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INTELLECTUAL PROPERTY
LAW & LITIGATION
OVERVIEW
Jason S. Miller
407-418-6263
Jason [email protected]
February 16, 2012
©Jason S. Miller 2012, All rights reserved
What is Intellectual Property (IP)?

Intangible Property Rights including, for example, ideas, inventions and other
innovations, expression, indications of origin and confidential information




Patent
Copyright
Trademark
Trade Secret (protected by State law)

Almost all aspects of technology, innovation, and/or works of authorship
(including software) or art are addressable as IP

IP rights arises from Operation of Law

In U.S., Constitutional Basis – Article I, Section 8, Clause 8:


“To promote the Progress of Science and useful Arts, by securing for limited Times
to Authors and Inventors the exclusive Right to their respective Writings and
Discoveries”
Trademark rights arise from the Commerce Clause
Patents, Trademarks & Copyrights
Patents
Trademarks
Copyrights
Type
Inventions
Machines, methods, composition
of matter, improvements
Any name, symbol, device or
combination that
-identifies source
-distinguishes goods and services
from another
“Original expression”
“Fixed in tangible medium”
Not Protected
Not novel, obvious, not useful (no
utility)
Functional
Does not exclusively identify
Ideas, Facts, Methods and
systems (patents)
Idea – expression is protected,
not idea
When patent issues
From use; Protection can last
forever and can also disappear
since protection is tied to use
From time fixed in a tangible
medium
Fall within scope of the patent
claims
Likelihood of confusion
Copying with Access and
Substantial Similarity
When
Protected
Infringement
What is a patent?

Legal document that defines an invention and confers a right upon
the owner


Basic Philosophy


Similar to a property deed
Limited Monopoly

Bargained for exchange with government to promote innovation

Gov’t granting the right to exclude others from making, using, offering for sale, selling
and/or importing what is claimed
 A negative right of exclusion only
New! Leahy-Smith America Invents Act (AIA)


Enacted September 16, 2011
First major change to U.S. Patent laws in over 60 years
What is a Patent (cont.)?

In the U.S., Granted by the U.S. Patent & Trademark Office (USPTO)





Part of the Commerce Department
Protects: Manufactured items, Equipment, Processes, Compositions and
Improvements to the above
Term: 20 Years From Filing or priority date – extensions available based on
PTO delay
Territory: United States and its territories
Rights Arise: Upon issuance of a patent, arising from a patent application
filed prior to public use, disclosure or sale
AIA changes to existing law

Switch to a “first-to-file” System


Prior User Rights


New definitions of prior art


Post-grant opposition proceedings

Pre-grant submission of prior art

Derivation
Supplemental examination
Tax strategy patents no longer
allowed
Patent marking and false marking
claims

Best mode requirements

PTO fees

Joinder
Patentable Subjects
Systems, Devices & Other Manufactured Items
Such as manufactured equipment, e.g., electronic devices or circuits,
semiconductors, systems configured to perform a function
Processes or Methods
Such as manufacturing processes or
methods of doing something—may be
implemented as software or as a business
method
Materials/Composition of Matter
Chemical, Genetics, drugs, compounds, etc.
Patentability Requirements
Novelty


Does not exist in the prior art; Not previously disclosed
OK if Modification of an existing product/process, or use of something “old” in new/different
way
Usefulness


Utility - Performs a useful function, does it work?
An easy requirement to meet in mechanical and electrical arts. Sometimes difficult in
chemical and life sciences – “I have a new compound, I just don’t know what it does yet” –
therefore, no utility
z
Non-obviousness



A knowledgeable but relatively unimaginative person working in your field would not have
been led directly to the invention in light of the available information at the time of invention.
This is difficult to describe in general, as lawyers the focus on non-obviousness is generally
based on prior case law for guidance.
A rejection under obviousness generally involves “combining” one or more references to meet
all of the limitations and elements of the claimed invention
Anatomy of a Patent

Front Page basics









US No. 7,299,887
Title
Filing date v. Issue Date
Assignee = Owner
Related App. Data
Technology Class Codes
Prior art References
Abstract
Front Page Illustration
Anatomy of a Patent

