1. Overview of Intellectual Property
November 1, 2016
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2. U.S. Constitution
Article I, Section 8, Clause 8 Empowers the United States 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.” (emphasis added)
Science
Writings [Copyright Law]
Useful Arts
Discoveries [Patent Law]
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3. Types of Intellectual Property
1) Copyright (U.S. Constitution, Article 1, Section 8. Clause 8)[Exclusively Federal]
2) Patent (U.S. Constitution, Article 1, Section 8. Clause 8)[Exclusively Federal]
3) Trademark (Federal- U.S. Constitution Article 1, Section 8, Clause 3 (Commerce Clause) & State)
4) Trade Secret (State Law)
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4. Subject Matter of Copyright
“Copyright protection subsists... in original works of authorship fixed in any tangible medium of expression” - 17 U.S.C. §102(a)
“Original Works of Authorship”
Independent creation of a work featuring a modicum of creativity
Does not require novelty, ingenuity or aesthetic merit
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5. Examples of Copyrightable Subject Matter
Literary works (writings)
Musical works, including any accompanying words
Dramatic works, including any accompanying music
Pantomimes and choreographic works
Pictorial, graphic, and sculptural works
Motion pictures and other audio visual works
Sound Recordings
Architectural works
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6. Exclusive Rights in Copyrighted Works (17 U.S.C. § 106)
To reproduce work
To prepare derivative works based upon the copyrighted work
Such as:
translations,
revisions,
abridgements
To perform or display copyrighted work publicly.
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7. Who Owns the Copyrights?
Author
Work made-for-hire
Work prepared by an employee within scope of his or her employment [employer is considered the author]
A work specially ordered or commissioned for use as a contribution to a collective work, as part of a motion picture or other audiovisual work, as a translation…
- must be in a written instrument -
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8. Fair Use
17 U.S.C. 107: The fair use of a copyrighted work...for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research is not an infringement of copyright.
Factors for determining whether a use is fair use
The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes
The nature of the copyrighted works (Ex.: fiction or non-fiction, published or non-published)
The amount and substantiality of the portion used in relation to the copyrighted work as a whole
The effect of the use upon the potential market for or value of the copyrighted work.
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9. Limits on Copyrightability
17 U.S.C. 102(b): “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery regardless of the form in which it is described, explained, illustrated or embodied.”
17 U.S.C. 101: “The design of a useful article...shall be considered a pictorial, graphic or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”
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10. Copyright Remedies Injunction (17 USC §502)
Impounding infringing articles (17 USC §503)
Damages and Profits (17 USC §504)
a) actual damages suffered and profits of infringer exceeding actual damages
b) statutory damages
$750 - $30,000
if willful up to $150,000
Note: Court can reduce down to $200
Note: Infringement must have occurred before effective copyright registration
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11. Duration of Copyright
For works created on or after January 1, 1978, copyright protection begins when the work is fixed in a tangible medium of expression and has a duration of the life of the author plus 70 years
For works made for hire, the employer is considered the author and owns all rights comprised in the copyright (unless agreed upon otherwise) and the copyright endures for a term of 95 years from the year of its first publication, or a term of 120 years from the year of its creation, whichever expires first [if work created on or after Jan. 1, 1978].
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12. What is a trademark?
Lanham Act, Section 45: “The term 'trademark' includes any word, name, symbol, or device, or any combination thereof, used by a person ... to identify his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown
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13. Trademark Examples Word: NIKE (RN 1,277,066) Word and Design:
Design Only:
RN 4,704,672
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14. Trademark Examples 3D Object: Sound: RN 1,816,777 RN 1,417,233
ESPN
NBC
20th Century Fox
RN 2,450,525
RN 916,522
RN 2,000,732
November 1, 2016
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15. Four Categories of Word Marks
Generic
Descriptive
Suggestive
Arbitrary or Fanciful
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16. Duration of Trademark Registration
10 Years Renewable in ten year increments provided that use continues
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17. Trademark Infringement
Lanham Act § 32 (for registered marks)
“Any person who shall... use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive... shall be liable in a civil action by the registrant for the remedies hereinafter provided.”
