A PRIMER ON INTELLECTUAL PROPERTYBritten Sessions and Bill Baker contributed to this article
What is Intellectual Property?
Intellectual Property (or “IP”) is loosely defined as some type of a creation, and may include an invention, an artistic work, a name, an image, or a symbol. For purposes of this primer, intellectual property is divided into five main categories: patent, copyright, trademark, trade dress, and trade secrets.
A. Basic Example
To begin our discussion, let’s look at a good example of intellectual property that you might find in a hypothetical company XYZ. Such a company may have a core invention (a product) that is the basis for the company, which is eligible for patent protection. Additionally, XYZ may use a secret system to produce the product, which system may be eligible as a trade secret. After the product is produced, the product must be marketed and sold to the public. In displaying its name to the world, XYZ may protect its brand through a trademark, and promote a distinctive image in its packaging by way of a uniquely distinguishing trade dress. Further, any literature that is produced (e.g., instruction manuals, websites, etc.) may be eligible for copyright protection. Although this is just one possible example, you can see very quickly how intellectual property provides protection from many angles.
B. Importance of Protection
Intellectual property is considered a property right, meaning that it is a right that belongs to the owner. According to the Universal Declaration of Human Rights (1948), the creation of which the United States played an active role, Article 27 states:
- Everyone has the right freely to participate in the cultural life of the community, to enjoy the arts and to share in scientific advancement and its benefits.
- Everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.
The Universal Declaration of Human Rights therefore provides a foundation for creators to receive protection for any creation. Additionally, other intellectual property rights may be found in the Paris Convention for the Protection of Industrial Property (1883), which focused on industrial property (e.g. patents, trademarks, trade secrets, etc.), and the Berne Convention for the Protection of Literary and Artistic Works (1886), which focused on copyrights. In addition, the United States has provided specific statutory protection for intellectual property.
In addition to defining the ‘what’ of intellectual property, it is also important to recognize the ‘why.’ As illustrated above with our XYZ example, intellectual property can permeate into almost any and all facets of a business. The National Chamber Foundation has indicated that counterfeiting and piracy cost the United States alone $200 to $250 billion per year.  National Chamber Foundation, “What are Counterfeiting and Piracy Costing the American Economy?” (2005), available at … Continue reading So protecting intellectual property isn’t simply a theoretical exercise, it is a necessity in order for a business to survive.
The U.S. Department of Commerce has further indicated that theft of intellectual property related items stifles innovation, slows economic growth, and weakens the competitiveness of U.S. employers. U.S. Department of Commerce, About STOPfakes, available at http://www.stopfakes.gov/about. Intellectual property theft therefore has an impact on innovation, commercialization, and the economic success of the entire nation. Id. Beyond these considerations, intellectual property protections act as an incentive to creators, for they are guaranteed a right and a reward Reward may include obviously monetary gains, but additionally public recognition and notoriety, etc. for their effort. Intellectual property is therefore worth protecting.
Patents relate to bestowing exclusive rights to the creation of an invention. Specifically, a patent grants a right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States for a limited duration.
A. What Can You Patent?
As an inventor, you can obtain a patent for anything that is a product of human creation. Under Federal law, however, you must also be certain that the invention in question is:
As we discuss the three types of patents below, we will explore what “new,” “useful,” and “nonobvious” mean in the contest of patentability of an invention.
B. Patent Types
Three types of patents exist: utility patents, design patents, and plant patents. A utility patent typically protects the way an article is used and works. A design patent protects the visual aspects of an invention—the way an article looks. And finally, a plant patent involves the discovery and asexual reproduction of any new variety of plant.
1. Utility Patent
As we discussed above, patent protection may be granted for a utility patent where the invention is new, useful, and nonobvious. It makes logical sense that the invention must be new, for what benefit would be conferred on recreating that which has already been done? An invention is generally useful if it is capable of use or benefit. Useful is generally construed in a broad way. If the invention has some potential use, then it may be considered sufficient for this requirement. Additionally, the idea behind a requirement of nonobviousness is that normal routine research or effort should not be sufficient to get a patent. Because a patent will grant a temporary monopoly, the requirement that the invention be more than mere routine would make sense—the incentive is a temporary monopoly in exchange for something that is greater than simply a product of a normal or routine system.
