Understanding Intellectual Property Protection: Patents, Copyrights, & Trademarks, Study Guides, Projects, Research of Electrical and Electronics Engineering

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Introduction to Patents and Other Forms of Intellectual Property The information contained herein is for academic discussion only, and is not legal advice and is not intended to reflect the views of any entity or person Four Primary Forms of IP Protection — Intellectual Property System Four Primary Forms of Protection — Patents — Copyrights — Trade Secrets — Trademarks Inventorship — Inventor — one who conceives of patentable subject matter falling within the scope of the claim(s) of the patent application — Conception — The formulation in the mind of the inventor — of a definite and permanent idea — of the complete and operative invention as it is thereafter to be applied in practice. — Joint Inventors — One who makes suggestions of practical value that assists in working out the main idea and making it operative, or — Contributes an independent part of the entire invention, which is united with the parts create by the other inventor(s) and creates the whole — One who merely reduces to practice is not a joint inventor — First-to-Invent Standard in US: — In the U.S., the first to conceive with diligent reduction to practice wins – good idea to keep “inventors notebook” — Foreign countries - First-to-File Standard Novelty — A person cannot obtain a patent if, prior to the date of invention, the invention was already: — known or used by others in this country (includes U.S. territories), or — patented or described in a printed publication in this or a foreign country. — The date of invention is presumed to be your filing date, but if you have documents to prove otherwise you can submit a declaration to try to obtain an earlier filing date Losing Patents Rights —Will not be entitled to a patent if, more than one year prior to the date of the filing date of the patent application, — the invention was patented or described in a printed publication (paper, website, article, etc.) in this or a foreign country, or — in public use or on sale (including offers for sale) in this country, more than one year prior to the date of the application for patent in the United States — Includes actions of applicant and others! — Most foreign countries have no such “one year grace period” - absolute novelty is required Patent Ownership — Ownership is distinguished from inventorship — The inventors are the initial owners of the patent, but patent ownership is transferable — Contracts may be entered into in which the inventor agrees to assign his/her invention to a hiring party in exchange (i.e., consideration) for employment, or in exchange for money — Distinguished from copyright ownership! See below Example: — Assignment agreements are often a provision in an employment contract, or if not a separately executed patent assignment agreement — Sample clause: “In consideration of employment, employee hereby assigns to the employer all inventions invented by the employee within the scope of his/her employment.” — The scope of the assignment may vary in scope from state to state: — Scope of employment — Related to business of employer — Anything invented during employment The “hired to invent” doctrine — If no agreement exists, then the “hired to invent” doctrine governs. — The doctrine says that even if there is no contract, if the inventor was hired to invent the invention, regardless of whether the inventor is an employee or independent contractor, the hiring party owns the patent. Deriving Value from Patents: Startup companies — Goal: build a company around a patent or several patents — Venture capitalist (VC) fundraising — VCs mostly concerned about management team, business plan, and technology/services etc. — Sophisticated VCs will check out your patent portfolio — Typically will not sign NDAs – advantage to filing the application before disclosure (absolute novelty bar issue) — Well-funded startups are typically willing to spend more on patent preparation and prosecution due to importance of the patent. — Not likely to have the money to litigate Deriving Value from Patents: Corporations — Obtain ownership to patents by virtue of employment of individuals (IP assignment contract) — Many companies have incentives and rewards programs — High volume approach (hundreds or thousands of applications filed a year) — Boost Company Stock value — Defensive purposes — Offensive purposes — Try to obtain patent services at very low cost, fixed fee arrangements — Will license or litigate, depending on business reasons Deriving Value from Patents: Litigation — Some companies have only patents as assets, and do not produce or sell any commercial products — After cease and desist, or offer to license — Issues – infringement, validity, damages amount, antitrust, etc. — Discovery Costs — Request for Production of Documents — Interrogatories — Depositions Copyright ownership — For copyright, if no complete IP assignment agreement, then the hiring party owns it if it is a work made for hire, which is: — A work prepared by an employee within the scope of his/her employment — A work that falls in a specific list (which arguably and usually does not include software) and the parties agree that it is a “work made for hire” — Beware – if not careful, may result in split patent/copyright ownership! Relevant Factors to Distinguish Employees From Independent Contractors — Right to control how product is accomplished — Skill of hired party — Source of tools and instrumentation — Location of work — Duration of relationship — Right to assign other projects — Discretion of hired party over working hours — Payment method — Regular business of hirer — Employee benefits paid — Tax treatment Copyright and Fair Use- §107 — Notwithstanding the owner’s rights under copyrights, the FAIR USE of copyrighted work for purposes such as criticism, comment, news reporting, teaching, scholarship or research is not an infringement. Among the factors considered: — The purpose and the character of the use, including whether the use is of a commercial nature — The amount and substantiality of the portion used, and — The effect of the use upon the potential market for or value of the copyrighted work. U.S. Trademark System — Trademarks are used to distinguish the owner of the mark’s goods and services from those of others. — A trademark may be: — a word (e.g. Xerox, Apple) — name (Hilton, Goodyear, Dell — symbol (Nike swoosh) — shape (Bass’s triangle), trade dress/packaging (Gateway black and white spots), sound or chime (e.g. Olympic song, Cingular chime, gong from Law and Order) — Reduces consumer confusion and search costs, prevents unethical competition (palming off), and allows a person to build up investment in goodwill Key Trademark Concepts — Distinctive — Capable of identifying source — Does not confer competitive advantages — Cannot TM functionality — In U.S., rights come from use (or intent to use). — Rights against those who reasonably know about use — Rights against other uses that cause a likelihood of confusion or dilution — No expiration date, as long as there is continued use of the mark — Can sue in federal and state courts — Federal registration provides notice advantages Protection Spectrum of Trademarks — Generic (asprin, car) — Entitled to no protection — Descriptive (“Crunchy” “Light Beer”) — Protection if it has secondary meaning (indication of source or origin; acquired with long-term use, advertising, & large sales; prove it is a “brand” in consumers’ minds (survey relevant consumer population) — Suggestive (Ivory, Duracell) — Immediate protection — Arbitrary or Fanciful (Xanax, Apple) — Immediate protection