Specification







Must set forth the precise invention for
which a patent is solicited
Must “teach” one skilled in the art how
to practice, make and recreate the
invention
Must describe completely a specific
embodiment of the invention
Must explain a mode of operation
whenever applicable
Detailed description typically refers to
drawings
Must set forth the best mode
contemplated by the inventor for
carrying out the invention
Must conclude with at least one claim
Anatomy of a Patent

Claims


Must particularly point
out and distinctly claim
subject matter which
applicant regards as the
invention
The portion of the patent
which defines the scope
of legal protection and
around which questions of
infringement will be
judged by the courts
Anatomy of a Patent


Claim 1 reads:
A single cone bit with offset axis and composite cones,
the single cone bit comprising: a head body and a cone;
a head journal at lower end of the head body for
rotatablely connection with the cone; said cone section
having a shape of composite cones, wherein the outer
circumference of the cone is composed of from a back
face of the cone to a top of the cone an extended gage
surface, an outer cone surface and a main cone surface,
forming the cone section in a shape of composite cones,
a plurality of cutting elements mounted onto each cone
surface, the said main cone surface having a negative
cone surface, and an angle .epsilon. formed by
generatrix of the main cone surface and centerline of
the cone rotation being equal to or less than 90.degree.
(i.e..epsilon..ltoreq.90.degree.), the axis of the bit being
offset from the axis of the cone and head journal,
wherein; a gage pad arranged on a side of head body
opposite to the offset direction of the head journal, the
opposite side of the gage pad provided with the junk
slots, and jet ports arranged at a lower bevel of the
head body.
What is a Copyright (©)?

An original work of authorship, fixed in a tangible
medium of expression.

See, 17 USC 101 et seq.
What is an “Original Work”?

Any work that was independently created (not
copied) and that contains a “modicum of
creativity”. Feist Publications, INC. v. Rural Telephone Service Co., 499 U.S. 340
(1991)

The exact meaning of this phrase is open to debate
however the threshold is extremely low.
What is “Fixed in a Tangible Medium”?


This phrase means that the work in question must be set in a
form in which it can be perceived either directly or with the aid
of a device. For a literary work this could be when it is first
created on a computer or paper. For a musical work it could
be either the phonographic recording or the sheet music.
Things that are not fixed in a tangible medium are not subject
to copyright protection, i.e. ideas, procedures, processes,
systems, methods of operation, concepts, principles or
discoveries.
Types of works subject to protection

Generally include:




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

literary works;
musical works;
dramatic works;
pantomimes and choreographic works;
pictorial, graphic, and sculptural works;
motion pictures and other audiovisual works;
sound recordings;
architectural works.
What cannot be protected?

Facts or any idea, procedure, process, system, method of operation, concept,
principle, or discovery, regardless of the form in which it is described,
explained, illustrated, or embodied in such work;

Words and short phrases such as names, titles, and slogans;

Typeface designs;

Lists of ingredients;

Blank forms that do not themselves convey information;

Works consisting entirely of information that is common property containing no
original authorship such as standard calendars, height and weight charts, tape
measures and rulers, schedules, and tables.
What does a copyright give you?

Exclusive right to do and authorize:
 Reproduction
 Derivative
works
 Distribution
 Public
of the work
of work by sale or transfer or license
performance of work
 Display
of work in public
Limitations on a Copyright?

Fair use: allows for limited copying of a work for
purposes


Very fact dependent
Examples:
 Criticism
 Comment
 News reporting
 Teaching
 Scholarship
 Research
How do you determine if something is
Fair Use

Consider:

Purpose and character of the use

whether the use is of a commercial nature or is for nonprofit educational
purposes

Nature of the copyrighted work

Amount and substantiality of use

Effect upon the value of the copyrighted work
Other Limitations on a Copyright











Libraries and archives
First sale doctrine
Record rental
Software rental
Performances and displays
Secondary transmissions
Ephemeral recordings
Pictorial, graphic, sculptural works
Sound recordings
Musical recordings - compulsory
licenses
Jukeboxes - negotiated licenses








Computer programs - Essential step
in utilization of program or Archival
(backup) copy allowed
Public broadcasting
Satellite retransmissions –
superstations
Architectural works
Reproduction for blind and
disabled
Satellite retransmission – local
Reproduction for blind/ people
with disabilities
Satellite retransmissions within local
markets
How to Obtain Copyright Protection


Copyright Protection attached upon creation. There is
no need to register a work, but may do so.
Registration is required, however, to enforce rights
and provides additional benefits such as statutory
damages for infringement.
How do you register a copyright?