A utility patent lasts for twenty years from the first date of priority. Additionally, the United States in March 2013 began adopting a “first-to-file” patent system, consistent with a majority of international countries’ patent systems. The change to a “first-to-file” system means that greater emphasis is now on the date that the patent application is filed. Prior to March 2013, the focus was on a “first-to-invent.” An inventor could show he was the true inventor by producing documents showing the date of actual invention. With a “first-to-file” system, however, the first inventor In order to file for a patent under the “first-to-file” system, it is important to remember that one must still be the “inventor” in order to be eligible to file for a patent under the … Continue reading to file with the patent office gets the benefit of potentially receiving a patent.
Utility patent applications come in two flavors: provisional and non-provisional. In general, a provisional application requires a specification (e.g. a description of the invention, etc.), a drawing if it is necessary to the understanding of the invention, and a fee. Many times, an inventor will provide a conference paper, a scientific publication, or in-house research material as the basis for a provisional application specification. Additionally, although not a requirement, a patent attorney will oftentimes insert at least one claim relating to the invention. A provisional application only lasts for one year. By that time, a non-provisional patent must be filed in order to preserve patent protection.
A provisional patent application is only as good as the content that it contains. In essence, the provisional application stands as a place holder to whatever is disclosed. So if the ‘real’ invention is disclosed later in the non-provisional application, the provisional will oftentimes not be of any benefit. Priority to a provisional application is only conferred when that which is granted in the actual patent was originally disclosed in the provisional application.
A non-provisional patent application requires a specification, one or more claims, drawings when necessary, an oath or declaration, and a fee. It should also be noted that with both the provisional and non-provisional applications, specific page and application formats must be observed in order for it to be accepted by the United States Patent and Trademark Office (USPTO). As indicated above, a provisional application will act as a place holder in establishing priority of when the inventor filed for patent protection. Unlike a provisional application, a non-provisional application will actually start the patent review process. Again, although it may be obvious, provisional and non-provisional applications do not grant the inventor the full rights of a patent until an actual patent is issued. The American Inventor Protection Act of 1999 Section 154(d) introduced “Provisional Rights” which may begin on the date of publication of the application. Such provisional rights relate … Continue reading
Once a patent issues, maintenance fees must be paid in order to keep the patent active. The USPTO generally charges the following fees for maintaining in force all patents based on applications filed on or after December 12, 1980:
- 2 years and 6 months after grant: $980
- 7 years and 6 months after grant: $2,480
- 11 years and 6 months after grant: $4,110
2. Design Patent
A design patent covers the visual, ornamental features of an invention. Like a utility patent, it must also be novel and non-obvious. Generally, an ornamental feature includes a feature lacking any practical utility (i.e. the sole purpose of the feature is aesthetic, etc.). Design patents are valid for 14 years from the issue date and do not have any maintenance fees. Additionally, they are relatively easy and inexpensive to get, but can be a powerful source of protection. For example, design patents have given Apple Computers, Inc. considerable power in safeguarding its products from knock-off imitations. See, e.g., Jim Davis, “Apple wins round in iMac knockoff suit,” September 20, 1999, available at http://news.cnet.com/Apple-wins-round-in-iMac-knockoff-suit/2100-1001_3-232617.html; see also U.S. … Continue reading Additionally, another common example may include the Coca-Cola Bottling Company’s iconic Coke bottle shape, which received design patent protection in 1915.
3. Plant Patent
Plant patents relate only to asexual plants (i.e. the ability to reproduce exact replicas of the plant). Like a utility patent application, plant patents have both provisional and non-provisional applications, and the requirements are almost the same as the utility patent application. To be eligible to file a patent application, inventorship must be satisfied, which includes: 1) discovery or selection of a new and distinct plant; and 2) that the plant is asexually reproduced. Beyond the requirements, plant patents are known for their beautiful full color images and drawings. The plant patent lasts for 20 years from the issue date and also gives the owner the same exclusive right as a utility patent.
