2. Overview of Intellectual Property An Overview of Intellectual Property David R. Todd Workman Nydegger Salt Lake City, Utah

3. Overview of Intellectual Property Intellectual Property : Intellectual Property : Trademarks Copyright Trade Secrets Patents

4. Overview of Intellectual Property Trademark Any word, name, symbol, or device used to identify and distinguish goods and services

5. Overview of Intellectual Property Types of Marks Words Hyatt Xerox McDonald’s Excedrin

6. Overview of Intellectual Property Types of Marks Designs

7. Overview of Intellectual Property Types of Marks Combination Word/Design

8. Overview of Intellectual Property Types of Marks Slogans

9. Overview of Intellectual Property Types of Marks Shape/Product Configuration

10. Overview of Intellectual Property Types of Marks Colors

11. Overview of Intellectual Property Types of Marks Sounds

12. Overview of Intellectual Property Types of Marks Smells In re Clarke, 17 USPQ2d 1238 (TTAB 1990). –Granting registration on “a high impact, fresh floral fragrance reminiscent of Plumeria blossoms” for “sewing thread and embroidery yarn.”

13. Overview of Intellectual Property Purposes of Trademarks 1. Protect the Public a. Identify, distinguish, and indicate source of goods and services b. Assure of consistent quality 2. Protect Owner a. Protect investment in goodwill

14. Overview of Intellectual Property Exclusive Rights Prevent Others From Using The Mark So As To: Likely Cause Confusion As To Affiliation or Origin of Goods or Services Likely Cause Dilution of Distinctive Quality of A Famous Mark

15. Overview of Intellectual Property Choosing a Strong Word Mark Weaker Stronger Generic Descriptive Suggestive Arbitrary & Fanciful

16. Overview of Intellectual Property Choosing a Strong Word Mark Weaker Stronger Generic Descriptive Suggestive Arbitrary & Fanciful Glue™ Extra Gentle™ Coppertone® Apple® Adhesive Hand Lotion Suntan Lotion Computers

17. Overview of Intellectual Property As Long As The Mark Is Used Length of Trademark Protection

18. Overview of Intellectual Property Copyright Subsists in original works of authorship fixed in any tangible medium Examples Music on cassettePaintings on canvas Movies on DVDNovels in book form Software on CDArticles in magazine Sculpture in stoneReports in notebook

19. Overview of Intellectual Property Purpose of Copyright Protect manner of Expression and Form No Copyright in Facts No Copyright in Ideas No Copyright in Functional, Utilitarian Aspects of a Work

20. Overview of Intellectual Property Exclusive Rights 1.Reproduction of the Work 2.Preparation of Derivative Works 3.Public Distribution of Copies of the Work 4.Public Performance of the Work 5.Public Display of the Work

21. Overview of Intellectual Property Fair Use Exception – (commercial / nonprofit) –(fictional / nonfictional) – (small portion / significant portion) – (most important factor) Purpose of Use Nature of Work Amount of Work Used Effect of Use on Potential Market

22. Overview of Intellectual Property Length of Copyright Protection Depends on date of creation, publication Created after Jan. 1, 1978: Author’s life + 70 years Work for hire: 95 years from publication or 120 years from creation, whichever comes first

23. Overview of Intellectual Property Trade Secret Anything that derives economic value from not being generally known or readily ascertainable

24. Overview of Intellectual Property Trade Secret Examples Coca Cola Recipe and Process Methods Embodied in Computer Source Code Invention Disclosed Only to Patent Office

25. Overview of Intellectual Property Exclusive Rights Prevent Others From Using or Disclosing “By Improper Means”: Theft, Bribery Breach of Duty or Agreement NOT Reverse Engineering

26. Overview of Intellectual Property Length of Trade Secret Protection As Long As It Remains Secret

27. Overview of Intellectual Property Utility Patents Right to exclude others from making, using, or selling the patented invention in the United States

28. Overview of Intellectual Property Patentable Subject Matter “Anything Under the Sun That Is Made By Man” Manufacturing Processes Mechanical Devices Chemical Compositions Genetically Engineered Organisms Methods Embodied in Software NOT Laws of Nature, Abstract Ideas, Natural Phenomena

