Download - 11 03 22 415 515 Intellectual Property Overview S1(1)

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2011 David C. Robertson. Not be used or reproduced without permission.

Intellectual Property

Professor David RobertsonThe Wharton SchoolMarch 22, 2011

2011 David C. Robertson. Not be used or reproduced without permission. 2

What is strategy?

the essence of strategy is choosing to

perform activities differently than rivalsdo.. [but]a company can out perform

rivals only if it can establish a differencethat it can preserve

Michael Porter

Harvard Business Review, 12/1996


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How can we preserve this difference?

One way: by establishing and maintaining a monopoly on an

important tool to promote sales---intellectual property. Such rights

are government sanctioned monopolies which help add the fuel ofinterest to the fire of genius, in the discovery and production of new anduseful things." Abraham Lincoln, Second Lecture on Discoveries andInventions (Feb. 11, 1859).


What are the intellectual properties?

Origin of Rights Prerequisites toProtection

Scope of

ProtectionLife Test for

Infringement

Trademark,

Trade Dress, or

Service Mark,passing off

Adoption & Use,consumerprotection laws

Use to identify anddistinguish business,goods or services

Words, names,symbols, or otherdevices

As long as propertyused

Likelihood ofconfusion, mistakeor deception

Trade Secret Investment of timeand money

Recognition of valueand utility

Confidentialsubject matter

Life of confidentiality Derivation

Copyright Creation of worksof authorship

Originality-Registration andCopyright Noticerequired if publiclydistributed

Works ofauthorship

Variable-on the order of100 years or longer; lifeof author plus 70 years

Copying

Design Patent Grant by FederalGovt. onapplication byInventor

New, original andornamental subjectmatter

Ornamentaldesign for articleof manufacture

14 years from date ofgrant

Designs look alike toeye of ordinaryobserver

Utility Patent Grant byGovernment onapplication byInventor

New, useful, andnon-obvious subjectmatter

Useful process,machine, article ofmanufacture, orcomposition ofmatter

17 years from date ofgrant or 20 years fromdate of application

Manufacture, use orsale in U.S. ofclaimed invention

DIFFERENCES BETWEEN TRADE SECRETS,

PATENTS, TRADENAMES, TRADEMARKS, AND COPYRIGHTS

Source and : James G. Conley, Kellogg School of Management, Northwestern University. Used with permission.

Life

ofproperty

protection

Functionality

ofprotection


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Trademarksthe right to clearly identify source

1. What are trademarks?

Used by a manufacturer or merchant to:

IDENTIFY GOODS & DISTINGUISH THEM from competitive products.Can last indefinitely and as a complement to technology (e.g., DOLBY).

Law can be summarized as "Likelihood of Confusion by Consumers"

WordNameSymbolDeviceColorSmellGesture

or any combination


Trademarks

How should they be used?

Always use capitals/upper case for the whole trademark(e.g., KLEENEX, not Kleenex) when referring tocompetitors trademarks (leading caps or logo if your own)

Always use as an adjective (make sure there is a noun)when referring to your mark (e.g., a JEEP car not aJEEP).

Do not mis-use your mark on labels ( has a legal meaning check each country). If in doubt use sign.

USE IT (RIGHT) OR LOSE IT

This applies to external & internal correspondence


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A gift from what store?

Source: James G. Conley, Kellogg School of Management, Northwestern University. Used with permission.


The mark consists of a shade of blue often referred to as robins-egg blue


Serial Number 75544375

Filing DateAugust 24, 1998

RegistrationNumber

2359351

Owner (REGISTRANT) Tiffany and Company CORPORATION NEW YORK 727 Fifth Avenue NewYork NEW YORK 10022

Description ofMark

The mark consists of a shade of blue often referred to as robin's-egg blue which is

used on boxes. The matter shown in broken lines represents boxes of various sizes

and serves to show positioning of the mark. No claim is made to shape of the boxes. Thedrawing is lined for the color blue, and color is a feature of the mark.

Type of MarkTRADEMARK. SERVICE MARK

RegisterPRINCIPAL


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The mark consists of the color chocolate brown, which is the approximateequivalent of PANTONE Matching System 462C, as applied to the entire surface of

vehicles and uniforms. The mark consists of the color brown alone.