Application must be submitted to the Copyright Office of the Library
of Congress.


Note: Patents and federal trademark registrations are with the United
States Patent and Trademark Office (USPTO)
Contents of Application:

Completed application form







TX – Non-dramatic literary work
VA – Visual arts work
PA – Performing arts work
SE – Sound Recording work
SR - Serials
Deposit materials
Fee
Information needed to complete
Application







Name and address of applicant
If the work is “made for hire”, a statement of such or if
the applicant is not the author then a statement of how
the applicant obtained ownership
Title of work
Year of creation
Date of first publication, if any
Identification of the work as a derivative or compilation
Other relevant information
Deposit Materials

Unpublished work


Published work


One complete copy as published
Contribution or collective work


Two complete copies of best edition
Work first published outside US


One complete copy
One complete copy of best edition
Some exceptions apply

For example, for computer programs a print out of the first and
last 25 pages is ok
Who owns a Copyright?



Author
Authors, if joint work
What about employees?

“Work made for hire” doctrine
work prepared by an employee within the scope of his or her
employment; or
 work specially ordered or commissioned for use as a contribution
to a collective work, if the parties expressly agree in a written
instrument signed by them that the work shall be considered a
work made for hire


Take away – get an assignment up front!
What is the Term of a Copyright?

In the U.S.: the life of the author plus 50 years,
unless the work is anonymous, pseudonymous or a
work-made-for-hire
 then,
the lesser of 75 years from its publication or one
hundred years from its creation.
Copyright Notice




Prior to 1978 failure to use a copyright notice on your copyrightable
materials was fatal to your copyright and placed the material into the
public domain.
Omissions between January 1, 1978 and March 1, 1989 could be cured
under certain circumstances.
Since March 1, 1989, use of a copyright notice has been optional, but
failure to mark your materials can provide infringers with an "innocent
infringer" defense, preventing you from collecting actual or statutory
damages for any infringing act committed before the infringer received
actual notice.
Example of Proper Notice:
 “© Your Name 20XX”
 “© Your Name 20XX, All rights reserved.”
Copyright Infringement

What is it?

17 USC 501 et seq. – Anyone who violates the exclusive
rights of the owner by making an unauthorized copying,
distribution or derivation of a work


Rights of owner set forth in 17 USC 106
Kinds of Infringement
Direct
 Contributory
 Vicarious
 Liability of states

Pre-filing considerations

Where to file?
 Federal
District Court: Exclusive, original jurisdiction for
Patent and Copyright cases. 28 USC 1338(a)
 Note:
 Venue:
could have an exception for counterclaims
Where the defendant resides or in any district
where the defendant does business.
Pre-filing considerations (cont.)





Jury or non-jury
Nature and type of work involved
Extent of copying
Parties involved
Registration certificate in hand?
 Certificate
of registration is now a procedural
prerequisite
 If registration is sought but refused serve complaint on
Copyright office
Proving your case

Exclusive rights
Ownership
Access by defendant
Substantial similarity of work
Damages, if any

Should you use an expert?




 Depends

Should you use surveys?
Defenses

Fair Use



See above
Must be pled as an affirmative defense
For computer programs



Implied License


Can be orally granted for non-exclusive grant
Elements








Right to make archival copy
Right to dissect programs to determine functional interface
Author creates for another
Author delivers the work
Author intends that party distribute and/or copy
SOL (3 yrs.) and/or laches
Lack of Notice
Fraud on the Copyright Office
Misuse
Parody

Satire not necessarily a defense
Remedies

Damages- at option of copyright owner:

Actual damages and profits made by infringer that are not taken into account in
calculating actual damages.
 To establish an infringer’s profits, the copyright owner is required to present
proof only of the infringer's gross revenue, and the infringer is required to
prove his or her deductible expenses and the elements of profit attributable
to factors other than the copyrighted work
OR

Statutory damages of $750 to $30,000 for each infringement (court’s discretion
as to actual amount). Can be increased to $150,000 per infringement if the
infringement was committed willfully.
Other Remedies


