Advising Businesses In A Troubled Economy… Intellectual Property: Traps To Avoid Sponsored by University of Houston Law Foundation
Mar 31, 2015
Advising Businesses In A Troubled Economy…
Intellectual Property:Traps To Avoid
Sponsored by
University of HoustonLaw Foundation
IP Comparisons pages 1-4
What does it protect?
What's required?
Provisional Patent Application
Allows subsequent disclosure without losing foreign rights
A cover sheet and any description
IP Comparisons pages 1-4
What does it protect?
What's required?
Utility Patent
Functional features
New and "non-obvious"
IP Comparisons pages 1-4
What does it protect?
What's required?
Design Patent
Nonfunctional aspects
New and "non-obvious"
Design Patent On A Tennis Racquet?
• Is it Functional???• What if it had 2 handles?• Or• 2 heads?
Design Patent On A Tennis Racquet
• 2 Handles: D247,131
Design Patent On A Tennis Racquet
• 2 Heads: D247,057
IP Comparisons pages 1-4
What does it protect?
What's required?
Trademark, Service Mark
Words, names, symbols, or devices
Used to identify and distinguish goods(see page 76)
IP Comparisons pages 1-4
What does it protect?
What's required?
Domain Name
Exact spelling of your website
Spelling variation; no bad faith
• www.HeadleyIPLaw.com• www.headley.tel• www.patent-lawyer.tel • www.trademark-lawyer-
tel• www.copyright-
lawyer.tel
Domain Names
IP Comparisons pages 1-4
What does it protect?
What's required?
Trade Dress Overall impression of nonfunctional features
Used to identify and distinguish
IP Comparisons
What does it protect?
What's required?
Copyright Computer programs, photos, music, websites, architectural drawings
Originality
IP Comparisons
What does it protect?
What's required?
Trade Secret Secrets Confidentiality agreements & obvious security measures
• Its Website Got Your Client Sued in Alaska.
Page 5
Jurisdiction Traps
• Alleged patent infringement • P, Brit, sells patented products in
CA• No exclusive licensee, many non-
exclusives• No enforcement actions in CA• D.J. possible in CA?
New case
Jurisdiction Traps
• “A patentee should not subject itself to personal jurisdiction in a forum solely by informing a party who happens to be located there of suspected infringement.”
New case
Jurisdiction Traps
• “Jurisdiction over foreign patentees like Oxford continues to be available in the United States District Court for the District of Columbia. See 35 U.S.C. § 293.”
• Autogenomics, Inc. v. Oxford Gene Technology Limited, No. 2008-1217 (Fed. Cir. May 18, 2009).
New case
Jurisdiction Traps
Patent Traps
• Attorney Not Registered
• Invention Already Described
• Grace Period in the U.S. ended
Page 9
Page 9
Page 10
Patent Traps• The Applicant Is Not The Inventor
• The Inventor Lost the Race
• Employee Still Owns The Invention
• Improper Venue new case
10
13
13
• Lear (Michigan) sued TS Tech (Ohio) in E.D. TX.
• selling infringing pivotal headrest assemblies to Honda
• E.D. denied transfer: several cars sold in E.D.
• Petitioned Fed. Cir. for mandamus
New case
Patent Traps - Venue
• 5th Cir. 2008 Volkswagen case• “inordinate weight to plaintiff’s choice”• “cost of attendance for witnesses” --
ignoring “100-mile rule” = “clear error”• In re TS Tech USA Corp., 551 F.3d
1315, 1319 (Fed. Cir. 12-29-2008)
New case
Patent Traps - Venue
• MHL(Michigan) sued (1) Audi, Nissan, Hyundai, Kia, Porsche, BMW, Isuzu, Subaru, & Volkswagen and (2) GM, Saturn, Ford, Land Rover, Volvo, Chrysler, & Mercedes-Benz
• E.D. denied transfer• VW petitioned - mandamus
New case
Patent Traps - Venue
• “the existence of multiple lawsuits involving the same issues is a paramount consideration”
• “judicial economy is served by having the same district court try the cases involving the same patents”
New case
Patent Traps - Venue
• Denied mandamus.
• In re Volkswagen of America, Inc., Volkswagen AG, and Audi AG, No. 897 (Fed. Cir. 5-22-09).
New case
Patent Traps - Venue
• Sanofi (Germany) sued Genentech and Biogen in E.D.
• Same day, G & B filed D.J. in N.D.Cal.• E.D. denied transfer• Defendants petitioned - mandamus
New case
Patent Traps - Venue
• “not necessary …to evaluate the significance of the identified witnesses’ testimony”
• “The significant weight given to the inconvenience of the European witnesses is in direct conflict with the more appropriate approach of several other district court decisions”
New case
Patent Traps - Venue
• “improperly used its central location as a consideration” (no witnesses in E.D.)
• “Sanofi is a German corporation that will be traveling a great distance no matter which venue.”
New case
Patent Traps - Venue
• “the bulk of the relevant evidence usually comes from the accused infringer. Consequently, the place where the defendant’s documents are kept weighs in favor of transfer to that location.”
• “antiquated era argument was essentially rejected in Volkswagen”
New case
Patent Traps - Venue
• Granted mandamus.
