bar Association YLD Committee
Intellectual Property: What the General Practitioner Should Know

10. 10/2/ :39 AM
Patents
“Whoever invents or discovers any new or useful process, machine, manufacture,
or composition of matter, or any new or useful improvement thereof, may obtain a
patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C.
§ 101.
Boiled down, this means that patentable subject matter must be:
A process, machine, manufacture, or composition of matter AND
Not be a law of nature, physical phenomenon, or abstract idea
There are three types of patents:
Utility patents – new and useful processes or machines (patentable based on what it does)
Design patents – new, original, and ornamental design for an article of manufacture (patentable based on how it looks)
Plant patents – invention or discovery of a new variety of plant
Blair County Bar Association YLD Committee
Intellectual Property: What the General Practitioner Should Know

11. 10/2/ :39 AM
Source of Law
The U.S. Constitution empowers Congress to protect inventions
and discoveries under Article I, Section 8, Clause 8.
The American patent system is governed by the Patent Act (35 U.S.C. § 1 et seq.) and Administered by the United States Patent and Trademark Office.
Patents may only be granted to inventions that are “novel” (§ 102)
- They cannot be previously available to the public.
- They cannot be subject to a previous patent application.
Patents may also only be granted to inventions that are not “obvious”
You MUST file a patent application in order to receive protection under the Patent Act.
Once issued, patents give the owner exclusive rights to the invention for:
- 20 years for utility and plant patents
- 15 years for design patents
Blair County Bar Association YLD Committee
Intellectual Property: What the General Practitioner Should Know

12. 10/2/ :39 AM
Patent Infringement
Patent infringement is the making, using, selling, offering, or import of a patented
invention without the permission of the patent owner.
Remedies for Infringement
Injunctive relief
Actual damages (a reasonable royalty)
“Increased” damages of up to three times actual damages
Attorney’s fees
Blair County Bar Association YLD Committee
Intellectual Property: What the General Practitioner Should Know

13. Trade Secrets Source of Law
A trade secret is any confidential information held by a person or business that derives independent economic value because it is generally not known to others and the owner has taken reasonable measures to keep such information secret. 18 U.S.C. § 1839.
Examples of Trade Secrets:
- Coca-Cola formula
- Confidential customer lists
- Unpatented or unpatentable processes
Source of Law
Historically, trade secret protection has been governed by the Uniform Trade Secrets Act, as enacted by almost every state in the union.
However, in 2016, Congress passed, and the President signed, the Defend Trade Secrets Act of This is the first federal codification of trade secret law, but it largely follows the UTSA.
Blair County Bar Association YLD Committee
Intellectual Property: What the General Practitioner Should Know

14. Misappropriation of Trade Secrets
Misappropriation of trade secrets is defined under 18 U.S.C. § 1832 as:
Stealing or appropriating trade secrets without authorization;
Copying, duplicating, sketching, or photographing trade secrets without authorization; or
Receiving, purchasing, or possessing trade secret information knowing it to be stolen or obtained without authorization
Remedies for misappropriation
Injunctive relief
Actual damages
Exemplary damages
Attorney’s fees
Ex parte seizures (in limited cases)
Trade secrets remain protected so long as the information remains secret, and can potentially last until the end of time.
Blair County Bar Association YLD Committee
Intellectual Property: What the General Practitioner Should Know

15. 10/2/ :39 AM
Thank you!
Contact information:
Chris Michelone
Blair County Bar Association YLD Committee
Intellectual Property: What the General Practitioner Should Know
© 2007 Microsoft Corporation. All rights reserved. Microsoft, Windows, Windows Vista and other product names are or may be registered trademarks and/or trademarks in the U.S. and/or other countries.
The information herein is for informational purposes only and represents the current view of Microsoft Corporation as of the date of this presentation. Because Microsoft must respond to changing market conditions, it should not be interpreted to be a commitment on the part of Microsoft, and Microsoft cannot guarantee the accuracy of any information provided after the date of this presentation. MICROSOFT MAKES NO WARRANTIES, EXPRESS, IMPLIED OR STATUTORY, AS TO THE INFORMATION IN THIS PRESENTATION.