Intellectual Property
What is the doctrine of exhaustion?
Once an author has sold rights, then cannot prevent any further use by assignee. This is reasons parties license rather than sell copyrighted materials.
5 Ways to Transfer IP
Owner may: 1) Use the IP here and abroad 2) Transfer or assign 3) License another to use 4) Establish franchises 5) Government compulsory licensing
When can an copyright owner recover for infringement?
Provided that: 1) the work was original 2) the infringer copied it or has access to it and 3) the two works are substantially similar
Who gets the priority in patent law?
Recent changes to the US law gives priority to the first person to file a patent application.
What is a trademarks original purpose?
To identify the origin of an item and a certification by marker of its quality. Common Law: Granted right to first use the mark Civil Law: Granted right to first to file
The rights obtained in intellectual property are only effective within the granting state/county, except:
1) Each state in the US is required to give full faith and credit to each other's acts under Article 4, Section 1 of the US Constitution AND 2) Under international treaties or conventions by which countries grant additional rights to citizens of the countries party to such treaties
Two other important patent conventions are:
1) European Patent Convention 2) Patent Cooperation Treaty
What are the exceptions to the copyright protection?
1) FAIR USE - permits limited use of copyrighted material without permission of owner for criticism, comment, news reporting, scholarship or research (providing it is not competition with the work of the copyright owner) 2) Parody
Patents available ONLY for an invention if:
1) Novel - not already known 2) Non-obvious 3) Useful
4 Types of Intellectual Property
1) Patents 2) Trademarks 3) Copyrights 4) Trade Secrets
Three Types of Patents
1) Utility - something having industrial or commercial values 2) Design - protects the APPEARANCE not the function of an item 3) Plant - for a new type of plant NOT REPRODUCIBLE by planting its seeds
What is a trade secret?
A formula, devise, process, method or compilation of information gives the owner an advantage over competitors who do not know it (Coke recipe).
What is a patent?
A grant by the US government that permits the inventor to exclusively "use" and prevent others from using an invention for 20 years. This is exchange for the inventor to publicly disclose the invention.
What is a trademark?
Any word, name, symbol, device or combination used to identify the manufacturer. It must be used as an adjective rather than a noun. It must be distinctive and non-descriptive. Not required but its preferable to affix @.
Where is the power of the US federal government to grant intellectual property rights?
Article 1 Section 8 of the US Constitution. However, trademarks and trade secrets are not mentioned in the US constitution.
What happens if someone tries to use your patent?
If they use it without your permission, the patent holder can sue the user for infringement. The patent holder is entitled to an injunction and damages. However, patent infringement cases are very expensive.
What is the term of a trademark?
Initial term in US is 10 years. You must prove use and if you do, it can be renewed forever.
Intellectual Property
Legally protected forms of intangible property (something you cannot touch like ideas)
What is the most important multi-lateral convention for trademarks?
Madrid Agreement Concerning the International Registration of Marks
Where are trademarks registerable under?
The US Lanham Act created a federal register for national trademarks.
How do you protect your patent internationally?
The most important multi-lateral convention for patents is the Paris Convention for the Protection of Industrial Property. This has key elements of national treatment, right of priority and common rules.
What is a copyright?
The right of the author to control the copying and performing of a work produced in a tangible medium for a period of time. This could be literature, music, drama, movies, etc.
Why would you register with the copyright office?
This is only necessary in a lawsuit to enforce rights.
How long does a copyright last?
Usually life of the author + number of years (in US until 70 years after death or if issued to a company, not more than 120 years)
TRIPS Agreement
WTO agreement on Trade Related Intellectual Property Rights Agreement encourages substantial harmonization of main trading country laws on IP. Key elements are: National Treatment, Transparency of rules and proceedings and most favored nation treatment.
