Intellectual Property Law Primer For Manufacturers · Intellectual Property Law Primer For...
Transcript of Intellectual Property Law Primer For Manufacturers · Intellectual Property Law Primer For...
Intellectual Property Law Primer For Manufacturers Brian J. Gerling [email protected] (315) 214-2024 333 West Washington Street, Suite 200 Syracuse, NY 13202 www.harrisbeach.com
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
What is “intellectual property”?
IP is the general term for the specialty of law dealing with ownership of ideas and inventions.
The basic areas:
Why should I care? Intellectual property law allows you to own, control and
monetize your own ideas.
Patents Trade Dress Trademarks Trade Secrets Copyrights
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
What does an IP attorney do?
The attorney works with an inventor or an artist to ensure their ideas or works are fully protected.
In the case of patents, the attorney will devise an invention disclosure, and write the patent application based on this disclosure.
In the case of a trademark, the attorney assesses the distinctiveness of the proposed mark and its use in commerce.
In the case of a copyright, the attorney assesses the artistic quality(ies) of the work.
In the case of a trade secret, the attorney assesses whether the concept is unique and has its confidentiality been protected and preserved.
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
What’s a Patent?
Patents safeguard a new, non-obvious device or method.
The patent itself grants the inventor a “property right” to the invention.
Prevents others from making, using, or selling the invention in the United States for 20 years from the filing date.
Much like the boundaries of real property, the claims of the patent define the scope of protection.
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Patent Applications – Generally Two Types
1. Provisional Patent Application Far less expensive than non-provisional Get a Date – preserve priority “Patent Pending” Requires no oath or declaration Timing requirement: A non-provisional application must be filed within one (1) year of the filing date of the provisional application or it is considered abandoned.
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Patent Applications (continued)
2. Non-Provisional (Full) Patent Must include:
1) Specification, including “claims” 2) Drawings, if needed 3) An “oath” or declaration from inventor(s) 4) Filing fees
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
What a Patent Looks Like
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Drawings
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Specification of Patent
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Claims of a Patent
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Why seek a patent?
The inventor receives the exclusive right to make, use, sell and offer to sell on the invention for 20 years.
Protects the inventor’s legal rights. Shows the ingenuity/ability of the inventor (prestige factor)
Protects the value of the invention and ability to commercialize it.
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Patent Claims
State what the invention actually does. The claims are the legal definition of the invention: 1) Independent Claims 2) Dependent Claims
Claims cover the: Method Composition Process
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
U.S.: Two Types of Patents: Design v. Utility
Utility Patent Protects any new and useful process, machine, article
of manufacture, or composition of matter Protects functional characteristics
Design Patent Protects a new, original and ornamental design for an article of manufacture Protects appearance Generally less expensive and quicker to issue
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Design Patent: Examples of Protectable Designs
Overall product designs Partial designs/ornamentation Packaging Patterns Fonts Icons
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Why pursue a U.S. design patent?
Low cost Reduced time to issue Product marking Nature of the particular Industry Damages can be significant Apple v. Samsung – U.S. Supreme Court
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Whose patent is this?
An employer or employee may apply and own a particular patent.
Ownership rights depends on: Was the employee hired to invent? Did the employer and employee have a written agreement? Did the employer allow the employee to use company equipment in making the invention? (The “shop right”)
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Foreign Patent Protection
U.S. Patent does not afford extra-territorial protection
International treaties allow applicants to file within 1 year of U.S. filing date
Patent Cooperation Treaty allows the filing of an “international application.”
Applications must be filed in each country or region (Europe).
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Patent Litigation
Very Expensive Roughly less than 1% of issued patents get
litigated Approximately 5% of cases actually go to trial Approximately 75% of cases settle prior to trial 2 - 3 year average case pendency (at trial court
level) Validity of patent(s) will be heavily scrutinized in
court proceeding and in parallel proceedings before the Patent and Trademark Office
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Initial Phase: Demand Letters
Cease and desist Offer to license Actual notice per 35 U.S.C. § 287 (damages)
Starts the willfulness clock running (enhanced damages)
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Response to Demand Letter
Nothing happens Negotiation and requests for showing of basis for infringement
Infringement analysis Invalidity analysis Accused infringer stops infringing Accused infringer negotiates a license Lawsuit
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
What’s a Trademark?
Trademark: A word, name, symbol, or some recognizable article that indicates the source of goods.
Service mark: Identifies the source of services (such as accounting, landscaping, etc.)
Federal registration and/or common law rights
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Trademark
A trademark is an indicator on a product sold by a business in the marketplace to identify the unique source of the goods:
Snickers® brand candy bar identifies Mars, Incorporated as the unique source
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Examples of Trademarks
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Why get a trademark?
A trademark prevents others from using a similar mark on the same or similar goods
Federal registration provides nationwide protection
Common law rights may be limited to your locale
Prevents a competitor or upstart from using a knock-off of your company’s logo or slogan to mislead consumers.
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Trademark Rights
Legal presumption of ownership of the mark Exclusive right to use the mark in connection with the
relevant goods or services Public notice that you are the owner of the mark Branding and Goodwill – higher prices Prevent import of foreign goods that infringe on the
trademark Use in commerce or application for federal registration
Intent-to-use application – akin to provisional patent application
Less expensive and preserves date
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Trademark Protection
Trademark “Infringement” If a competing good uses a “similar mark” – does it look like your mark, does it sound or is it spelled like your mark, or does it have a similar meaning to consumers Will the competing mark confuse consumers as to where the product came from?
