TRANSACTIONAL TRACKIntellectual Property

4:00 pm.-5:00 p.m.

Presented byJanet Phipps Burkhead

Dickinson, Mackaman, Tyler & Hagen, P.C.699 Walnut Street, Suite 1600

Des Moines, Iowa 50309Phone: 515-244-4531

2013 Nuts & Bolts SeminarDes Moines

2013 Nuts & Bolts SeminarDes Moines

Thursday, October 31, 2013Thursday, October 31, 2013

IP Tips for the General Practice Attorney

Janet E. Phipps BurkheadDickinson Mackaman Tyler & Hagen, PC

ISBA Nuts & BoltsOctober 31, 2013

Intellectual Property

•Legal property rights over creations of the mind, both artistic and commercial

• Common types include – patents, trademarks, copyrights, and trade secrets

• Internet – adds a whole new dimension

What is a Patent?

• An exclusive right given by law to inventors

• To make use of, and exploit, their inventions for a limited period of time

• A temporary monopoly in exchange for a full description of how to perform the invention [generally 20 years]

Patents

• Protect inventions

• Patentable subject matter – “anything under the sun that is made by man”

• Invention must be: new, useful, non-obvious

Patents You’ll Recognize

George Nissen, 1931 Mildred Day, 1940

Everet Lindquist, 1935

…or maybe not!Dust Cover for Dogs

Patents - Potential Pitfalls

• Patentability barred if:(1) sale or offer for sale(2) public use(3) printed publication

• 1-year grace period in U.S.• Proof of invention dates• Ownership issues for inventions by employees• Third party ideas• Ignoring patent notice (e.g. willfulness – treble damages,

attorneys’ fees

Patent Due Diligence

• Patent Nos./Titles• Licensing Agreements/ Royalties• Expiration• Foreign counterparts• Inventor assignment agreements• Validity or infringements challenges

What is a Trademark?• The name of a particular brand of product –

not the name of a product or service• Identifies the source of the good or service

• Exclusive rights – can be licensed or sold

• Federal registration - maximum protection (protection also thru common law, state registration)

• Use of “TM” or ®

Trademarks include…

Colors, ♫Sounds [NBC chimes; Tarzan yell; MGM lion 

roar], and ۵Smells [cherry smell for industrial fluids] 

• Combinations thereof

Symbols

Logos

Trademarks You’ll Recognize

Let’s Get Ready to Rumble

Microsoft

What to look for . . .

• Business formation

• Business launching a new product or service

• Naming or re-naming of a product or service

• Going to the market prior to at least a screening search

Length of Protection

• Must show continuous use

• Use must with identified goods or services

• Periodic renewals with fees

Trademarks Potential Pitfalls

• Business acquisition doesn’t include IP

Rights/remedies not transferred

Due diligence not performed

• Inadvertent abandonment

Improper use (Aspirin, Xerox, Kleenex)

Naked license w/o quality control

Trademark Due Diligence

• Registration #/Classes of goods & services• Proper renewals• Pending litigation or challenges• License agreements/due diligence• Foreign trademarks• Clear chain of title

What is a Copyright?

• Protects the form of expression of a creator against copying by others

• Literary, dramatic, musical and artistic works • Protection is available for both published and

unpublished works

©

What is protectable?

• Literary works (all text, including computer software)• Musical works• Dramatic works• Pantomimes and choreographic works• Pictorial, graphic, and sculptural works• Motion pictures and other audiovisual works• Sound recordings• Architectural works

What is not protectable?

• Unoriginal work• An element within a work may not be protectable

even if other elements, or the work as a whole, can be protected

• Material in the public domain• Works involving no creativity• Information that is commonly available• Anything authored by the US government• Examples:

• Facts• Ideas• Blank forms

• Titles• Lists of ingredients• Pseudonyms

Copyright provides the rights to:

• Reproduce• Sell or distribute copies• Perform publicly• Display publicly• Perform publicly by a digital audio

transmission• Make “derivative works” (including making

modifications, adaptations, or other new uses of a work, or translating the work to another media)

Length of Protection

• IndividualLife of Author/Creator + 70 years

• Works For Hire95 years from publication or 120 years from creation, whichever expires first