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18. What is a Trade Secret? - Uniform Trade Secret Act, § 1
“Information, including a formula, pattern, compilation, program, device, method, technique, process, drawing, cost data, or customer list that:
(1) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and
(2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.”
- Uniform Trade Secret Act, § 1
(CONN. GEN. STAT. ANN. §35-51(d))
November 1, 2016
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19. What is a patent? Government grant of right to exclude.
07/01/98
What is a patent?
Government grant of right to exclude.
Not a grant to make …, but could be patent on an improvement.
Can stop others from making, using, offering to sell or selling the patented invention in the United States or importing it, for a period of time beginning after date of issue.
Can also stop others from selling in the US a product made in another country using a process covered by a U.S. patent.
In exchange, the inventor must disclose how to make and use the invention.
Patent rights are based on claims of the patent.
What is protected is the invention as claimed.
Infringer is accused of infringing the claims of a patent.
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20. Types of patents Utility Patent Others November 1, 2016
07/01/98
Utility Patent
New or improved machine, (article of) manufacture, process, or composition of matter
Roughly divided into mechanical, chemical, electrical, and biotech.
Term is 20 years from date of filing (in force from date of issue).
A utility patent can claim priority to a provisional application or a foreign patent application if the utility application is filed within one year of the priority application(s).
A provisional application becomes abandoned in one year.
Others
Design Patent
Ornamental (non-useful) design of article of manufacture
Term is 15 years from date of issue
Plant Patent
Protects asexually-reproduced new plant varieties.
Term is 20 years.
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21. Patentable subject matter
35 USC §101
Whoever invents or discovers any new and useful process, machine, [article of] manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirement of this title.
35 USC §102--What is claimed must be new.
A person is entitled to a patent unless--the invention has already been disclosed by another (or by the inventor more than 1 year before the filing date) or has already been described in an earlier filed application
35 USC §103--What is claimed must be nonobvious.
Cannot have been obvious at the time the invention was made to a person of ordinary skill in the art.
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22. Patent Subject Matter Eligibility
Computer programs per se
Judicially recognized exceptions
a) laws of nature (E=mc2)
b) natural phenomena
c) abstract ideas
But a claim directed to a judicially recognized exception is subject matter eligible if the claim as a whole amounts to “significantly more” than the exception itself
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23. November 1, 2016
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24. Why get a patent? From purely corporate perspective:
07/01/98
From purely corporate perspective:
Use offensively as a right to exclude.
Exclusive (may be geographic) use and sale may permit setting prices at a level not possible without patent protection.
Use defensively as part of a patent portfolio to trade (cross license) right to exclude with others.
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25. Infringement (35 USC §271, et seq.)
Infringement can be direct (not requiring intent) or indirect (requiring intent).
Direct: 271(a) “Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.”
Indirect/ inducement: 271(b) “Whoever actively induces infringement of a patent shall be liable as an infringer.”
Indirect/ contributory: 271(c) “Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.”
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26. Remedies for patent infringement
07/01/98
Injunction (35 USC §283): Infringer can be made to stop.
Damages (35 USC §284)
“Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.”
“When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed. Increased damages under this paragraph shall not apply to provisional rights under section 154(d) of this title.”
Attorney fees (35 U.S.C. §285)
“The court in exceptional cases may award reasonable attorney fees … .”
Damages can be based on “lost profits” according to a “reasonable probability.”
“Entire market value rule” is used in case of patented component--allows recovery for patented and unpatented components if together the are components of a single assembly or parts of a complete machine,” or if together they constitute “a single functioning unit.”
Damages can instead be based on a “reasonable royalty,” i.e. what the infringer would have negotiated.
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27. Federally Funded Research Bayh-Dole Act (35 U.S.C. §§200-212)
§200 Policy and Objective (Federal funded research) “It is the policy and objective of the Congress to use the patent system to promote the utilization of inventions arising from federally supported research or development…” (1) University (including non-profit organization and small business) can elect to retain title to any invention (2) If elected (see (1)), university must grant government a non- exclusive paid-up license If no election then government controls invention
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28. Questions?
November 1, 2016
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