Injunction
Seizure, impoundment and destruction of infringing
goods

Criminal offenses

Attorney’s fees and costs
What is a Trademark (TM, SM, ®)?
A Word
A Logo
A Device
A Slogan
A Package Design
A Personal Name
A Sound
A Scent
A Color
A Shape
A Building
A Numeral
JUST DO IT
that identifies a specific product and distinguishes
it from others in the marketplace.
Functions of a Trademark
-
Indicates the source or origin of goods or services
-
Assures consumers of the quality of goods bearing the mark
- Creates business goodwill and brand awareness
Trademark v. Tradename

Trade name: identifies a company or business; for example,
The Coca-Cola Company

Trademark: identifies the goods or services of that company; for example,
Diet Coke

Note: Just because the secretary of state's office advises that a corporate name is
available, that does NOT mean that the same name is available as a trademark or
service mark.
How are Trademark rights obtained?
Rights are obtained either:
- By use; or
- By registration
Common Law Rights v. Registration
Common Law



Federal Registration
•
Valid in the whole country

Priority based on date of application
Protection generally begins only after
the product or service is actually
available for sale on the market.

“Intent to Use” application allows
applying for a mark before using it
Rights can be lost after deciding on a
mark and before bringing a product
to market if someone begins
commercial sales first.

Gives trademark owners the ability to
expand at their own pace
Bound by the geographic area in
which the product or service is
marketed.
Selecting a Mark

Auto
Mechanic
Distinctiveness Spectrum
Blu-Ray
Selecting a Mark
Two Common Errors:
 Selecting
 Failing
descriptive marks
to “clear” the mark
Selecting the Right Trademark

The Strongest Type
 An

invented word: GEICO
The Weakest Type
 Immediately
descriptive: Quality Cars
Clearance of the Mark – WHY?

To reduce the likelihood of infringement

To gauge the strength of the mark
 Weak?
 Dilute?
Trademark Availability
A trademark is not available if:


The mark or a confusingly similar mark is already
federally registered or is the subject of a pending
federal registration (assuming that the application is
ultimately accepted); or
The mark or a confusingly similar mark is already
being used in the same market in connection with
similar goods or services.
How are Trademark rights obtained?
Rights are obtained either:
-
By use; or
By registration:
 Majority
– first to file vs. first to use
 Some of the major commercial countries – first to file





France
Germany
Japan
Taiwan
Spain
 United

States – based on use
Does allow for intent to use applications though
Select Territories for Registration





Trademark rights are territorial.
Some regional systems exist:
 Community Trade Mark (Europe 27 member states)
 OAPI (Africa)
 Madrid Protocol – International filing system, but still depends on
approval at the national level by the 57 member countries
Select registration in countries in which the company will manufacture,
distribute and/or license its mark
United States – Trademark rights extend only to the areas in which a
market presence has been established.
United States – Presumption of exclusive rights through federal registration
Application Process In United States



Apply
Respond to Issues (if any)
Notice of Publication

30 day window for third parties to oppose registration

Registration
Maintenance

Most US states have similar procedures but can vary

Maintaining a Registration

Continued Use

Renewals
Declaration of Use between year 5 and 6
 Declaration of Use and Application for Renewal between
year 9 and 10 and each 10 years thereafter


Policing
-
-
Third parties’ unauthorized use
Improper use by your own company
Improper use by licensees
Policing: Enforcement against Infringers

Finding the bad guys

Subscribe to Watch Services

Internet Searches
Trademark Marking Requirements



Proper trademark notice will aid in collecting damages from infringers and
prevent the loss of a trademark due to misuse.
Examples of Proper Marking Include:

"Registered in the U.S. Patent and Trademark Office“

"Reg. U.S. Pat. & Tm. Off."