*The Sonny Bono Copyright Extension Act of 1998 [Mickey Mouse Protection Act] extended these rights by 20 years

Copyright - Potential Pitfalls

• Work for Hire - - not intuitive• Failure to promptly register• Availability on internet or with no copyright notice does not mean free to use

Copyright Due Diligence

• Number/title of work• Clear chain of title• Work-for-hire implications• Licensing agreements• Pending litigation or challenges

What is Infringement?• Applies to patents, trademarks and copyrights

• Patent Infringement: The unauthorized making, using, selling, importing or otherwise any product or process as outlined by any one of the claims of a patented invention.

• Trademark Infringement: Violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees; may occur when one party, the "infringer", uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers.

• Copyright Infringement: occurs when a copyrighted work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner

Trade Secrets [Know How]

Iowa Code Chapter 550 – Trade SecretsA trade secret is defined as:

information, including but not limited to a formula, pattern, compilation, program, device, method, technique, or process that is both of the following:

a. Derives independent economic value, actual or potential, from not being generally known to , and not being readily ascertainable by proper means by a person able to obtain economic value from its disclosure or use.

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

Iowa Code § 550.2(4)

Computer Fraud & Abuse Act [CFAA]*

• 18 U.S.C. § 1030• Employee acted “without authorization” or “exceeded authorized access”• Breach of duty of loyalty•“Protected computer” – used for interstate or foreign communications [Internet is interstate]• NCMIC Financial corp. v. Artino, et al., 638 F.Supp.2d 1042 (S.D. IA 2009)

Trade Secret Due Diligence

• List of material trade secrets [know how]• Security measures undertaken• Non-disclosure/confidentiality agreements• Any known breaches• Pending business agreements• Recent employee departures

Non-Compete Agreements

• List of current agreements• Agreement assignable• Insure correct entity is named• Recent employee departures

Uniform Domain Name Dispute Resolution [UDRP]

• WIPO [World Intellectual Property Association]

• Administrative resolution process regarding disputes over domain names [confusion, legitimate interest, bad faith]

•Respondent is the domain name registrant [not registrar]

• Pricey: 8-10 hours to prepare complaint; $1500 filing fee for single panel member

10/28/2013

1

IP Tips for the General Practice Attorney

Janet E. Phipps BurkheadDickinson Mackaman Tyler & Hagen, PC

ISBA Nuts & BoltsOctober 31, 2013

Intellectual Property

•Legal property rights over creations of the mind, both artistic and commercial

• Common types include – patents, trademarks, copyrights, and trade secrets

• Internet – adds a whole new dimension

What is a Patent?

• An exclusive right given by law to inventors

• To make use of, and exploit, their inventions for a limited period of time

• A temporary monopoly in exchange for a full description of how to perform the invention [generally 20 years]

10/28/2013

2

Patents

• Protect inventions

• Patentable subject matter – “anything under the sun that is made by man”

• Invention must be: new, useful, non-obvious

Patents You’ll Recognize

George Nissen, 1931 Mildred Day, 1940

Everet Lindquist, 1935

…or maybe not!Dust Cover for Dogs

10/28/2013

3

Patents - Potential Pitfalls

• Patentability barred if:(1) sale or offer for sale(2) public use(3) printed publication

• 1-year grace period in U.S.• Proof of invention dates• Ownership issues for inventions by employees• Third party ideas• Ignoring patent notice (e.g. willfulness – treble damages,

attorneys’ fees

Patent Due Diligence

• Patent Nos./Titles• Licensing Agreements/ Royalties• Expiration• Foreign counterparts• Inventor assignment agreements• Validity or infringements challenges

What is a Trademark?• The name of a particular brand of product –

not the name of a product or service• Identifies the source of the good or service

• Exclusive rights – can be licensed or sold

• Federal registration - maximum protection (protection also thru common law, state registration)

• Use of “TM” or ®

10/28/2013

4

Trademarks include…

Colors, ♫Sounds [NBC chimes; Tarzan yell; MGM lion 

roar], and ۵Smells [cherry smell for industrial fluids] 

• Combinations thereof

Symbols

Logos

Trademarks You’ll Recognize

Let’s Get Ready to Rumble

Microsoft

What to look for . . .