Plant patent protection is largely accredited to the work of Luther A. Burbank, a renowned botanist and horticulturist. He was known to have developed 800 strains of plants, including fruits, flowers, grains, grasses, and vegetables. His work spurred the passing of the 1930 Plant Patent Act, four years after his death. Interestingly, 16 plant patents were issued to Burbank even after his death.
Patent protection by registration through the USPTO is an extremely valuable and powerful tool to have at your disposal. Patents are designed to protect the ultimately commercial interests from your new, useful, and nonobvious invention, and with proper registration, you or your business can enjoy exclusive rights to the commercial benefits of your invention for many years in the future.
D. Business Interests
Patents promote business by protecting the revenue stream that derives from your popular invention.
1. “Territorial” Protection
One key to a business remaining viable and profitable is to ensure that the company retains as much “market share” as possible. Patents on your technology help ensure that your products, not the products of your competitor, are the ones prevalent in the market place. That market share translates into revenue, which ultimately translates into business viability and growth.
Ever-increasing patent holdings ensure that your business maintains its “territorial edge” over competitors by constantly expanding into new and tangential areas of your products’ market. Thus, your business reaps the benefits of sales of the technology merely by ensuring that, through patent protection, your competitors are not able to encroach upon your market share by offering identical competing products.
Another key advantage to patents is to be able to charge license fees to other market participants, including your own competitors. If your business owns the patent on a piece of technology so ubiquitous and desirable in the market that no product without that element will see any notable sales, you have the ability to keep the entire market for that particular product to yourself. Or, you can deliberately open the market to other competitors, simultaneously ensuring that your business realizes a share of every sale. This is done by way of the technology license.
Instead of working tirelessly to be the only provider in the market selling goods of a particular type, you can, in fact, increase your business revenue simply by licensing the critical technology for which you hold a patent, essentially ensuring that you get a piece of every sale in the industry—even sales by your direct competitors.
E. Filing Process
After a patent application is carefully drafted such that the claimed invention is distinguishable from any known prior art, the patent application may be ready for filing. The particular filing requirements may differ depending on whether the patent application will be filed as non-provisional, provisional, or a continuing application. Filing an international patent application is beyond the scope of this guide and will not be discussed herein.
A variety of different forms are required from the initial filing of a patent application to the issuance thereof as a patent.
F. Infringement and Enforcement
Patent infringement claims are made every day. Some of them are smaller, simple matters that work themselves out by way of an uncontentious settlement negotiation thus enabling the patent holder to efficiently and amicably enforce their property rights against infringement. Some infringement claims, however, are not dealt with so peacefully.
In an extreme example of complexity and exorbitant expense, Apple and Samsung, starting in 2010, engaged in a massive, years-long patent infringement suit and counter suit involving the technologies integrated into the iPhone and Galaxy mobile devices. In their actions, each company claimed multiple infringements upon its patents by the other. Many hundreds of attorney hours and many millions of dollars in attorney fees later, Apple won on some actions, while Samsung won others. In short, patent litigation can last for years and cost potentially hundreds of thousands, if not millions, of dollars.
Trademark relates to protecting a word, name, symbol, device, or combination thereof used in commerce in connection with a product. Additionally, non-conventional trademarks may include a color, smell, or sound.Service marks are almost identical to a trademark except that the protection is applied to a service rather than a product.
A. What Can You Trademark?
Trademark is governed by both Federal and State law, although most of the protection stems from the Lanham Act (originally enacted in 1946 and recently amended in 1996).
In order to qualify for a trademark, the mark must be distinctive, meaning that the mark is different enough from other goods or marks in a market as to not easily confuse a consumer. Trademarks are generally classified into one of four categories: arbitrary/fanciful, suggestive, descriptive, and generic. See Zatarain’s, Inc. v. Oak Grove Smoke House, Inc., 698 F.2d 786 (5th Cir. 1983) Interestingly, the laws and requirements for a trademark depend upon which category the trademark falls within.
Generally, if a mark is classified as arbitrary/fanciful or suggestive, then it is considered to be inherently distinctive and rights are determined by priority of use.
