Transcript Document
Intellectual Property
Jim Babineau Principal – Fish & Richardson P.C.
CONSTITUTIONAL FOUNDATION
The Congress shall have Power. . . .
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; . . .
-Constitution of the United States, Article I, Section 8
PRINCIPAL TYPES OF INTELLECTUAL PROPERTY
PATENTS COPYRIGHTS TRADE SECRETS TRADEMARKS
PATENTS
Exclusively Federal Law (Title 35, US Code) Limited Territorial Effectiveness Protects
idea
itself (Contrast with Copyright Concept)
PATENTS (Cont.)
A “Contract” Between the Government and the Inventor Application/Examination Process Can be Costly Must Show That Your Invention Is “New, Useful & Non obvious” If Issued, the Scope of Protection Is Defined by the numbered “Claims” at the End of the Patent
PATENTS (Cont.)
A Patent Is a Right to Exclude Others,
Not
Practice the Patent a License to Effective Upon Issuance, but Life Is 20 years from
filing
patent application; “Patent Pending?” of Computer Software and Business Systems ARE Patentable
Why Get Patents?
Only 24% of venture-backed software companies receive patents (56% of biotech companies) Among those that have them, average of 3 per company (biotech 10 patents per firm) Very little correlation to having patent pre-financing and successfully raising $$ Source: Mann and Sager,
Patents Venture Capital and Software Startups
Am. Law. & Econ. Assoc. Meeting (12-05)
Protecting Inventions
Keep a bound notebook log Document all your ideas
before
designer or supplier you contact an outside Obtain assignment obligations from others whenever possible Document progress toward the first successful test File any patent application before the first non-confidential disclosure or commercial sales offer
COPYRIGHT
Exclusively Federal Law; Title 17 US Code Protects
expression
of Idea (Contrast with Patent Concept) – Somewhat Related to Design Patents No Copyright in “Facts” © Symbol and Copyright Registration Not Required, but Useful
COPYRIGHT (Cont.)
Copyright Exists from the Moment of Work’s Creation “Fixed in a Tangible Means of Expression” Life of author plus 70 years “Extra-Territorial” Protection through Treaties Minimal Creativity Hurdle
EXAMPLES OF COPYRIGHTED WORKS
Literary Works: books, magazines, newspapers, cartoons, newsletters, documentation Computer Software Pictures, Graphics, and Sculptures: maps, cartoon characters, photos Sound Recordings: compact discs, cassette tapes, phonographic records Architectural Works: blueprints Dramatic Works: plays, screenplays Audiovisual Works: videotapes, films Pantomimes and Choreographic Works
COPYRIGHT OWNER’S “BUNDLE OF RIGHTS”
Copyright Owner Has the Exclusive Right To: • Reproduce the Work (hence, the “copy” right) • Distribute the Work (subject to “ first sale doctrine ” ) • Publicly Display the Work • Publicly Perform the Work • Make Derivative Works from the Work
COPYRIGHT - FAIR USE
Section 107 of Copyright Act (17 USC 107) Four factors / case by case analysis – Purpose/Character of Use ( “ Commercial ” Or Not) – Nature of Work ( “ highly creative ” vs. factual) – Amount/Substantiality of Amount Used (special consideration for images) – Effect on Potential Market (most important factor)
TRADEMARKS/SERVICE MARKS
Both State and Federal Law [Lanham Act, 15 U.S.C. §§ 1051 – 1127] Protects Against Consumer “Confusion”; Distinguishes source of goods/services Potentially Perpetual Police it or Lose it Difference between ® and “TM”
TRADEMARKS/SERVICE MARKS (Cont.)
What’s wrong with “making a Xerox”? Or “Hand me a Kleenex”? Or “I Velcro’d my shoes”?
What do “escalator” “dry ice” “trampoline” and “corn flakes” have in common?
TYPES OF MARKS
– – – –
Descriptive:
Easy to Market/Hard to register • e.g., Geographic; Purpose; Function • Secondary Meaning Required
Suggestive:
Easy to Register; Requires “leap of imagination” and consumer education • Sunkist Oranges; HBO
Arbitrary:
Easy to Register; Hard to Market • Apple Computer; Nickelodeon Television
Fanciful:
Easiest to Register; Hardest to Market; Made-up Words • Oreo Cookies, Exxon Gasoline; Verizon Wireless
TRADE SECRETS
State Law / Primarily Common Law Owner Must Control Tightly Virtually Unlimited Subject Matter Potentially Perpetual, but ….
Once Disclosed (Even If Stolen), Protection Ends