IC 039, US 100 105. G & S: delivery of personal property by air, rail, boat and motor vehicleIC 039, US 100 105. G & S: motor vehicle transportation and delivery of personal property.

What company?



Who owns the color pink in mobile telecom?



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Who owns the color pink in mobile telecom?



Other types of trademarks

The Garmin GPS spinning globe logo

The Yamaha WAVE RUNNER rooster tail


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Other types of trademarks

The THX logo theme consists of 30 voices over seven measures,starting in a narrow range, 200 to 400 Hz, and slowly diverting topreselected pitches encompassing three octaves. The 30 voices

begin at pitches between 200 Hz and 400 Hz and arrive at pre-selected pitches spanning three octaves by the fourth measure. Thehighest pitch is slightly detuned while there are double the number ofvoices of the lowest two pitches.

The Garmin GPS spinning globe logo

The Yamaha Wave Runner rooster tail



THE MARK CONSISTS OF THE EXHAUST SOUND OF APPLICANT'S

MOTORCYCLES, PRODUCED BY V-TWIN, COMMON CRANKPINMOTORCYCLE ENGINES WHEN THE GOODS ARE IN USE.

To the Assistant Secretary and Commissioner of Patents and Trademarks

Washington, D.C. 20231

Harley-Davidson, Inc., a Wisconsin corporation

Milwaukee, WI 53208

Sir:

The above-identified applicant has adopted and is using the trademark described in the accompanying drawing formotorcycles in International Class 12. Applicant requests that said mark be registered in the United States Patentand Trademark Office on the Principal Register established by the Act of July 5, 1946.

The trademark was first used in connection with the goods in International Class 12 by applicant's predecessor atleast as early as 1930; was first used in connection with the goods in International Class 12 in interstate commerceat least as early as 1930; and is now in use in such commerce. The mark consists of the exhaust sound of a Harley-

Davidson motorcycle.

The sound mark is emitted when the goods are in use, and three specimen recordings which incorporate the soundmark as actually used are presented herewith.

.

HARLEY-DAVIDSON, INC. Dated: 17 January, 1994 By: /s/Timothy K. Hoelter Vice President and General CounselDocket No. 43210/9695

APPLICANT: Harley-Davidson, Inc.ADDRESS: 3700 West Juneau Avenue Milwaukee, WI 53208

FIRST USE: At least as early as 1930

FIRST USE IN INTERSTATE COMMERCE: At least as early as 1930

GOODS: Motorcycles in Int. Class 12 The mark consists of the exhaust sound of a Harley-Davidson motorcycle.

THE MARK CONSISTS OF THE EXHAUST SOUND OF APPLICANT'S MOTORCYCLES, PRODUCED BY V-TWIN,COMMON CRANKPIN MOTORCYCLE ENGINES WHEN THE GOODS ARE IN USE.


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Trade secrets

Must be secret, identifiable, and substantial

1. What are trade secrets?

Confidential information or knowledge (Know-how)of a technical or commercial nature that is not knownor easily accessible, so that part of its value consistsin the lead time that is gained by the person who hasaccess to it.

Examples: recipes, formulae, technical processes,customer lists, or field test results

2. How are they obtained?

No registration but must be kept secret and ownermust take clear steps to ensure this is so.


Trade secrets (contd)

3. How should they be used?

Label and treat them clearly as secrets (CONFIDENTIAL)

Use warning notices stating that it is not legal to use or disseminatethe information

Avoid their coming into public domain

Restrict access within the company

Maintain information separate and secure from everydaydocuments or working papers

Written confidentiality and non-compete agreements with

employees or third parties are crucial, including need-to-know onlybasis and duty to maintain documents separately and securely

4. How are they enforced?

Breach of duty of confidentiality must be proven (often difficult!)


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Trade secrets (contd)

Example: Jose Ignacio Lopez de Arriortua leaves GM for VW

In 1993, Lopez leaves GM for VW, taking with him a 3,350 pageprintout listing 60,000 parts, their suppliers, prices, and deliveryschedules for GM Europe

GM files lawsuit in March 1996, charging both copyright and tradesecret infringement

In 1997, VW and GM settle out of court. VW agrees to pay GM$100 million, to sever all ties with Lopez, and to purchase $1Billion in GM parts over the next 7 years


Copyrights

1. What are copyrights?

Original works including art, literature, music, computerprograms

Give exclusive rights to prohibit copying and derivation for70 to 120 years or longer.