® for registered marks

™ for unregistered marks
Improper marking for registered marks will prevent you from collecting
profits or damages from an infringer unless they had actual notice or
infringement.
Presentation of Trademarks



All capitals:
NIKE shoes
Initial capitals:
Target® stores
In quotation marks:
“Snickers”® candy bar



Italics:
Goodyear® tires
Boldface:
Cisco® phones
Different color:
McDonalds® restaurant
Trademarks Should Not Be Altered




Trademarks should always be presented in the same
manner; be consistent
No plurals (no: “two cokes”, “yes two coke soft
drinks”)
Do not use as verbs (please Xerox this)
No possessive tense unless trademark itself is
possessive (no Febreze’s fresh scent; yes the Febreze®
spray’s fresh scent)
Types of Relief Available for Registered Marks





Opposition proceedings
Cancellation proceedings
Injunctive relief, corrective advertising, an account of
profits, actual damages, statutory damages and/or
attorneys’ fees
UDRP claims
Criminal penalties for trademark counterfeiting
Relief for Unregistered Trademarks

Based on common law rights: Federal and State


Lanham Act 15 USC 1125
“Unfair Competition,” “Passing Off,” “Palming Off,”
“False Designation of Origin,” “Dilution”
 Test:

If consumers would be misled or Confused
Use of Copyright Law
Loss of Trademark Rights

Genericide
•
Improper licensing

Improper assignment
•
Failure to police


Failure to comply with registered user requirements where
required (statements of use, renewals, etc.)
Non-use
•
Cancellation
What is Trade Dress




Trade dress is the design and appearance of a product together with the
elements making up the overall image that serves to identify the product
presented to a consumer.
Trade dress may include features such as size, shape, color or color
combinations, texture, graphics.
Restaurant Decor. Two Pesos, Inc. v. Taco Cabana, Inc., 112 S.Ct. 2753 (1992)
Trade dress is a broad concept and may encompass product packaging
and product design/configurations. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205)

Bottle Shapes such as the shape of a Coke bottle (RN 1057884)

“Look and Feel” of a website?
What is Not Trade Dress

Items that do not have “secondary meaning”

Methods of Doing Business (potentially protectable under patent law)

Trade Secrets (proprietary information kept confidential by a company)

Copyrightable Materials

Trademarks
Protectable Elements of Trade Dress


Only “distinctive” aspects can be protected and can only develop
“distinctiveness” through gaining secondary meaning through use in the
market.
“Secondary Meaning” is a term of art and refers to distinctiveness that has
been acquired over time through use, marketing, advertising, etc.
Protecting Against Trade Dress
Infringement



Trade dress may be registered with the USPTO if it satisfies the federal
standards of trademark or service mark protection.
Trade dress infringement is grounds for a civil action regardless of whether
trade dress is registered. If the trade dress is unregistered the burden to
show that the trade dress is protectable is on the owner.
Types of relief available are similar to those available for trademark
infringement
Trademark or Trade dress litigation

Pre-filing considerations and issues

Subject matter jurisdiction


Venue


Concurrent with states
Usual rules
Who can sue?


Manufacturer or provider of goods and services
Exclusive licensee





Non-exclusive licensee cannot sue
What COA’s will be asserted?
Is the mark now incontestable?
How long has the defendant used the accused mark?
Contributory infringement claim at issue?

Tiffany v. eBay – for service provider to be liable, must have more than
general knowledge that service is being used to sell counterfeit goods.
Defenses









No likelihood of confusion
Fraud on the Trademark office
Mark has been abandoned
Misrepresenting source of goods/services
Descriptiveness
Mark is functional
Antitrust violations exists by use of mark
Parody
Equitable principles
Recurring issues

Descriptiveness as a defense
 Need
to prove “secondary meaning”
 Evidence
that the mark has some meaning to the public
beyond the obvious meaning of the terms or images of the
mark itself. In other words, the primary significance of the
mark has become a source identifier.



Proving likelihood of confusion
Surveys
Third party uses
Proving Likelihood of confusion

Factors
 G/S
competing with each other
 Same distribution channels
 Intent to mislead by accused infringer
 Similar sound, appearance or connotation
 Consumer sophistication
 Strength of each mark
 Instances of actual confusion
Oppositions and cancellations
proceedings



Before the Trademark Trial and Appeal Board
(TTAB)
Does not affect common law rights, if any
TTAB decision is reviewable by the Federal Circuit if
timely filed (60 days)
 Taking
such an appeal waives certain rights
Internet topics

Domain names and Cybersquatting

Uniform Dispute Resolution Policy (UDRP)

Federal Anti-cybersquatting Act

Digital Millennium Copyright Act (DMCA)

