Intro to Intellectual Property

Ross A. Dannenberg, Esq. Banner & Witcoff, Ltd.

www.bannerwitcoff.com

February 18, 2010

How do you protect software?• Copyrights• Trademarks• Patents• Contract

• Shrink-wrap• Click-wrap or Click-through

• Trade Secret• Employment Agreements• Nondisclosure Agreements

COPYRIGHT PROTECTION

What is a Copyright?Protection for original works fixedin a tangible medium including:

• Literary works (program listings)• Musical works• Dramatic works• Pantomime and choreographic works• Pictorial graphics and sculptural works• Motion pictures and other audiovisual works

• Including audiovisual software (e.g., video games, etc.)

• Sound recordings• Architectural works

…but NOT ideas.

Protection Afforded by a Copyright

As a general rule, the owner of a copyright has the exclusive right to do and authorize any of the following:

• Reproduce (i.e., make copies of) the copyrighted work;• Distribute, sell, rent, or lease copies • Perform or display the copyrighted work publicly• Prepare derivative works based on the copyrighted work;• Grant exclusive and non-exclusive licenses for any or all of

the above rights, collectively or individually.

Copyright Duration• Automatically begins at the moment of

creation (when work is fixed in a tangible medium).

• Works by independent authors: protection lasts for the author’s life plus 70 years.

• Corporate works: protection lasts 95 years from the date of publication or 120 years from creation, whichever is shorter.• Includes anonymous and pseudonymous works.

Copyright Notice & Registration• Neither is required for protection – Copyright exists

automatically upon creation.• ALWAYS INCLUDE A COPYRIGHT NOTICE

• No requirement in order to use notice.• Example: © 2001 CopyrightOwner

• Advantages of using Notice• Precludes defense of innocent infringement.• Best way to disclose the ownership of the copyright.

• Advantages of Registration• Recover of statutory damages & attorneys fees

Copyright Ownership• General Rule

• The author is the owner and retains the rights unless he specifically transfers them in writing.

• Exception: Works made for hire. • if created by an employee in the course of

employment; or• if the parties specifically agree in writing

and the work fits within 1 of 9 statutory categories (does not include literary works, but does include audiovisual works)

PATENT PROTECTION

What is a Patent?

• A grant by the government of a right to exclude others from practicing (i.e., making, using, selling, offering to sell, and importing) a particular invention for a set period of time.

Who Needs a Patent?

• Oracle~ 1200 patents

• Microsoft~ 14,000 patents

• IBM~ 55,000 patents

• Internet Security Systems (ISS)Only 7 patents, but…Founder was youngest person on Forbes’ Tech 100; now worth ~$200M

• Runaway Technologies1 patent by founder Robert Silvers…

= U.S. Patent No. 6,137,498

Types of Patents• Utility Patents

• protect utilitarian inventions, both animate and inanimate (e.g., software)

• Design Patents• protect new, original and ornamental designs for

manufactured goods (e.g., physical design of a new hardware and user interfaces)

• Plant Patents• You will NEVER need to worry about this, unless

you are a botany major auditing this class…

What’s Patentable?

• Nearly anything under the sun that is made by man, provided it is useful.

• Processes• Machines• Compositions of matter• Articles of manufacture

• Computers modified with specialized software• A CD or DVD on which computer software is

storedBut this might change soon!

Term of a Utility Patent

• 20 years from the filing date• Enforcability begins when patent issues• Terms typically average about 16-18

years

Patent Requirements• Utility: Minimum amount of usefulness.• Novelty: Must be new.• Nonobvious: It would not have been obvious

to one of ordinary skill in the art to modify a prior invention to arrive at the claimed invention.

• A patent application including:• A written description including an enabling

disclosure of the best mode contemplated by the inventor.