2. How are they obtained?

Automatic -- arise on creation by author

Registration -- useful for proving copying, for claimingattorneys' fees (USA) & ticket to Federal Court


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Copyrights (contd)

3. How should they be used?

For Co. ABC Ltd., use a mark and add year of creation (e.g., " ABCLtd., 2000) and years in which work was modified.

4. How are they enforced?

Litigation --Actual copying or derivation must be proved (often difficult !)

5. Dangers !

Diagrams/drawings/artwork/photos/software from sub-contractors/Advertisements/brochures: make sure you are free to change and re-use. Get written contracts and waivers of rights


Utility patents

1 What are utility patents ?

2 Creating a patent what is managements role?

3 The eight deadly sins


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1. What are utility patents?

Basic principles of every national patent system:

Patents do not guarantee a right to practice the invention freely butonly to excludeothers from practicing it without a license.

National grants of exclusive rights to make, use, sell, import or offer for sale.


1. What are utility patents?

Form: 3 Parts:! Specification! Drawings! Claims = the most important part!

5 substantive requirements:i. INDUSTRIAL APPLICABILITY ("utility")ii. NOVELTY (usually absolute world-wide)iii. INVENTIVE STEP ("non-obviousness")iv. SUFFICIENT DISCLOSURE ("enablement")v. BY THE "INVENTOR" (i.e., the true inventor?)


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(i) Industrial Applicability (utility)

Naturally occurring products are not patentable. Their methodsof extraction may be.

Purely mathematical algorithms or natural discoveries are notpatentable. Utility or intervention by manis needed.

DNA sequences? Methods of doing business? Law is intransition.

In most European countries methods for therapeutic treatmentof the human or animal body are not patentable (not so in theU.S.).

Software patents are now increasingly accepted

E=mc2


(ii) Novelty (worldwide and absolute*)

The invention must not have been made available to thepublic in any form, in any country, before the application wasfiled (e.g., printed or oral publications; trade shows; on-salebar/offers for sale).

Prior art is the state of the art before the invention. Prior artis global and eternal 6thcentury BC Chinese woodcutpictures can (and have been) considered prior art!

SEARCH PRIOR ART DATABASES (e.g., www.uspto.gov) CAREFULLY


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(iii) Inventive Step (non-obviousness)

In order to be validly patented, the invention must not have beenobvious to a person of ordinary skill in the relevant art at the dateof filing.

What is obvious once the patent application is published?

What is the skill level of one skilled in the relevant art?

Obviousness is one of the most difficult issues in patent law.

Secondary indicators of non-obviousness: unexpected results,failed attempts by others, commercial success etc.


(iv) Sufficient Disclosure (enablement)

Enabling disclosure (e.g., recipe in a cook book)

Best mode (USA)

Duty of Candor--U.S. law requires the inventor and attorney todisclose all material prior art known to them (patents, articles,sales materials, etc.) to the U.S. patent office. This is asubjective test!

Last weeks legislation weakened the ability to challenge apatent based on insufficient disclosure


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(v) Application by the Inventor or Sponsor

Who gets the patent?First to invent (law changed last week to harmonize US with the rest ofthe world)

Who is the "inventor?

Who is the sponsor/applicant?

Who owns the invention?In the US, the inventor, who must assign his/her rights

FAILURE TO LIST AN INVENTOR CAN BE DAMAGING


2. Creating a patent

CLAIMS are most important part of the patent, as they define the monopolyrights granted.

! The independent claims are the basis for the patent application. They aremodified by the dependent claims

! The independent claims should be as broad as possible. The patent office hasthe duty to grant the widest possible patent permitted by the prior artANDrequested by Applicant. If the independent claims are judged to be obvious or notnovel, the patent may still be rewritten around one or more dependent claims

! While the final language should be worked out together with a lawyer, the initialdraft can be done by the innovation team

The inventors responsibility is to:

! Make sure that they are getting the best advice from counsel! Ensure the claims as broad and general as possible!Attempt to create inventions that do not infringe on the draft claim, then rewrite the

claim so that the hypothetical invention would infringe

! Make an investment decision about where and how to protect the invention

What is the inventors role?


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3. The Eight Deadly Sins of Inventors

Source and European Patent Office

8. Believing that just because he has a patent, he is free to make, use & sell his invention.