New legislation coming?
Domain Names and Disputes - ICANN



Internet Corporation for Assigned Name and Numbers
Non-Profit company created in 1998 and tasked with
managing the assignment of top level domain names
(TLDs) and IP addresses
Until 2000, ICANN only allowed 7 TLDs

Now companies can buy there own TLD for a hefty fee!
Registration of a Domain Name

Domain Name Registrars


GoDaddy.com, NetworkSolutions.com
Cost



Depends on whether Name is already owned
Not Owned: Approximately $10.00 for one year
Already Owned: Bidding Process
Examples of Applicable Law

UDRP – Uniform Domain Name Dispute Resolution
Policy
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
Anticybersquatting Consumer Protection Act


Policy
Administrative Rules
15 U.S.C. § 1125(d)
Pending Legislation

SOPA, etc.
UDRP

The UDRP is a dispute resolution policy implemented by ICANN that
applies to all .biz, .com, .info, .name, .net, and .org top-level
domains as well as some country codes.


Some countries will require that you go through WIPO for a resolution
Governs disputes over domain names and is meant to be a
streamlined process for resolving dispute more quickly and less
expensively than would be possible with a standard legal
challenge
UDRP Process
1.
Filing of Complaint
Must prove:
Domain is identical or confusingly similar to a trademark or service mark which
is owned by complainant
Respondent has no rights or legitimate interest in the domain
Domain registered in bad faith
1.
2.
3.
2.
3.
Filing of Response
•
20 days to respond
Potential Outcomes
•
Cancellation, Transfer, Nothing
•
No money damages!
UDRP Additional Considerations

Costs – One person v. three person panels

Effect of Court Proceedings
 During
pendency of hearing
 After decision rendered
UDRP Real Life Example – madonna.com




Facts: In 1998 a company purchased the domain name madonna.com from a third
party owner for $20,000.00. The purchaser began operating a pornographic website
using the domain name.
Complaint: Madonna, the entertainer, objected to this use and filed a complaint with
WIPO
Decision: The domain name is confusingly similar to a trademark “Madonna” in which
the complainant has rights and registrant lacked a legitimate interest in the domain
name because it was registered and used in bad faith
Result: Domain Name was transferred to Madonna
UDRP Conclusion

In general the UDRP is a relatively quick and inexpensive process that
can be used to resolve domain name disputes

Transfer or cancellation only possible favorable outcomes

Monetary damages unavailable

Court proceedings can trump outcome
Anticybersquatting Act
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
Passed in 1999 and prohibits the “bad faith” registration of trademark infringing
domain names and also applies to “bad faith” use of personal names.
“Bad Faith” under Anticybersquatting Act defined more broadly than under UDRP
Possible Outcomes include transfer of domain name, cancellation and monetary
damages
If trademark infringement found all remedies for trademark infringement are also
available
Unauthorized registration of a domain that is the same or confusingly similar to the
personal name of a living person is prohibited if done for profit
Downside is cost and expense to litigate
Digital Millennium Copyright Act (DMCA)

Digital Millennium Copyright Act

Passed by the US Congress in 1998. Focuses on protection of electronic content.

Covers many topics including anti-circumvention provisions to prevent circumvention
of DRM software and safe harbor provisions to protect ISP’s from liability for
copyright infringement

Takedown procedure for ISPs
 Google
Trade Secrets


Becoming more popular form of protecting IP
What is a trade secret?
A
trade secret is information that provides a business
with a competitive advantage.
 Courts
have provided trade secret protection to formulas,
patterns, plans, designs, physical devices, processes,
software, and “know-how.”
 Please keep in mind that different courts may reach
contrary conclusions concerning trade secret status with
respect to what may appear to be identical matters.
Examples of trade secrets





Formula – Coca-Cola recipe
Patterns, plans, or designs – schematics for an
analog circuit
Physical Device – machinery and equipment used to
manufacture polyethylene
Process – process to treat metal or to manufacture
fiber glass
“know how” – methods for testing procedures to
assure the quality of a raw material
Usual Factors to determining trade
secret

Is the information deemed to be a trade secret
valuable to the business


Is the information generally know or readily ascertainable?
What steps have been taken top keep the information
secret
Restricting access to information
 Physical security
 Proprietary notices placed on all documents
 NDAs obtained from third parties


To what extent do employees and others involved in the
business know about the information
Trade secret v. Patent
Trade secret
Patent

Protection = Broad

Protection = limited to claims

Term = indefinite

Term = 20 yrs.