• In re Genentech, Inc. and Biogen Idec Inc., No. 901 (Fed. Cir. 5-22-09).
New case
Patent Traps - Venue
Trademark Traps
• Assumed Availability
• Failed To Apply For Federal Reg.
• Insisted on a descriptive mark new
17
18
Pick A Mark
• For: Hospitality & Lodging services
“Motel”?
Pick A Mark
or“Marriott”
?
Pick A Mark
Pick A Mark
• For: Legal services
•“Trial Lawyer”?or
•“ Patent Lawyer”?or•?
Pick A Mark
Time: Start to Finish
• Applied: May 18, 2008
• Registered: March 17, 2009
Trademark Traps
• Used another’s trade dress new
Trademark Traps
• Failed To Use International Arbitration Panels For Domain Name Disputes
18
Fighting Trademark Infringers
• Standard TM Lawsuit$$$$$$
• ACPA lawsuit $$$
• TTAB proceeding $$
• International ADR $
Intl’l ADR -- ICANN
• Internet Corporation for Assigned Names & Numbers
• Non-profit corp. formed in 1998
• Recognized by U.S. government: technical coordinator of the Internet’s domain name system.
18
ICANN: The Numbers
• 21 Generic top-level domains (gTLDs) (such as .com, .net, .org)
• 11 Internationalized domain names (IDNs) (such as δοκιμή, 測試 , and .(إختبار
• 308 Country-code top-level domains (ccTLDs) (such as .au, .ca, .jp., and .uk)
20-21
23-25
22-23
ICANN: The Future
1st Q 2010: Expected launch of new gTLD Program
• “Four overarching issues”:• Trademark Protection• The Economic Analysis of new gTLDs• Financial Analysis• Objection Process
ICANN ADR
• Uniform Domain-Name Dispute-Resolution Policy (UDRP) (1,823 cases in 2006)
• Ask:- what language?- what jurisdiction if challenged?-domain name identical/confusingly similar?- no legitimate rights/interests?- bad faith?
Pages 26-27
Trademark Traps
• Did Not Use The ACPA To Get Rid Of A Cybersquatter 29
ACPA
• Anti-Cybersquatting Consumer Protection Act (“ACPA”)
• Elements:• bad faith intent to profit• registers, traffics in, or uses name:
• identical or confusingly similar, OR• dilutes famous mark
Pages 29-47
ACPA’s Advantages
• Liability without • regard to the goods or services of the parties• commercial use
• In rem action against domain name IF• In personam jurisdiction impossible, OR• Can’t find defendant
Page 30
Page 31
ACPA In Rem Actions
• Sue in judicial district of registrar or registry
• ~ 900 current ICANN accredited registrars for generic TLD’s
• ~310 are located outside the U.S.• ~300 more country code TLD’s
31
Copyright Traps• Creator Was Not An Employee
• Outside Employee’s Job Scope
• Creator Did Not Assign Copyrights
• Violated website’s “terms of use”
51
52
53
53
• Facebook sued Power-Ventures for collecting information from Facebook’s website
• Users must assent to “Terms of Use”• PV “scrapes” user data from Facebook
on behalf of registered users
New case
Copyright Traps - Websites
• Website = protected compilation • Accessing a website = copying
Ticketmaster L.L.C. v. RMG Techs, Inc., 507 F. Supp. 2d 1096, 1106 (C.D. Cal. 2007) (granting preliminary injunction).
• Denied motion to dismiss. Facebook v. Power-Ventures, 2009 U.S. Dist. LEXIS 42367 (N.D. Cal. 5-11-09).
New case
Copyright Traps - Websites
Trade Secret Traps
• Ex-Employer Gave Valuable Trade Secrets
• Ex-Employee Took Negative Knowledge
• Combination of Known Elements Taken Was Unique
56
Privacy & Other Traps
• Website Attracted both children and the FTC.
• Hijacked & Mousetrapped Surfers
58
59
Patent Forms
• 1. Corporate policy for protecting IP 61
• 2. Invention assignment66
• 3. Employee promise to assign 68
• 4. Encouraging innovation70
• 5. Invention disclosure 75
60-75
Trademarks, Trade Secrets,& Copyrights
• Guidelines for selecting trademarks 77
• Employee promise to keep secrets 78
• Copyright assignment from contractor 82
77-83
Patent Websites• Searching & Fees:
uspto.gov• Examiner’s manual: same• Free pdf copies:
pat2pdf.org• Foreign patents: wipo.int• Law:http://uscode.house.gov/search/
criteria.shtml
84
Trademark Websites
• Searching & Fees: uspto.gov
• Examiner’s manual: same• Domain name disputes:
icann.org• Law:http://uscode.house.gov/search/
criteria.shtml
85
Copyright Websites
• Searching & Fees: copyright.gov
• Law: copyright.gov/title17
85
Copyright Enforcers
• CCC: www.copyright.com• ASCAP: www.ascap.com• BMI:
www.bmi.com/home.asp• RIAA: www.riaa.com• BSA: www.bsa.org
86
Winston Churchill
Success is not final,
failure is not fatal:
it is the courage to continue
that counts.
Thanks
For
Listening!
Tim Headley & Sarah Beth Foley