If a mark is classified as descriptive, then rights may be determined if it has acquired a secondary meaning. Secondary meaning is when the public understands the mark to mean something beyond the words and/or images of the mark. A good test in analyzing secondary meaning is whether the source of the mark (e.g. the company name) rather than the product itself has acquired a meaning.
If a mark is classified as generic, no rights are conferred. A product or service name may become generic over time. Companies many times face a hard struggle to promote their product or name. However, if the name becomes too popular, then they face the struggle of the mark becoming “genericized.” This is also sometimes called “genericity.” For example, the terms aspirin, linoleum, thermos, videotape, and zipper all had valid trademarks at one time, but because the term came to represent or describe a general category rather than a specific product, the mark became generic.
Some common examples of powerful trademarks include the Nike Swoosh, the Google name, and Rolex.
Rights to a trademark may be acquired either by being the first to use the mark in commerce or by being the first to register the mark with the USPTO. Of course, as indicated above, if secondary meaning is required, then it must also be established before being eligible for a trademark. Additionally, a person who has a “bona fide intention” to use a trademark may also apply for a trademark.
A trademark technically can last indefinitely as long as it is properly renewed. However, a trademark may be lost through no longer using the mark, improper licensing/assignment, This is sometimes referred to as “naked licensing.” or genericide.
C. Filing Process
The requirements for filing a trademark include paying a fee, providing information (such as an address) about the applicant, furnishing a sample of the product, and a providing a statement regarding the mark. The statement may include such things as indicating that the applicant is the owner of the mark, that the mark is in use in commerce, and that no other person (to the applicant’s knowledge) has a right to the mark.
Before applying for a trademark, to help minimize potential conflict claims from the USPTO examining attorney, it is always advisable to conduct a search of existing trademarks registered (or applied for) with the USPTO—like conducting a prior art search for patent applications—to be sure that you are not wasting time and money filing an application for a mark that is not adequately distinguishable from an existing mark already out there in the market.
D. Infringement and Enforcement
The key motivation behind seeking to minimize or eliminate trademark infringement is to avoid consumer confusion in the market place. If there is a specific brand or product that you prefer over others, you want to trust that the product you see on the shelf is the product you seek, made by the people you believe produced it.
Trademarks are registered with the USPTO in either the Principal or the Supplemental Registers. Although registration is not required for legal protection, registration offers several advantages. In the Principal Register, a registrant gains nationwide constructive use and constructive notice, preventing others from using or registering that registrant’s mark(s). Further, a registrant in the Principal Register gains incontestable status after five years, which eliminates many of the ways for another party to challenge the registration. Registration under the Supplemental Register allows the registrant to protect its marks in foreign countries, although the protections are much more limited than protections under the Principal Register in the U.S.
Even with the tens of thousands of trademark registrations currently active with the USPTO, trademark infringement still takes place in many places and in many ways.
Enforcing trademark rights can be a relatively straight-forward “notify-and-request-compliance” type of interaction, or it may involve significant time and financial expense to litigate in a court of law.
Where infringement has been inadvertent and/or committed by a party who is merely unaware that they are infringing upon another’s registered mark, a simple cease and desist request and perhaps injunctive relief (a restraining order) from the court can usually suffice to address the problem. If there is a lot of revenue and market share at stake for both parties, however, large-scale litigation and drawn out evidentiary proceedings may be required to resolve the issue.
Copyright relates to bestowing exclusive rights to the creator of an original work. The Copyright Act of 1976, adopted as law in Title 17 of United States Code, remains the primary basis of copyright protection in the United States.
A. What Can You Copyright?
Copyright protection covers works of authorship, which include:
- Literary works
- Musical works, including any accompanying words
- Dramatic works, including any accompanying music
- Pantomimes and choreographic works
- Pictorial, graphic, and sculptural works
- Motion pictures and other audiovisual works
- Sound recordings
- Architectural works
Copyright owners enjoy many rights as authors of an original work, including the right to make a copy of the work, prepare derivative works, distribute copies to the public (including selling, renting, leasing), as well as perform and display the work publicly.
The issue may arise as to who is eligible for a copyright. Generally, the creator of the work (or those deriving rights from the creator) is eligible for the protection. However, “works made for hire” is an exception to the general rule, and generally includes works made by an employee within the scope of his/her employment.
