Intellectual Property Law Primer For Manufacturers · Intellectual Property Law Primer For Manufacturers ... before the Patent and Trademark Office . ... distinctiveness and non-functional,

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

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http://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



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.



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.



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.



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



What a Patent Looks Like



Drawings



Specification of Patent



Claims of a Patent



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.



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



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



Design Patent: Examples of Protectable Designs

Overall product designs Partial designs/ornamentation Packaging Patterns Fonts Icons



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



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”)



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).



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



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)



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



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



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



Examples of Trademarks



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.



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



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.



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.



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



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



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



Possible Trademark Violations



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



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



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



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



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



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.



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



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.



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



Proving Infringement

Direct evidence of infringement Circumstantial evidence of infringement: Access to copyrighted work Unlawful copying - substantial similarity



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



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



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



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



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



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.



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



Miscellaneous – Related Issues

Some insurance policies provide coverage for certain forms of intellectual property disputes

Cybersecurity – hackers are seeking confidential company secrets and technology



Questions?

Thank you!


Intellectual Property Law Primer For Manufacturers · Intellectual Property Law Primer For Manufacturers ... before the Patent and Trademark Office . ... distinctiveness and non-functional,

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