The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10. Presenting a live 90-minute webinar with interactive Q&A Wearable Technology: Protecting IP Rights and Minimizing Infringement Risks Leveraging Utility Patents, Design Patents, Trademarks and Trade Dress to Safeguard IP Today’s faculty features: 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific TUESDAY, AUGUST 23, 2016 John M. Augustyn, Shareholder, Leydig Voit & Mayer, Chicago Rod S. Berman, Partner, Jeffer Mangels Butler & Mitchell, Los Angeles
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The audio portion of the conference may be accessed via the telephone or by using your computer's
speakers. Please refer to the instructions emailed to registrants for additional information. If you
have any questions, please contact Customer Service at 1-800-926-7926 ext. 10.
Presenting a live 90-minute webinar with interactive Q&A
Wearable Technology: Protecting IP Rights
and Minimizing Infringement Risks Leveraging Utility Patents, Design Patents, Trademarks and Trade Dress to Safeguard IP
• Overall shape and appearance: the goodwill • Where are 3-D marks protected? • UK design rights and industrial designs • Functional product configuration not protected; “serves no purpose other than identification.” Test:
– Does design yield a utilitarian advantage? – Are alternative designs available? – Do ads tout utilitarian advantages? – Does the design result from a comparatively simple or inexpensive method of manufacture? – As compared to design patents, more strictly applied due to the long life of trade dress – PTO could consider red color and heart shape for a heart monitor aesthetically functional
• Must be distinctive – work with advertisers to use "look for" advertisements but not touting functional features (Apple® doomed); secondary meaning for products; (for secondary meaning for product)
• Distinctive packaging • Trend may pass before rights obtained • Apple v. Samsung – trade dress was functional; design patents worked
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DESIGN PATENTS
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IP Issues for Wearable Technology
DESIGN PATENTS
• Apple hired Paul Deneve from Yves Saint Laurent • Ornamental Features not “dictated solely by” the way it
works or operates • The Ergonometric concept and functionality test:
– Does the protected design represent the best design?
– Would alternative designs adversely affect the utility of the article?
– Any utility patents? – Functional touting in advertisements? – Is the overall appearance or elements in the
design not clearly dedicated by function? • Google Glass (Exhibit B) • Way to recoup investment in design cost; cf. Trade dress
(avoid confusion and protect investment in marketing) • Cost and term of life • May acquire rights faster than trade dress • May have both design patent (black and white) and
trade dress (color)
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COPYRIGHT
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IP Issues for Wearable Technology
Copyright
• Whose law applies?
• Incorporation of music
• Instructions
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COMPARISONS
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Intellectual Property Right
Protects Doesn't Protect How to Acquire
Rights Time to Obtain
and Lifetime Registerability Cost Enforcement
Standard for Infringement
Damages Foreign Issues Select Miscellaneous
Issues
Trade Dress
Source indicia; overall
appearance and image of a
product
Functional features
Use and registration -
Federal and State
Average 1.5 years to register;
potentially foreve
Need to show distinctive - 5 years of use - promote; Costly to prove secondary meaning - could be
millions of $s of promotional activities
Registration about $2500 with 2(f);
extra costs to file affidavits and
renewals
Federal or State Court/Customs
Must Show Non-functional; and
likelihood of confusion factors; survey evidence
Actual damages or lost profits; attorneys'
fees; corrective advertising; treble
and statutory damages; injunction
Generally no common law; color
might not be registerable
Utility patent not helpful
Product must have secondary
meaning; packaging can be inherently
distinctive
Can obtain conclusive
right to use, and strong presumption of validity
Laws vary by Circuit,
e.g., aesthetic functionality; ITC
"color"
Design Patent
Ornamental features of article of
manufacture
Functional features; prior
art
Federal registration
Average 18 months to
issuance; 15 years Yes, presumed valid
To issuance about $3,000; no
maintenance fees Federal Court
Ordinary observer as informed by
prior art finds two designs
substantially similar; expert
testimony
Lost profits, damages, infringer's total
profits; attorneys' fees; treble damages;
injunction
Can Register Utility patent not helpful
"black and
white"
Just Federal Circuit law; ITC
Copyright Expressions of
ideas Functional
ideas
Immediately when fixed in tangible form
Over 70 years; can obtain
certificate in 10 days
Yes, presumed valid About $250 Federal
Court/Customs
Access and substantial
similarity; expert testimony
Damages, statutory damages, attorneys' fees and injunction
Need to show proof of ownership; can register in some
countries, e.g., China
Utility patent not helpful
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PARTNERSHIPS AND OTHER AGREEMENTS
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IP Issues for Wearable Technology
Partnerships and Other Agreements
• Who owns the patent rights in a collaboration?
• Google partnership with Ray Ban and Oakley
• Use of exclusive requirements and supply agreements to "secure" IP rights – sourcing, outsourcing, and license (patent, copyright or trademark)
• Jawbone patent lawsuit prior to FitBit IPO – a settlement tool?
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Rod S. Berman Jeffer Mangels Butler & Mitchell LLP