Design PatentsHow do they differ from Utility

patents?• Protects original and ornamental designs

for articles of manufacture• Term = 14 years from date of issuance• Designs can be in the shape of the object,

surface ornamentation, or both

Preserving Patent Rights

• Watch out for pitfalls:• On sale bar• Public use bar• Printed publications

• Keep detailed records• Dates of conception and reduction-to-practice• Enabling disclosures

• Foreign Patents?• Avoid public disclosures• Use non-disclosure agreements

On-Sale Bar• Must file no later than 1 year after the

invention is offered for sale in the United States.• Single offer for sale is enough.• Acceptance NOT required.

• Sale must be:• Commercial Offer for Sale (i.e., can be accepted)• Invention ready for patenting (RTP or enabling

disclosure)

• Article sold or offered for sale can be used as prior art against you.

Public Use• Must file no later than 1 year after the invention is

publicly used in the United States.• Public use by anyone, including the inventor.

• Secret uses for commercial benefit by anyone are considered a public use• E.g., a secret method in a factory producing toys

• Secret uses by anyone other than the inventor not under duty of confidentiality, even if not for commercial benefit• E.g., wearing a corset under a dress

• Private, noncommercial use by inventor: OK• Limited exception for Experimental Use

Printed Publications

• Must file within 1 year of date of publication of a printed publication anywhere in the world.

• Adequate description (i.e., enabling).• Tangible medium and made available to public.• Obvious Examples

• Patents, Books, Newspapers, Magazines• Not so obvious examples

• Web sites, Conference papers, White Papers• Single copy of thesis available from 1 remote library!

Enabling Disclosure

• Drawings or other descriptions of the invention that are sufficiently specific to enable a person of ordinary skill in the art to practice the invention

• If you have an enabling disclosure, you are subject to on sale bars and printed publication bars.

• File A Patent Application!

TRADEMARK PROTECTION

What is a Trademark?

• Any word, name, symbol or device, or any combination thereof used by a person or entity to identify and distinguish their goods or services from those manufactured and sold by others.

• Term: 10 years.• Can be renewed indefinitely as long as there

is continued use of mark.

Overlap in Patent, Trademark and Copyright Law Protection

• Product Shapes (e.g., COCA-COLA bottle shape) can be the subject of a design patent for a limited duration of time (14 years) and can also function as a trademark provided it indicates origin.

• Picture of a Person or Character (e.g., Mickey Mouse, Tony the Tiger) may be copyrightable as a pictorial work and may also be used as a trademark.

Spectrum of Distinctiveness(Listed in descending order)

• Fanciful/Coined (KODAK)• Arbitrary (APPLE for computers)• Suggestive (NIKE, Goddess of Victory)• Descriptive (WEATHERDATA)• Generic (e.g., MILK for milk)

Other Non-Inherently Distinctive Marks• Name Marks - surnames and given names can only be

protected upon a showing of acquired distinctiveness through use. (MCDONALDS, PARKER BROS.)

• Geographic Marks• Geographically Descriptive (NANTUCKET

NECTARS for drinks made in Nantucket, Massachusetts). Showing of secondary meaning required for protection.

• Geographically Misdescriptive or Deceptive (NAPA VALLEY for wine originating in Secaucus, New Jersey) cannot be protected.

Genericide• Genericide occurs when a trademark no longer

identifies the source of goods or services, but becomes the name for the goods or services themselves.

• How to avoid genericide:

• Use mark in proper manner • Use mark as an adjective with the generic

name of the goods. Never use the mark as a noun.

• Educate public.• Police misuses.

Acquisition of Trademark Rights

• Actual use of a mark in connection with goods or services (registration not required, but encouraged).

• Search records at USPTO prior to choosing a mark.• Reservation of a business name from the Secretary of State

does not give the right to use that name as a trademark.

• While not required, federal registration provides a number of substantive and procedural advantages for the trademark owner (and can use ® symbol).

Any Questions?Ross A. Dannenberg, Esq.

Banner & Witcoff, Ltd.

1100 13th St., NW, Suite 1200

Washington, DC 20005

(202) 824-3153

rdannenberg@bannerwitcoff.com

http://www.bannerwitcoff.com

http://www.PatentArcade.com

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