B. Copyright Protection
1. When Active
Copyright protection begins immediately and automatically when the work is created. Creation is defined as the time “when it is fixed in a copy or phonorecord for the first time.” See, e.g., 17 U.S.C. 101. In essence, the work must be in a tangible form. Additionally, where a work is prepared over a period of time, the portion of it that has been fixed at any particular time constitutes the work as of that time, and where the work has been prepared in different versions, each version constitutes a separate work.
Additionally, for a work created on or after January 1, 1978, protection lasts until the end of the author’s life plus an additional 70 years after the author’s death. For an anonymous work, a pseudonymous work, or a work made for hire, the copyright lasts “for a term of 95 years from the year of its first publication, or a term of 120 years from the year of its creation, whichever expires first.”
Generally, a copyright notice may include a symbol or word “copyright (or copr.),” the name of the copyright owner, and the year of first publication (e.g., © 2015 Britten Sessions, etc.). Although it is no longer necessary to give notice of copyright protection (since 1989), it may still be beneficial as it would remove the defense of innocent infringement if copyright enforcement measures are needed later.
Understandably, the greatest benefit afforded by copyright protection is the ability to reap the commercial proceeds from a poplar artistic creation, exclusively. That is, the author gets the commercial benefit of sales and licensing for their creation to the entire world.
A good example of copyright benefit derived from proper protection is the Superman comic strip character. In 1938, Shuster and Siegel, the co-creators of the character, sold their creation (including the comic strip, title, names, characters and conception) to DC Comics for a mere $130. Dean, Michael, “An Extraordinarily Marketable Man: The Ongoing Struggle for Ownership of Superman and Superboy,” The Comics Journal (263): 13–17 (October 14, 2004). In 1940, the Saturday Evening Post reported that each creator was being paid $75,000 a year, while millions were being made in Superman profits. In 1947, Siegel and Shuster sued to void the 1938 contract and the re-establishment of their ownership of the intellectual property rights to Superman. The case was settled out of court supposedly for $94,000. In 1973, Siegel and Shuster again filed suit and claimed ownership of Superman (based on expiration of copyright protection). They lost, both at the district court and then at the appellate court. See, e.g., Siegel v. National Periodical Publications, Inc., 364 F.Supp. 1032 (1973); Jerome Siegel and Joseph Shuster v. National Periodical Publications, Inc., et al, 508 F.2d 909 (1974). In 1996, Siegel died, and in 1999, Siegel’s estate filed a copyright termination notice. Nonetheless, the rights to Superman continue to be litigated. See, e.g., Joanne Siegel and Laura Siegel v. Time Warner Inc. et al, Case No. CV-04-8776-SGL (Cal. Central District 2007); Laura Siegel Larson v. Warner Bros. Entertainment et al., No. … Continue reading
As shown, the rights to the Superman comic were highly sought after. For the owner of the copyright protection, Superman brought (and continues to bring) millions of dollars of revenue. The character has truly been a success for nearly 70 years. Such is the power of copyright protection. With it, the owner can enjoy all of the privileges and benefits associated with the creation. Without it, the owner is powerless.
C. Infringement and Enforcement
Claiming the rights of copyright protection as the original author of an artistic work is all fine and good, but what happens when a third party actually infringes (deliberately or inadvertently) upon your copyright and gains a commercial benefit?
Usually you can enforce your rights against individuals or entities who have committed an act of infringement by sending a simple cease and desist letter. In the letter, you point out that you have a copyright on the material infringed upon as established by “1, 2, and 3,” and that you would appreciate (and expect) the other party to cease using your copyrighted material for commercial gain immediately. In response, most reasonable parties—particularly those who have infringed upon your rights inadvertently—will comply and that will be the end of the issue. But enforcement isn’t always that simple and painless.
Other more nefarious third parties may require increased levels of active enforcement. In some cases, court-ordered injunctions (restraining orders) may be the way to enforce your property rights. Greater still, certain situations may require actual civil litigation, where both parties expend vast amounts of time and money arguing their position in a court of law, like Siegel and Shuster undertook against DC Comics above.
