Chapter 7: Intellectual Property

Patent Period

- Inventions are protected for 20 years (design patents are for 14 years) -Period begins to run from date patent application is filed NOT ISSUED -Once period expires, the invention or design becomes public domain and can be produced and sold without paying the patent holder

Trademark duration

- Original mark is valid for 10 years - Can be renewed for an unlimited number of 10 year periods

Source of Trademark Law

-Congress enacted the Lanham Act providing federal protection to trademarks -State law can provide additional trademark protections

Criminal Copyright Infringement

-Crime to willfully infringe on copyrighted material for a financial gain where retail value of copyrighted work exceeds $1,000. -Imprisonment for up to 5 years and fines up to $100,000

Economic Espionage Act of 1996

-Federal crime to steal another's trade secret (Congress very broadly defines a trade secret) -Criminal penalties include imprisonment up to 15 years for each violation, organizations can be fined up to $10 M per act

Patent

-Grants a property right to the inventor with exclusive rights to use and exploit their patents -Issued by the Patent and Trademark Office ("PTO")

Civil Action

-Misappropriation of a Trade Secret -Available if trade secret obtained through unlawful means -Recovery includes (1) profits made by offender (2) damages against offender (3) injunction prohibiting offender from continuing to use trade secret

Trade Secrets

-Proprietary, confidential business information that sets a business apart from its competitors -e.g. product formulas, patterns, compilations, program device, method, technique, or processes -Trade secrets may also be subject to patents, copyrights or trademarks. -Protection lasts indefinitely

Copyright

-Protection provided to the authors of original works including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. -Protects only tangible items (artworks, writings, photographs, movies, etc.)

Registration with United States Copyright Office

-Registration of copyright is voluntary -Protection is automatic once in tangible form. -To prosecute a copyright violation: must register with U.S. Copyright Office.

Source of Patent Law

-U.S. Constitution Art. I, Sect. 8: Congress shall have the Power "[t]o 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" -NO STATE STATUTES ON PATENTS (FEDERAL PREEMPTION)

Source of Copyright Law

-U.S. Constitution Art. I, Sect. 8: Congress shall have the Power to "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" -No state statutes on copyrights (Federal preemption)

What can't be patented

1. Abstractions and scientific principles 2. Public Use Doctrine

Patent Infringement Recoverable Damages

1. Compensatory damages - equal to royalty rate of the infringed articles + Other damages to compensate for damages from infringement (e.g. loss of customers) 2. Order to destroy all infringing articles 3. Injunction preventing infringer from such action in the future

Reverse Engineering

A competitor who has reverse engineered a trade secret can use the trade secret but not the trademarked name use by the original creator of the trade secret

Fair Use Doctorine

Permits use of copyrighted material without consent for limited uses (e.g. scholarly work, parody, satire (e.g. SNL), news quotes)

Federal Dilution Act

Protects company where an infringer uses the mark and confuses consumers as to the source of the goods or services

Servicemark

Servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product or good.

First to File

The first person to file an item or a process is given patent protection over the first inventor of the product. This was effective March 16, 20013

Trademark

is any distinctive word, phrase, symbol or device (image or appearance) or combination thereof, that identifies or distinguishes one's goods or products from others.

Public Use Doctrine

If the invention was used by the public for more than one year prior to filing patent application - no patent

Contributory Copyright Infringement

Illegal to assist another party in copyright infringement

What can be patented?

1. Design patents (protects the way an article looks) 2. Plant patents 3. Utility patents (3) example: Invent, discover or improve, a new process, machine, device, manufactured item, or composition of matter (i.e. chemical compound)

Certain marks cannot be trademarked

1. Flags, US or any state, municipality or foreign nation 2. Generic names & names that have become generic names 3. Immoral or scandalous marks 4. Geographic names standing alone 5. Any mark that resembles a mark already registered

File a trademark infringement suit: Must Prove

1. Mark is used in an unauthorized manner 2. Use is likely to cause confusion, mistake, or deception of the public as to the origin of the goods or services

Federal Dilution Act: Requirements/Needs

1. Mark must be famous 2. The use by the other party must be commercial 3. The use must cause dilution of the distinctive quality of the mark 4. No harm is required

Trade Secret Precautions

1. Non disclosure agreements 2. Covenant not to compete 3. Restricting access to and physical segregation of information 4. Mark documents with warnings and remind of confidentiality

Patent Requirements

1. Novel - Has not been invented or used in the past 2. Useful - has some practical purpose 3. Non-obvious or apparent to a reasonable person

File a trademark infringement suit: Plaintiff Can Recover

1. Profit made from trademark infringement 2. Any damages suffered by plaintiff 3. Order requiring impoundment and destruction of the infringement works 4. Injunction preventing infringer from such action in the future 5. Treble damages (triple actual compensatory damages) where intentional infringement is found

Copyright infringement lawsuit - Remedies

1. Profits made from copyright infringement 2. Any damages suffered by plaintiff 3. Order requiting destruction all infringing works 4. Injunction preventing infringer from future infringement

Trademarks- Other Types

1. Trade dress 2. Certification marks 3. Collective Marks

Copyright Duration

1.. Authors/individuals -Life of author + 70 years 2. Publishers/business - Shorter of: -95 years after publication date or -120 years after creation -After copyright period the work enters the public domain and can be published without paying royalties.

Trade Dress

Distinctive décor, menu, or style or type of service

Berne Convention

Law eliminated the need to place the © or the word copyright on a copyrighted work.

Trademark Requirements

Must be: 1. Distinctive, OR Have acquired a secondary meaning (brand name that has evolved from an ordinary term) 2. Must be used in commerce (i.e. actually used in the sale of goods or services)

Collective Marks

Owned by an organization whose members use it to identify themselves. Example: CPA

Certification Marks

Used to certify that a good or service meets a certain quality or originates from a particular region. Usually owned by a nonprofit cooperative or association. The owner o f the mark establishes certain geographical location requirements, quality standards, material standards, or mode of manufacturing standards that must be met by a seller of products or services in order to use the certification mark. Example: Certified Maine Lobster