IP Final Flashcards
What is a patent?
A right to exclude others from practicing the invention for a term of 20 years. Patents are a limited monopoly in exchange for the public disclosure of the invention. The policy behind patent law is to promote progress.
Types of Patents
- Utility
- Design
- Plant
Utility Patent
Granted to anyone who invents or discovers any new or useful process, machine, article of manufacture, composition of matter, or any new and useful improvement thereof
Design Patent
Granted to anyone who invents a new, original, and ornamental design for an article of manufacture
Plant Patent
Granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant
Patent Application Process
- Submit description of invention/patent claims + prior art
- Patent Office (PTO) assigns examiner
- Examiner evaluates if: a) it’s a new, useful process, or improvement; b) it’s entitled unless known/used in another country; c) it’s non-obvious
- If rejected by above, applicant may attempt to overcome by distinguishing prior art or revising claims.
* 2-5 year application window; protection begins at date of application.
Exceptions to Patentability
Laws of Nature
Products of Nature (natural phenomenon)
Abstract Idea
Laws of Nature
New minerals, plants, etc. found in nature are not patentable.
Think: Mayo Case - a new mineral discovered in the earth or plants in the wild is not a patentable subject matter; apply Mayo test
1. Is the patent aimed towards a patent ineligible concept, such as laws of nature?
Yes ->
2. Has some inventive concept been added?
Yes -> patentable.
No -> fails, not patentable.
Mayo Test (Patentability)
Test to be applied when a “law of nature” is seeking patentability.
First ask is the patent aimed towards a patent ineligible concept, like laws of nature? If yes, then ask…
Has some inventive concept been added?
If yes, may be patentable…
If no, fails the test, not patentable…
Products of Nature
Not patentable.
Think: Myriad case - test to identify breast cancer. Finding a genetic disposition is a discovery of a product of nature. There was no altering; just identifying.
Abstract Ideas
Not patentable.
Think: Alice case - abstract ideas are not patentable because monopolies over ideas threatens innovation. Affirms Mayo test, builds onto it.
Alice test:
First, ask is it an an abstract idea? If yes, then ask..
Does it contain an inventive concept sufficient to transform the claimed abstract idea into a patent eligible application? ie. does it provide an INVENTIVE CONCEPT?
Novelty & Priority
A patent must be novel.
AIA Rule - (post-2013) First to file -> priority
Former rule (pre-2013) was that the first to reduce the invention to practice is the inventor.
The second inventor may be the inventor if they were the first to conceive it, and that it works for the intended purpose (aka reduction to practice)
Patent Infringement
Burden is on the party asserting invalidity. Two types of direct infringement - literal & non-literal (DOE)
Literal Patent Infringement
Identical. Every element of the patent claim must be literally infringed.
Think: Lamari/SuperSoaker case. The SuperSoaker did not infringe because the housing of the tank language called a tank “therein” whereas the other had a tank on top.
Non-literal Patent Infringement - Doctrine of Equivalents (DOE)
Not literal, but accused device or process is equivalent to the claimed invention. It applies when the accused device preforms in basically the same way.
DOE applies because courts that people may get away with infringement by making minor changes.
Function-Way-Result test: preforms substantially the same FUNCTION, in a substantially same WAY, to obtain the same RESULT.
Prosecution History Estoppel (Patent Infringement)
Once a patent is narrowed, the patentee is estopped from making an equivalent claim on grounds between the original version and the new version.
Inducement (Patent Infringement)
Anyone who actively induces infringement is liable as the infringer.
Obviousness (Patent Infringement Defense)
A patent may not be claimed if the invention is obvious.
Lack of Novelty (Patent Infringement Defense)
Novelty is a requirement to patentability. Without novelty (new, original, or unusual) = no patent.
Patent Infringement Analysis Breakdown
- Claim construction
- Literal infringement
- Equivalent infringement
- Defenses to equivalent infringement (prosecution history estoppel)
- Affirmative defenses to infringement (obviousness, anticipation, lack of novelty)
Trade Secret
Information that derives independent economic value, actual or potential, from not being generally known and not being readily ascertainable by proper means by other persons who can obtain value from its disclosure or use.
