EEE Ch 12

a typical patent-infringement suit, according to Fortune Small Business, costs each side at least ___________ to litigate.

$500,000

What Is Protected by a Copyright?

- Literary works - Computer software - Pantomimes and choreographic works - Musical compositions - Dramatic works - Pictorial, graphic, and sculptural works

step to enhance the protection offered by the copyright statutes:

- attaching the copyright notice, or "copyright bug" as it is sometimes called - registering a work with the U.S. Copyright Office

ways to prevent infringement:

- embed and hide in the code useless information, such as the birth dates and addresses of the authors. - some publishers of maps, guides, and other reference works will deliberately include bits of phony information in their products

advantages of in registering a trademark with the USPTO:

- nationwide priority for use of the mark - may use the federal trademark registration symbol (®) - the right to block the importation of infringing goods into the United States

Common Mistakes Firms Make in Regard to Intellectual Property:

- not properly identifying all their intellectual property - not fully recognizing the value of their intellectual property - not legally protecting the intellectual property that needs protecting - not using their intellectual property as their overall plane for success

examples of commonly used physical measures for protecting trade secrets:

- restricting access - labeling documents - Password protecting confidential computer files - Maintaining logbooks for visitors - Maintain logbooks for access to sensitive material - Maintaining adequate overall security measures:

three types of patents: (M) most common (2M) second most common

- utility (M) - design (2M) - plant

Exclusions from Trademark Protection:

-immoral or scandalous matter -deceptive matter -descriptive marks -surnames (unless combined with other words)

What Is Protected Under Trademark Law?

-words -numbers and letters -designs and logos -sounds -fragrances -shapes -colors -trade dress

two primary rules of thumb for deciding if intellectual property protection should be pursued for a particular intellectual asset:

1- a firm should determine if the intellectual property in question is directly related to its competitive advantage 2- determine whether an item has value in the marketplace

two ways that the USPTO can offer further protection for firms concerned about maintaining the exclusive rights to their trademarks:

1- a person can file an intent-to-use trademark application 2- filing a formal application for a trademark

The Process of Conducting an Intellectual Property Audit:

1- develop an inventory of a firm's existing intellectual property. 2- identify works in progress to ensure that they are being documented in a systematic, orderly manner. 3- specify the firm's key trade secrets and describe how they are being protected.

Why Conduct an Intellectual Property Audit?

1- it is prudent for a company to periodically determine if its intellectual property is being properly protected. 2- remain prepared to justify its value in the event of a merger or acquisition.

Obtaining a patent; six-step process:

1- make sure the invention is practical 2- determine the type of application to file 3- hire a patent attorney 4- conduct a patent search 5- file a patent application 6- obtain decision from US Patent and Trademark Office

selecting and registering a trademark; three-step process:

1- select an appropriate mark 2- perform a trademark search 3- create rights in the trademark

T/F a patent gives its owner the right to make, use, or sell the invention

F a patent does not give its owner the right to make, use, or sell the invention; it gives the owner only the right to exclude others from doing so

Uniform Trade Secrets Act

drafted in 1979 by a special commission in an attempt to set nationwide standards for trade secret legislation; although the majority of states have adopted the act, most revised it, resulting in a wide disparity among states in regard to trade secret legislation and enforcement

The key for young entrepreneurial firms is to trademark their products and services in ways that...

draw positive attention to them in a compelling manner

Intellectual property laws exist to...

encourage creativity and innovation by granting individuals who risk their time and money in creative endeavors exclusive rights to the fruits of their labors for a period of time.

Computer Software Copyright Act

in 1980, congress passed this act, which amended previous copyright acts; now, all forms of computer programs are protected

utility patents are granted to anyone who...

invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.

when a patent expires...

it falls into public domain

if a secret is disclosed by mistake...

it typically loses its trade secret status

what is a company's most important asset?

its intellectual property

copyright term?

life of the author plus 70 years.

can a utility patent be obtained for an "idea" or a "suggestion" for a new product or process (if no, explain)

no A complete description of the invention for which a utility patent is sought is required, including drawings and technical details

the most common mistake entrepreneurs make in the area of copyrights is...

not thinking broadly enough about what they should copyright.

Economic Espionage Act

passed in 1996, an act that makes the theft of trade secrets a crime

Companies protect trade secrets through...

physical measures and written agreements.

one year after first use deadline

requirement that a patent must be filed within one year of when a product or process was first offered for sale, put into public use, or was described in any printed publication. If this requirement is violated, the right to apply for a patent is forfeited

The key factor in winning a trade secret dispute is that...

some type of theft or misappropriation must have taken place

By placing this notice at the bottom of a document, an author (or company) can prevent...

someone from copying the work without permission and claiming that they did not know that the work was copyrighted

one of the key factors in determining whether something constitutes a trade secret is...

the extent of the efforts to keep it secret

idea-expression dichotomy

the legal principle describing the concept that although an idea is not able to be copyrighted, the specific expression of an idea is

copyright bug

the letter c inside a circle with the first year of publication and the author copyright owner

fair use (def.) reasoning?

the limited use of copyrighted material for purposes such as criticism, comment, news reporting, teaching, or scholarship the benefit to the public from such uses outweighs any harm to the copyright owner

utility patents (def.) term?

the most common type of patent covering what we generally think of as new inventions that must be useful, must be novel in relation to prior arts in the field, and must not be obvious to a person of ordinary skill in the field 20 years

design patent (def.) term?

the second most common type of patent covering the invention of new, original, and ornamental designs for manufactured products. protects the way it looks 14 years

Under the law, an original work is protected automatically from...

the time it is created and put into a tangible form, whether it is published or not.