Similar in concept and applicability to trademark, trade dress involves and relates to protecting the proprietary characteristics of the visual appearance of a product and/or its packaging that signify the source of the product to consumers. Often, trademark and trade dress go hand in hand.
Like trademark words or symbols, trade dress enforcement is intended to protect consumers from packaging or appearance of products that are designed to imitate other products; to prevent a consumer from inadvertently purchasing a product under the belief that it is another.
Trade dress examples are everywhere. A good example is the distinctive white box with the Apple Computer logo that serves as the packaging for Apple’s well-known iPhone and iPad mobile device product lines. The packaging is distinctive and easy to pick out from a shelf full of other similar products at your local retailer. If you are looking for an iPad, they are easy to spot (when they are in stock).
Other examples include the shape, color, and arrangement of the materials of a children’s line of clothing, which can be protectable trade dress (though, the design of the garments themselves is not protected) because of the manner in which the clothes are displayed for purchase, as well as the graphic design of a periodical cover, the exterior appearance and décor of a chain of restaurants (think of McDonalds and ‘TGI Fridays), and even a method of displaying power tools in a “functional” display at the local hardware store.
Like trademarks registered with the USPTO, trade dress is legally protected by the Lanham Act. You can also register trade dress with the USPTO in either the Principal or the Supplemental Registers. Remember that, although registration is not required for legal protection, registration offers several advantages that make it much easier to enforce your rights than having to go through the process of submitting reams of evidentiary documentation to the court during litigation.
Broadly speaking, trade secrets include any information or process which provides a competitive edge. Trade secrets must not be known or reasonably ascertainable. United States law provides that a trade secret may be protected if:
- The owner thereof has taken reasonable measures to keep such information secret; and
- The information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, the public.
A. Keeping it Secret
Usually, a trade secret is kept within a company by some type of an agreement, such as a NDA. Additionally, although it has a sense of folklore, some assert that a trade secret may be divided up between several individuals within a company so that no “one” individual has the complete knowledge. I’ve heard this with respect especially to companies that have a highly desired “recipe.”
Although it is perhaps obvious, a trade secret remains in force only as long as it is a secret. In order to enforce trade secret rights of ownership, you must be able to demonstrate that you have undertaken adequate steps to keep your secret from the public. Without a showing that you have tried to keep your recipe or formula within the confines of your business, a court of law may rule against your assertion that you did your best to keep it a secret. Some famous trade secret examples include the Coca-Cola recipe, Google’s propriety search algorithm, Mrs. Field’s cookie recipe, the WD-40 formula, and the Kentucky Fried Chicken recipe.
B. Misappropriation and Enforcement
Misappropriation (stealing) a trade secret is a very serious matter that requires the aggrieved party/business to seek damages from the misappropriator in a court of law for its loss.
Because the owner of a trade secret does not enjoy any Federal protection from an entity like the USPTO for patents and trademarks, when a third party misappropriates a trade secret, the only source of enforcement law are state statutes providing what level of protection the legislature has provided. Damages typically include compensatory recovery for any ascertainable lost revenue due to having had its treasured formula or recipe made public, possible injunctive relief to attempt to halt further disclosure and/or use of the secret, and potential punitive damages for the knowing, nefarious misappropriation of the secret in question.
Comparison of IP Elements
We have just finished doing a general review of each of the categories of intellectual property. The former discussion was not intended to be an exhaustive analysis. In fact, each of the categories merit and warrant a separate book and course. Rather, it was meant to give you a bird’s-eye perspective of intellectual property. The following charts give a cross comparison of all of the categories for a variety of basic questions.