Basically: Any information used in one’s business that gives the owner an opportunity to obtain an advantage over competitors and is the subject of efforts that are reasonable under the circumstances to maintain secrecy
Trade Secret Duration
Unlimited, until:
- It’s no longer a secret
- It’s independently developed
- It’s reverse engineered
Trade Secret Factors
(each to consider, not required)
1. The extent to which the info is known outside of Plaintiff’s business
2. The extent the info is known by employees and others involved in Plaintiff’s business
3. The extent of measures taken by the Plaintiff to guard the secrecy
4. The value of the information to Plaintiff’s business and their competition
5. The amount of time, effort, and money expended by the Plaintiff in developing the information
6. The ease or difficulty with which the information could be properly acquired by others or duplicated
Trade Secret Misappropriation
- Acquisition of a trade secret through improper means; or
- Disclosure or use of a trade secret either: in breach of a confidentiality obligation or that was acquired through improper means
Improper Means (Trade Secret Misappropriation)
Includes theft, bribery, misrepresentation, breach, or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means.
Note: Reverse engineering or independent derivation alone are not improper means.
DuPont v. Christopher (Aerial Shots Case)
Renting a plane and taking aerial shots of a building for reasons of finding out “secrets” is not a proper means of independent research.
This type of act is unlikely and unexpected and would require additional expenses to protect. Not a reasonable expectation.
Learning Curve Toys v. Playwood Toys (Toy Railroad Track Case)
Court analyzed the multi-factor test to determine that the realistic looking/sounding toy track is a secret. Reasonable measures were taken to preserve secrecy and the concept could not have been acquired or duplicated through proper means.
BondPro v. Siemens
Court analyzed factors. There must be reasonable steps to maintain secrecy. There was a confidentiality agreement, however, the idea was generally known to other businesses and another company developed a different method.
InCase v. Timex (Watch Display Case)
All forms of trade secret legislation require the trade secret owner to take reasonable measures to maintain secrecy.
Employer/Employee Relationship (Trade Secret)
Everything an employee acquires by virtue of employment, with exception of their compensation, belongs to the employer.
P&G v. Stoneham (Non-compete Case)
There was a reasonable non-compete clause in the Defendant’s work contract, so it was enforceable. Defendant’s work required confidential information and trade secrets after considering the employee’s ranking, process, and access to data.
Note: Reasonableness of non-complete clauses varies upon jurisdictions.
Copyright Protection
Copyright protection exists in ORIGINAL works of authorship, FIXED in any tangible medium of EXPRESSION, now known or later developed, form which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.
Requirements for Copyright Protection
- Originality and authorship
- Fixation
- Expression
Originality and Authorship (Copyright)
- Must be independently created (material must owe it’s origin to the author)
- Must have minimum quantum of creativity (minimal degree of creativity – like arrangement, selection, coordination, lighting, angles, etc. and must not be mechanical or routine)
The Non-Discrimination Principal
In copyright, the court will only assess whether the work has a minimal spark of creativity, not whether the work is highly artistic or mundane.
Think: Circus case - copying poster advertisements for circus. Court did not analyze whether the advertisements reached a level of art, just that they were copied.
Compilations (Copyright)
Originality exists in the selection, arrangement, and coordination of the facts. No copyright is awarded for “hard work”, there is no sweat of the brow theory.
Think: Feist (Phonebook case) Phonebooks are not original because they fall below the level of creativity. The selection/coordination of facts are not original.
Originality in Reproductions/Duplications (Copyright)
Duplications do not constitute independent creations.
Think: Meshwerks v. Toyota case - Meshwerks created digital wire frames of Toyota vehicles. Court said they were not independent creations, just “good copies”. No discernible decisions made.
Fixation
The work is fixed in a tangible means of expression.
- It is sufficiently permanent or stable to permit to be perceived, reproduced, or otherwise communicated for a period more than a transitory duration; and
- Fixation must have been by or under the control of the author.
Two aspects of fixed: attached to a physical object and/or static over time.
Williams Electronics v. Artic (Arcade Game Case)
Copyright on the audiovisual effects (images/sounds perceived through projector)
The repetitive images of a video game is fixed despite the player causing images to change. Sequences regardless of player control are fixed.