29. Overview of Intellectual Property Patentable Subject Matter

30. Overview of Intellectual Property Patentable Subject Matter

31. Overview of Intellectual Property Patentable Subject Matter

32. Overview of Intellectual Property Patentable Subject Matter

33. Overview of Intellectual Property Requirements for Patentability Novel Not Obvious Useful Full Disclosure

34. Overview of Intellectual Property Purpose of Patents Encourage Investment in R&D Encourage Disclosure Encourage Flow of Capital Allow Public Use After Limited Time

35. Overview of Intellectual Property Loss of Right to Patent An inventor loses his right to a patent if more than one year before filing: 1. Publication anywhere in world 2. Public use in the United States 3. Sale or offer for sale in the United States

36. Overview of Intellectual Property America Invents Act An inventor loses his right to a patent if before filing: 1. Publication anywhere in world 2. Public use anywhere in world 3. Sale or offer anywhere in world …Unless inventor publishes first (within one year of filing)

37. Overview of Intellectual Property Ownership of Patents 1.Inventor Is Presumptively the Owner 2. Obligation to Assign to Employer When: a. agreement to assign inventions b. hired to solve a specific problem c. hired to invent in general

38. Overview of Intellectual Property Length of Patent Protection Depends on date of issuance and date of pendency of application Since 1995: 20 years from filing + some possible adjustments

39. Overview of Intellectual Property Scope of Protection “The Name of the Game is the Claim” Patentability: Compare Claim to Prior Art Infringement: Compare Claim to Potentially Infringing Product or Method

40. Overview of Intellectual Property Scope of Protection Your Invention:

41. Overview of Intellectual Property Scope of Protection Your Invention: An apparatus comprising: a generally flat member; and at least one leg attached to the member for supporting the member in a generally horizontal fashion.

42. Overview of Intellectual Property Scope of Protection An apparatus comprising: a generally flat member; and at least one leg attached to the member for supporting the member in a generally horizontal fashion. Not Patentable for Lack of Novelty The Prior Art:

43. Overview of Intellectual Property Scope of Protection Amended Claim 1a: An apparatus comprising: a generally flat, polygonally shaped member; at least one leg attached at each corner of the polygonally shaped member for supporting the member in a generally horizontal fashion.

44. Overview of Intellectual Property Scope of Protection Amended Claim 1b: An apparatus comprising: a generally flat member; at least one leg attached to the member for supporting the member in a generally horizontal fashion ; and a back rest oriented to support the back of a person sitting on the member.

45. Overview of Intellectual Property Scope of Protection New Competitor’s Chair:

46. Overview of Intellectual Property Scope of Protection Amended Claim 1a: An apparatus comprising: a generally flat, polygonally shaped member; at least one leg attached at each corner of the polygonally shaped member for supporting the member in a generally horizontal fashion. No Infringement

47. Overview of Intellectual Property Scope of Protection Amended Claim 1b: An apparatus comprising: a generally flat member; at least one leg attached to the member for supporting the member in a generally horizontal fashion ; and a back rest oriented to support the back of a person sitting on the member. Infringement

48. Overview of Intellectual Property Scope of Protection Compare Scope of Protection Available With Real–Live Economic Value of That Scope

49. Overview of Intellectual Property Ability to Practice Your Own Technology The Ability to Practice Your Own Technology Can Be More Important Than Excluding Others From Exploiting It –Patents Provide Right to Exclude Others, Not The Right To Practice –Patent Office Does Not Examine for Infringement of Others’ Patents –Avoiding Infringement of Others’ Patents Is Different From Establishing Novelty, Nonobviousness of Your Own Patent

50. Overview of Intellectual Property Ability to Practice Your Own Technology An apparatus comprising: a generally flat member; and at least one leg attached to the member for supporting the member in a generally horizontal fashion. Previous Patent:

51. Overview of Intellectual Property Ability to Practice Your Own Technology An apparatus comprising: a generally flat member; and at least one leg attached to the member for supporting the member in a generally horizontal fashion. Infringed by Your Technology! Previous Patent:

52. Overview of Intellectual Property Ability to Practice Your Own Technology Clearance Searches Designing Around Opinions of Counsel Procuring Licenses

53. Overview of Intellectual Property An Overview of Intellectual Property David R. Todd Workman Nydegger Salt Lake City, Utah