• Business formation

• Business launching a new product or service

• Naming or re-naming of a product or service

• Going to the market prior to at least a screening search

10/28/2013

5

Length of Protection

• Must show continuous use

• Use must with identified goods or services

• Periodic renewals with fees

Trademarks Potential Pitfalls

• Business acquisition doesn’t include IP

Rights/remedies not transferred

Due diligence not performed

• Inadvertent abandonment

Improper use (Aspirin, Xerox, Kleenex)

Naked license w/o quality control

Trademark Due Diligence

• Registration #/Classes of goods & services• Proper renewals• Pending litigation or challenges• License agreements/due diligence• Foreign trademarks• Clear chain of title

10/28/2013

6

What is a Copyright?

• Protects the form of expression of a creator against copying by others

• Literary, dramatic, musical and artistic works • Protection is available for both published and

unpublished works

©

What is protectable?

• Literary works (all text, including computer software)• Musical works• Dramatic works• Pantomimes and choreographic works• Pictorial, graphic, and sculptural works• Motion pictures and other audiovisual works• Sound recordings• Architectural works

What is not protectable?

• Unoriginal work• An element within a work may not be protectable

even if other elements, or the work as a whole, can be protected

• Material in the public domain• Works involving no creativity• Information that is commonly available• Anything authored by the US government• Examples:

• Facts• Ideas• Blank forms

• Titles• Lists of ingredients• Pseudonyms

10/28/2013

7

Copyright provides the rights to:

• Reproduce• Sell or distribute copies• Perform publicly• Display publicly• Perform publicly by a digital audio

transmission• Make “derivative works” (including making

modifications, adaptations, or other new uses of a work, or translating the work to another media)

Length of Protection

• IndividualLife of Author/Creator + 70 years

• Works For Hire95 years from publication or 120 years from creation, whichever expires first

*The Sonny Bono Copyright Extension Act of 1998 [Mickey Mouse Protection Act] extended these rights by 20 years

Copyright - Potential Pitfalls

• Work for Hire - - not intuitive• Failure to promptly register• Availability on internet or with no copyright notice does not mean free to use

10/28/2013

8

Copyright Due Diligence

• Number/title of work• Clear chain of title• Work-for-hire implications• Licensing agreements• Pending litigation or challenges

What is Infringement?• Applies to patents, trademarks and copyrights

• Patent Infringement: The unauthorized making, using, selling, importing or otherwise any product or process as outlined by any one of the claims of a patented invention.

• Trademark Infringement: Violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees; may occur when one party, the "infringer", uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers.

• Copyright Infringement: occurs when a copyrighted work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner

Trade Secrets [Know How]

Iowa Code Chapter 550 – Trade SecretsA trade secret is defined as:

information, including but not limited to a formula, pattern, compilation, program, device, method, technique, or process that is both of the following:

a. Derives independent economic value, actual or potential, from not being generally known to , and not being readily ascertainable by proper means by a person able to obtain economic value from its disclosure or use.

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

Iowa Code § 550.2(4)

10/28/2013

9

Computer Fraud & Abuse Act [CFAA]*

• 18 U.S.C. § 1030• Employee acted “without authorization” or “exceeded authorized access”• Breach of duty of loyalty•“Protected computer” – used for interstate or foreign communications [Internet is interstate]• NCMIC Financial corp. v. Artino, et al., 638 F.Supp.2d 1042 (S.D. IA 2009)

Trade Secret Due Diligence

• List of material trade secrets [know how]• Security measures undertaken• Non-disclosure/confidentiality agreements• Any known breaches• Pending business agreements• Recent employee departures

Non-Compete Agreements

• List of current agreements• Agreement assignable• Insure correct entity is named• Recent employee departures

10/28/2013

10

Uniform Domain Name Dispute Resolution [UDRP]

• WIPO [World Intellectual Property Association]

• Administrative resolution process regarding disputes over domain names [confusion, legitimate interest, bad faith]

•Respondent is the domain name registrant [not registrar]

• Pricey: 8-10 hours to prepare complaint; $1500 filing fee for single panel member