Copyrightable Works of Authorship
- Literary works
- Musical works
- Dramatic works (and accompanying music)
- Pantomimes and choreographic works (fixed in a tangible medium)
- Pictorial, graphic, and sculptural work
- Motion pictures and other audiovisual works
- Sound recordings
- Architectural works
2 Types of Copyright in Music
Musical Composition - the writing of the song/music
Sound Recording - the actual recording of the song
The Idea/Expression Dichotomy
The expression of an idea is copyrightable, but the underlying ideas are not.
In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described or explained.
Baker v. Selden (Bookkeeping Charts Case)
A book made on how to make bookkeeping charts and the charts made based on teachings were not copyrightable.
The accounting system itself is an idea/abstract idea, and thus cannot be copyrighted.
The underlying ideas/teaching of a book are not copyrightable, but actual words (expression) contained in the book are. Thus you can follow the instructions of the book to make the thing described, but you cannot copy the instructions.
Concept of merger - if the expression is so indispensable to the statement of the idea that the two merge, it cannot be protected.
Merger Doctrine
Where only a finite number of ways exist to express an idea, the idea and the expression merge into an non-copyrightable whole.
Copyright of Facts
Facts are not copyrightable (compilations may be)
Think: Nash v. CBS, Inc.
Rights belong only to expression. Stating they were facts put them in the public domain.
Bikram’s Yoga v. Evolation Yoga
The “sequence” is determined to be an idea, healing art (which can be secured only by patent), a process, system, and not a compilation of choreography, and those nut protectable by copyright. It is essentially an idea.
CCC Information Services v. Maclean Hunter Market Reports
The books here were sufficiently original in their selection and coordination o f the facts and the professional opinions on how a value will be in a current market. Thus, the court says, these valuations are the original creation of Maclean. The fact that an arrangement of data responds logically to the needs of the market for which the compilation w as prepared does not negate originality.
Aesthetic/Functionality of Works (Pictorial, Graphic, and Sculptural Works, specifically)
If design elements reflect merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian aspects.
Where design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences, conceptual separability exists.
Useful Article Doctrine
Only the separable elements of a useful article are subject to copyright protection.
Analysis:
- Is the item a pictorial, graphical, or sculptural work? If yes, then…
- Is the item useful? If yes, then move onto a separability analysis
If no, then it is copyrightable.
“Useful Article” Defined
An article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information
Separability Test
Where design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences, conceptual separability exists.
An expressive element of a useful article is physically separable if it can stand alone from the article as a whole and if such separation does not impair the utility of the article.
Kieselstein-Cord v. Accessories by Pearl (Belt Buckle Case)
Primary purpose of the belt buckle was ornamental and not functional so copyrightable. Conceptual separation evidenced by the fact they were displayed in a museum and could be worn as jewelry.
Star Athletica v. Varsity Brands (Cheerleading Uniform Case)
A feature incorporated into the design of a useful article is eligible for copyright protection only if the feature:
(1) can be perceived as a work of art separate from the useful article; and
(2) would qualify as a protectable pictorial, graphic or sculptural work – either on its own or fixed in some other tangible medium of expression – if it were imagined separately from the useful article into which it is incorporated.
The test is satisfied here.
Derivative Work
A work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.
Must satisfy the same level of requirements for copyright. Only the expression added to the original works are copyrightable.
Derivative Work Rights
The owner of a copyright has the exclusive rights to do, authorize, and prepare derivative works based upon the original work.
Schrock v. Learning Curve International (Thomas the Train Advertisement Case)
Photos of Thomas the Train toys were derivative works because they portrayed him in scenes and the company gave permission to create the derivative work.
Works Made for Hire
The employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright
A work made for hire is:
1. A work prepared by an employee within the scope of his or her employment….”; or
2. A work specially ordered or commissioned for use as a contribution to a collective work….”as [one of nine categories]and agreement in writing that work is a WMFH
“Employee or Independent Contractor” Factors to Analyze
- Hiring party’s right to control
- The skill required
- The source of the instrumentalities and tools
- The location of the work
- The duration of the relationship between the parties
- Whether the hiring party has a right to assign additional projects to the third party
- The extent of the hired party’s discretion over when and how long to work
- The method of payment
- The hired party’s role in hiring and paying assistants
- Whether the work is part of the regular business of the hiring party
- Whether the hiring party is in business
- The provision of employee benefits
- The tax treatment of the hired party