|What is Protected?|
|Copyright||“Original works of authorship”|
|Patent||Products, processes, designs, plants|
|Trademark and Trade Dress||Word, name, symbol, device (with a product; a service mark relates to a service)|
|Trade Secret||Business secret|
|What Symbol Represents the Protection?|
|Copyright||©, copyright, copr.|
|Trademark||TM, SM, ®|
|How to Register?|
|Copyright||Library of Congress|
|Patent||United States Patent and Trademark Office (USPTO)|
|Trademark and Trade Dress||USPTO|
|What are the Conditions to Get?|
|Patent||Uniqueness, novelty, non-obviousness|
|Trademark and Trade Dress||First to file; first to use|
|Trade Secret||Create a secret|
|What is the Duration?|
|Copyright||Life + 70 years|
|Patent||20 years (utility and plant); 14 years (design)|
|Trademark and Trade Dress||While in use|
|Trade Secret||While in secret|
Throughout this book, we have briefly looked at some of the benefits of patents, trademarks, copyright, trade dress, and trade secrets. However, it should be understood that no single element of intellectual property associated with your business or product provides comprehensive coverage and protection. Just as a healthy balance enhances any aspect of one’s personal life, balancing and mixing one or more elements of intellectual property is essential to maintaining a healthy business strategy for any company. See, e.g., Mazzoleni et al., The benefits and costs of strong patent protection: a contribution to the current debate, Research Policy 27:273-284 (1998); Elhanan Helpman, Innovation, Imitation, and … Continue reading
|↑1||Britten Sessions and Bill Baker contributed to this article|
|↑2|| National Chamber Foundation, “What are Counterfeiting and Piracy Costing the American Economy?” (2005), available at http://www.fnal.gov/directorate/OQBP/sci/sci_reference_docs/SCI%20Costs%20to%20Economy%20U.S.C.hamber.pdf.|
|↑3||U.S. Department of Commerce, About STOPfakes, available at http://www.stopfakes.gov/about.|
|↑5||Reward may include obviously monetary gains, but additionally public recognition and notoriety, etc.|
|↑6||Useful is generally construed in a broad way. If the invention has some potential use, then it may be considered sufficient for this requirement.|
|↑7||In order to file for a patent under the “first-to-file” system, it is important to remember that one must still be the “inventor” in order to be eligible to file for a patent under the “first-to-file” system. Simply seeing an invention and then rushing to the patent office to file before the actual inventor does not grant one protection. The filer must also be the inventor.|
|↑8||The American Inventor Protection Act of 1999 Section 154(d) introduced “Provisional Rights” which may begin on the date of publication of the application. Such provisional rights relate generally to the right to receive a reasonable royalty during the period the patent undergoes patent review.|
|↑9||See, e.g., Jim Davis, “Apple wins round in iMac knockoff suit,” September 20, 1999, available at http://news.cnet.com/Apple-wins-round-in-iMac-knockoff-suit/2100-1001_3-232617.html; see also U.S. Pat. No. D580,387 (iPhone design), U.S. Pat. No. D504,889 (iPad design), U.S. Pat. No. D478,310 (power adapter).|
|↑10||See Zatarain’s, Inc. v. Oak Grove Smoke House, Inc., 698 F.2d 786 (5th Cir. 1983)|
|↑11||This is also sometimes called “genericity.”|
|↑12||This is sometimes referred to as “naked licensing.”|
|↑13||See, e.g., 17 U.S.C. 101.|
|↑14||Dean, Michael, “An Extraordinarily Marketable Man: The Ongoing Struggle for Ownership of Superman and Superboy,” The Comics Journal (263): 13–17 (October 14, 2004).|
|↑15||See, e.g., Siegel v. National Periodical Publications, Inc., 364 F.Supp. 1032 (1973); Jerome Siegel and Joseph Shuster v. National Periodical Publications, Inc., et al, 508 F.2d 909 (1974).|
|↑16||See, e.g., Joanne Siegel and Laura Siegel v. Time Warner Inc. et al, Case No. CV-04-8776-SGL (Cal. Central District 2007); Laura Siegel Larson v. Warner Bros. Entertainment et al., No. 2:04-cv-084400-ODW-RZ (9th Cir. 2013).|
|↑17||I’ve heard this with respect especially to companies that have a highly desired “recipe.”|
|↑18||In fact, each of the categories merit and warrant a separate book and course.|
|↑19||See, e.g., Mazzoleni et al., The benefits and costs of strong patent protection: a contribution to the current debate, Research Policy 27:273-284 (1998); Elhanan Helpman, Innovation, Imitation, and Intellectual Property Rights, Working Paper No. 4081, National Bureau of Economic Research (May 1992).|