Trademark “Dilution” The subject mark has to be “famous” – (i.e., Nike) Protection extends beyond your class or market If a non-competing good (in a different market than you) uses a similar mark.
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Foreign Trademark Protection
U.S. rights are not extra-territorial Do you intend to expand into international
markets Do you have international competitors Not as streamlined as the patent process as the
applicant must file in each country If filed within six (6) months of U.S. filing date,
owner receives U.S. filing date in other countries.
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Trademark Litigation
Who can sue? Manufacturer or provider of goods and services Registrant or assignee Exclusive licensee
Considerations: Costs How strong is my mark Is the competing mark confusingly similar Is my mark famous Strategic reasons
Policing your mark – internet searches, registrations
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Defenses
Senior user already using in certain locale
No likelihood of confusion Different class or markets Mark has been abandoned
no longer used in commerce
Lack of Descriptiveness Challenge at the PTO
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Common Issues
Descriptiveness as a defense Plaintiff may need to prove “secondary meaning” Evidence that the mark has some meaning to the
public beyond the obvious meaning of the terms. In other words, the mark has become a source identifier.
Proving likelihood of confusion Similar goods and services Similar sound, appearance, connotation Surveys
Do consumers associate one with the other Instances of actual confusion
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Possible Trademark Violations
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Trade Dress – Related to Trademark
Separate right (and potential claim(s)) from trademark or design patent – protects the expression of the idea, instead of idea itself
Trade dress protection – the appearance (size,
shape, packaging) of a product when that appearance is used to identify a source of goods
Similar tests: distinctiveness and non-functional,
likelihood of confusion
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Copyright
Copyright is a legal protection for the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works.
Rights established upon being placed in a tangible medium of expression (but how do you establish that date)
Eligible works: sculpture, music, architecture, jewelry, software
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Categories of Protected Works
Literary works Musical works Sound recordings Dramatic works Choreographic works Pictorial, graphic and sculptural works Motion pictures Architectural works Architecture (post-1990) Software - code
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Factual Information
Purely factual information within a work is not protected by copyright.
Utilitarian aspects of a work are not protected by copyright. Examples: shape of a snowplow blade or program logic, algorithms, systems, methods, concepts The above might qualify for some other form of IP protection
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Why Register a Copyright?
Technically, copyright exists from the moment the work is created. But by registering the copyright: Copyright establishes a public record of the copyright claim. Need to have a copyright to file an infringement lawsuit. Lasts for the life of the author plus 70 years. Exclusive right to reproduce, distribute, perform, display. Damages
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Registering a Copyright
Registering a copyright entails: Application form (online) Nonrefundable filing fee Nonreturnable deposit – one or more copies of the work to be registered.
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Computer Programs – Deposit Copy
First 25 and last 25 pages with portions of source code containing trade secrets blocked out;
First 10 and last 10 pages of source code alone with no blocked out portions;
First 25 and last 25 pages of object code plus any 10 consecutive pages of source code with nothing blocked out; or
For programs 50 pages or less in length, entire source code with trade secrets portions blocked out
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Berne Convention
U.S. entered Berne Union, the largest International Copyright Convention.
Had to change U.S. Copyright Law to be in compliance, such changes include: No longer need to provide copyright notice for protection; Doubled limits of statutory damages; and Recognized architectural plans as copyrightable.
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Copyright Infringement
Infringement is a violation of any of the exclusive rights of copyright
Must prove: Validity and ownership of a copyright Wrongful copying of protected expression
Software – code is readily reversed engineered and modified to not infringe
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Proving Infringement
Direct evidence of infringement Circumstantial evidence of infringement: Access to copyrighted work Unlawful copying - substantial similarity
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Liability for Infringement
Direct liability Contributory liability Knowledge of infringement (actual or constructive) Material contribution
Vicarious liability The right and ability to supervise Financial interest Down stream users
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Limitations and Exceptions
First sale doctrine Fair Use: special exceptions for libraries, archives, and teaching purposes
Certain statutory licenses Single software copy for archival purposes
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Fair Use
“Fair use” is not an infringement of copyright. Use for purposes such as: Criticism and Commentary News reporting Scholarship and/or non-commercial
Four part test: The purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes nature of the copyrighted work amount and substantiality of the portion used in relation to the copyrighted work
as a whole effect of the use upon the potential market for or value of the copyrighted work
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Copyright Remedies
Actual damages Statutory damages Injunctions, including temporary and permanent
Impounding infringing copies Destroying infringing copies and the machinery and equipment used to produce them
Attorneys’ fees and costs
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
What is a Trade Secret?
Information that gives a competitive advantage in a business and is not available to the public or competitors. Example: a manufacturing process that isn’t “inventive” enough to be patented. Product formula
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
When is it best to keep a Trade Secret?
“It depends.” Advantages:
If truly kept “secret,” will not be disclosed to public via patent process Unlike patent limit of 20 years, trade secret will theoretically last forever
Disadvantages: Harder to enforce a trade secret violation If the product is public, the secret may become public.
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Trade Secret
Important to protect through employment agreements – confidentiality and non-disclosure agreements
Important to protect through confidentiality and non-disclosure agreements with third-parties
In the event of litigation, such prophylactic measures show the Court that you taking necessary steps to keep the information secret
Brian J. Gerling [email protected], (315) 214-2024 Harris Beach PLLC, ©2016
Miscellaneous – Related Issues
Some insurance policies provide coverage for certain forms of intellectual property disputes
Cybersecurity – hackers are seeking confidential company secrets and technology