Basics Of Intellectual Property

transcript

Paul Veravanich

Alison Taub

Corporate Counsel Seminar SeriesFebruary 27, 2007

Overview Of Presentation

Copyright law basics Trademark law basics Patent law basics and contrast

with trade secret protection

Copyright Law Basics

What Is A Copyright?

A form of protection provided to the authors of “original works of authorship”.

The exclusive right of an author to– copy a work,– distribute copies– create derivative works, and– perform or display a work publicly

Is of a limited term

Requirements For Copyright

Work must be original– not copied– meet a minimal threshold for originality

Work may be any work of authorship– books, poems, plays, movies, dances,

ballets, musical compositions, audio recordings, paintings, drawings, sculptures, photographs, software

Work must be fixed in a tangible medium of expression

What Is A Copyright?

Key statutes:– 1976 Copyright Act – Berne Convention

Implementation Act (1988)– Sono Bono Copyright Term

Extension Act (1998)

What Can’t Be Protected By Copyright?

Works that have not been fixed in a tangible form of expression.

Titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents. (Trademark can cover some of these)

Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration. (Patents can cover some of these)

Works consisting entirely of information that is common property and containing no original authorship.

Term Of A Copyright

Life of the author plus 70 years (works created after Jan. 1, 1978)

Works of corporate authorship: 95 years from the date of first publication or 120 years from the date of creation, whichever expires first

Term for works created before 1978 is complex

Works published before 1923 are all in the public domain

Copyright Notice Requirements

Use of a copyright notice was part of previous U.S. statutory requirements– "©“ or "Copyright", followed by the year of

the first publication of the work and the name of the copyright holder

Use of copyright notice now optional– Since 1976, when the U.S. passed a new

Copyright Act that followed the 1886 Berne Convention

– Result of the Buenos Aires Convention of 1910; now superfluous

Other Copyright Concepts

Works made for hire Federal works International rights

– Berne Convention

Remedies– Generally civil law court, but criminal statutes exist

Trademark Law Basics

What Is A Trademark?

A distinctive sign of some kind which is used to uniquely identify an entity’s products and/or services to consumers - an “Indicator of Source”– A trademark comprises a

name, word, phrase, logo, symbol, design, image, or a combination of these

The function of a trademark is to exclusively identify the commercial source or origin of products or services.

What Is A Trademark?

Trademark rights arise out of the use and/or registration of a mark in connection only with a specific type or range of products or services. – Think of Apple Computer v. Apple

Records; United Airlines v. United Parcel;

– It may be possible to prevent the use of a mark in relation to products or services outside the specific range if it is likely that the business would expand into that range.

Trademark Rights

Trademark rights are established through actual use in the marketplace

Benefits of registration A registered trademark confers a

bundle of exclusive rights upon the registered owner– the right to exclusive use of the

mark in relation to the products or services for which it is registered.

Once trademark rights are established in a jurisdiction, these rights are generally only enforceable in that jurisdiction

Types Of Trademarks

Fanciful Arbitrary Suggestive Descriptive Generic Apple

Windows

Trademark Notice Requirements

The ™ symbol may be used when trademark rights are claimed in relation to a mark, but the mark has not been registered

Services marks – SM

The ® symbol is used to indicate that the mark has been so registered.

It is not mandatory to use either symbol, but such notice can improve available remedies in the event of infringement

Either symbol is typically placed in the top left- or right-hand corner of a mark.

Other Trademark Concepts

Secondary Meaning Abandonment Genericide Naked Licensing

Patent Law Basics and Contrast With Trade Secret Protection

What Is A Patent?

Exclusive right for inventions– Right to exclude others from

making, using or selling a patented invention

– Not a right to practice invention

Limited time duration– Twenty years after filing date

Public Policy Considerations

Objectives of a patent system– Reward inventor for skill and labor– Stimulate further efforts in the field– Secure to the public immediate knowledge

of the invention, and unrestricted right to use after patent expires

Contrast with trade secret law Contract theory

– Limited monopoly in exchange for complete disclosure of invention

Reasons To Get A Patent

Competitive advantages Additional economic value Intangible value

Requirements For Patentability

Utility (§ 101) Novelty (§ 102)

– Anticipation by prior art– Loss of right to patent invention

Non-Obviousness (§ 103)– Secondary considerations

Sufficiency of Disclosure (§ 112)– Written description– Best mode

Elements Of A U.S. Patent

Bibliographical data Specification

– Drawings– Background– Invention Summary– Detailed Description of

Preferred Embodiment

Claims

Process Of Obtaining A Patent

Identification Patent prosecution

Identifying A Patentable Invention

Conception Review committee Communicate with

patent counsel

Drafting A Patent Application

Meeting between inventor and patent counsel

Drafting of application Inventor review

Prosecuting The Patent Application

Process Time Cost

What Is A Trade Secret?

California Uniform Trade Secrets Act, Civil Code § 3426.1:

“Trade secret” means information, including a formula, pattern, compilation, program, device, method, technique, or process, that:

– Derives independent economic value, actual or potential, from not being generally known to the public or to others who could derive economic value from its disclosure or use; and

– Is the subject of reasonable efforts under the circumstances to maintain its secrecy.

Examples Of Trade Secrets

“Trade secret” means information, including a formula, pattern, compilation, program, device, method, techniques, or process ….

Traditional examples of information that may constitute a trade secret

“Negative information”

Maintain Secrecy

Trade secrets must be the subject of “reasonable efforts” to maintain secrecy: Cal. Civ. Code § 3426.1(d)(2)– A “trade secret” … “is the

subject of efforts that are reasonable under the circumstances to maintain its secrecy.”

Secrecy Issues

Websites

Patent Disclosures

Articles

SEC FilingsSEC Filings

Plant ToursPlant Tours

SpeechesSpeeches

Trade ShowsTrade Shows

Comparing Patents & Trade Secrets

Trade Secret PatentTerm Potentially unlimited Twenty years after filing

Disclosure Destroys protection Necessary for protection

Requirements Reasonable efforts to maintain secrecy

File with USPTO within one year of sale or publication

Scope of protection

Any technical or business information or data of value to a competitor if known

Technical apparatus or methods, compositions of matter, business methods

Reverse Engineering

Not actionable Actionable as infringement

Thank You

Any questions?

O’MelvenyO’Melveny&Myers

O’Melveny & Myers LLP610 Newport Center Drive, 17th FloorNewport Beach, CA 92660(949) 760-9600www.omm.com

Paul Veravanich(949) 823-6983pv@omm.comveravanich@yahoo.comhttp://www.linkedin.com/in/veravanich

Alison Taub(949) 823-6979ataub@omm.com

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Basics Of Intellectual Property

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