If two or more people make an invention jointly,...

they must apply for the patent together

Companies can maintain protection for their trade secrets if...

they take reasonable steps to keep the information confidential

A common mistake that young companies make is...

to invent a product, spend a considerable amount of money to patent it, and find that the market for the product does not exist or that the existing market is too small to be worthy of pursuit

Trademark Infringement (def.) what is the key?

unauthorized use of a trademark or service mark in a manner that is likely to cause confusion does it cause confusion

Intellectual property laws also help individuals make...

well-informed decisions

patent infringement

when one party engages in the unauthorized use of another party's patent.

copyright infringement

when one work derives from another, is an exact copy, or shows substantial similarity to the original work.

derivative works

works that are new renditions of something that is already copyrighted, which are also copyrightable

three reasons, it is important for businesses to recognize what intellectual property is and how to protect it:

1- the intellectual property of a business often represents its most valuable asset 2- it is important to understand what intellectual property is and how to protect it to avoid unintentional violations of intellectual property laws 3- intellectual property can be licensed or sold, providing valuable licensing income.

four types of trademark: (G) the two of greatest interest to entrepreneurs

1- trademark (G) 2- service mark (G) 3- collective mark 4- certification mark

three basic requirements for a patent to be granted: Also define what they mean

1- useful- it must have utility 2- novel- it must be different from what has come before 3- not obvious- it must not be obvious to a person of ordinary skill in the field

four key forms of intellectual property: (C)- the only form of intellectual property right expressly mentioned in the original articles of the U.S. Constitution

1. patents (C) 2. trademarks 3. copyrights 4. trade secrets

It currently takes about __________ to get a trademark registered through the USPTO.

10 months

T/F Memorization is a defense again trade secret theft

F

the strongest case for trade secret protection is information that is characterized by the following:

Is not known outside the company Is known only inside the company on a "need-to-know" basis Is safeguarded by stringent efforts to keep the information confidential Is valuable and provides the company a compelling competitive advantage Was developed at great cost, time, and effort Cannot be easily duplicated, reverse engineered, or discovered

Trademark law, which falls under the...

Lanham Act

certification mark (def.)

Marks, words, names, symbols, or devices used by a person other than its owner to certify a particular quality about a good or service

when is a trademark protected?

Once a mark is used in commerce, such as in an advertisement

Who Can Apply for a Patent? exceptions:

Only the inventor of a product - if an invention is made during the course of the inventor's employment, the employer typically is assigned the right to apply for the patent through an assignment of invention agreement - the rights to apply for an invention can be sold

plant patents (def.) term?

Patents that protect new varieties of plants that can be reproduced asexually by grafting or cross-breeding rather than by planting seeds. 20 years

duration of trademarks

Renewable every 10 years, as long as the mark remains in use

service mark (def.)

Similar to trademarks; are used to identify the services or intangible activities of a business, rather than a business' physical products

T/F Trade secrets can be lawfully discovered

T

T/F it is up to entrepreneurs to take advantage of them and to safeguard their intellectual property once it is legally protected

T

T/F Technically, it is not necessary to provide a copyright notice or register work with the U.S. Copyright Office to be protected by copyright legislation

T

trade dress

The manner in which a product is "dressed up" to appeal to customers is protectable. This category includes the overall packaging, design, and configuration of a product.

collective mark (def.)

Trademarks or service marks used by the members of a cooperative, association, or other collective group

trademark

any word, name, symbol, or device used to identify the source or origin of products or services and to distinguish those products or services from others.

secondary mark

arises when, over time, consumers start to identify a trademark with a specific product

Copyright law provides...

broad protection for authors and the creators of other types of copyrightable work.

copyright exclusions main -others

cannot protect ideas - facts - titles - list of ingredients

the party that feels its trademark is being infringed on typically sends a _________________________ letter to the other party asking that they quit using the mark.

cease-and-desist

The first step a firm should take to protect its intellectual property is to...

complete an intellectual property audit

The tough part about patent infringement cases is that they are...

costly to litigate, which puts start-up firms and their entrepreneurs at quite a disadvantage.

A company damaged by trade secret theft can initiate...

a civil action for damages in court

To prove infringement...

a copyright owner is required to show that the alleged infringer had prior access to the copyrighted work and that the work is substantially similar to the owner's.

assignment of invention agreement

a document signed by an employee as part of the employment agreement that assigns the employer the right to apply for the patent of an invention made by the employee during the course of his or her employment

intellectual property audit

a firm's assessment of the intellectual property it owns

copyright

a form of intellectual property protection that grants to the owner of a work of authorship the legal right to determine how the work is used and to obtain the economic benefits from the work must be in a tangible form

patent

a grant from the federal government conferring the rights to exclude others from making, selling, or using an invention for the term of the patent

The owner of the patent is granted... (give 3)

a legal monopoly for a limited time temporary, exclusive rights to market their inventions the opportunity to recoup their costs and earn a profit in exchange for the risks and costs they incur during the invention process

business method patent

a patent that protects an invention that is, or facilitates, a method of doing business

Lanham Act

an act of Congress, passed in 1946, that spells out what is protected under trademark law

intent-to-use trademark application (def.) when do obtain benefits? when do you lose benefits?

an application based on the applicant's intention to register and use a trademark Once this application is filed if the owner does not use the mark in business within six months of registration.

trade secret

any formula, device, or compilation of information that is used in one's business and is of such a nature that it provides an advantage over competitors who do not have the information

intellectual property (def.) why is it called "intellectual" property

any product of human intellect that is intangible but has value in the marketplace it is the product of human imagination, creativity, and inventiveness