Information becomes public




Information does not become
public and must be kept secret
Cannot be enforced against
independent invention or use
No defensive protection
Available to technical and nontechnical information


Can be enforced against
independent invention
Defensive protection because of
publication
Misappropriation of trade secret

Typically occurs when:
 Acquired,
disclosed or used TS without permission of the
holder, where such activities were done through
improper means
 Must look to State statute for elements

Remedies
 Exemplary
Damages
 Attorneys fees and costs
 Injunction
Ethical Considerations in IP

Patents


Trademarks


Dealing with USPTO
Copyrights


Dealing with the USPTO
Dealing with Library of Congress
Litigation

Dealing with Courts and opposing counsel
Patents

Power of Attorney filed with USPTO
 Power
of attorney must be in writing and signed by a
principal of the entity that owns the invention (37 CFR
§§ 1.31, 1.32)
 Only inventors, or a registered patent attorney or
patent agent may represent a party before the PTO in
patent matters (37 CFR § 1.31)
Other patent considerations


Representation of a client
 Who
is the client?
 Who
is the inventor?
 Who
is the applicant?
Representation of joint inventors
Ownership issues for patents

Handling the assignment
 Who
owns the invention?
 Potential conflict of interest between inventor and
employer
 Absence of contract requiring inventor(s) to assign
invention
Dealing with the USPTO – patent applications


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Both attorney and client owe a duty of Candor – to
disclose known, material prior art (37 CFR § 1.56)
Declaration of Inventor (37 CFR § 1.63)
Information Disclosure Statement (37 CFR §§ 1.97 –
1.99)
MPEP – Professionalism (37 CFR § 1.3)
Withdrawal from representation (37 CFR § 1.36)
Trademarks

Representation before USPTO in Trademark Matters ((37 CFR
§ 11.14)




Power of Attorney (37 CFR § 2.17(b)(1)(i))
Must be in writing and comply with PTO requirements (37 CFR § 2.17(c))
The owner of an application or registration may appoint a practitioner
through TEAS (Trademark Electronic Application System) for up to 20
applications or registrations that have identical owner name and
attorney (37 CFR 2.17(d)(1))
If filed on paper, there is no limit to the number of applications or
registrations for which a practitioner may be authorized to represent the
applicant or registrant
Termination of Power of Attorney


A power of attorney filed while an application is pending is
deemed to end when the mark registers, when ownership of
the application changes, or when the application is
abandoned.
A power of attorney filed after registration is deemed to
terminate when the mark is cancelled or expired, or when
ownership changes. If the power was filed in connection with an
affidavit under Sec. 8, 12(c), 15 or 71 of the Trademark Act,
renewal application under Sec. 9, or request for amendment or
correction under Sec. 7, the power is deemed to end upon
acceptance or final rejection of the filing.
Termination of Power of Attorney (cont.)




Filing of a new power of attorney revokes the existing power.
A written change of correspondence address does not revoke
a power of attorney.
A revocation of power of attorney may be signed by the
applicant, registrant, or party to a proceeding; or by someone
with legal authority to bind the applicant, registrant, or party.
Withdrawal of attorney requires application to and approval
by the Director or, upon motion, by the TTAB
Affidavit of Use or of Continuing Use



Required for Sec. 8 and 15 Declarations
Required for Renewal
Must not include goods or services that trademark owner is not
selling
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If misstatement was intentional, fraud may be found
Intent to deceive is required to establish fraud
Standard of proof is clear and convincing evidence
Registration will be cancelled if fraud is shown
Mere negligence does not constitute fraud
However, registration must be restricted to reflect commercial
reality
Dealing with the Copyright Office

Accuracy of Copyright Registration Form

Fraud on Copyright Office
Litigation

Rule 11
 Pre-filing

due diligence
Discovery rules
 ESI
 Spoilation

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
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Local rules
Representation to court
Vexatious litigation
Ethical rules and professionalism
Thank You! Questions?