IP Study Flashcards
What two types of IP are the most similar?
Patent and Copyright, because they are codified under Federal law and mentioned in the Constitution.
What is Nichol’s “child” of Patent law?
Trade Secret law, but it is inherently different b/c one protects the secret and the other divulges it to achieve a monopoly.
Utility v. Design Patents?
Utility patents protect a form function process or machine that is useful, novel, nonobvious, part of the subject matter, and has a disclosure. Design patents cover the “perception” of a certain form, like vases. Can be trademarked.
Design Patents into Copyright?
Copyrights are similar to design patents in that they protect something placed into a tangible medium and the “perception” of it.
Trademark, Unfair Comp, and Right of Publicity
Created to protect trade, Trademark under Fed, unfair comp under state law, and right of publicity as NIL rights.
Trade Secrets (1): Secrecy
Not readily ascertainable by proper means
Trade Secrets (2): Value
While unknown, there is a potential for economic value or genuine economic value (competitor based analysis)
Trade Secrets (3): Protection
Affirmative and reasonable efforts to maintain secrecy
Patent Infringement Liability standard
No “knowingly” requirement, it can be entirely on accident, but the lim. econ. monopoly granted preempts it.
Trade Secret Violation
Wrongful or unethical violation of the secrecy protection. Usually thru misappropriation.
Trade Secret: Common Law v. Fed?
No Federal law was codified to supersede the common law and state interpretations, so it is based on common law.
Uniform Trade Secret Act (UTSA)
Decision from 49 States, with no NY, which attempted to harmonize common law interpretations in each state.
Trade Secret Subject Matter
Formulas, patterns, compilations, programs, devices, methods, techniques, or processes (and suggests there has to be a competitor who can obtain economic value from its use)
Trade Secret Violations: Affirmative Defenses
Rightful Means; “clean room” (guessing, reverse engineering, isolated discovery) but MUST be documented if its a competitor.
No economic benefit (not a competitor or not using for money) (LONG SHOT)
Not a trade secret (no reasonable secrecy, or failure to affirmatively maintain it)
Trade Secret Violations
Misappropriation, espionage, bribery, etc. but it HAS to be for competitive economic benefit
Trade Secret Violation Analysis
- Misappropriation, deception, or espionage for economic benefit
- Reasonable measures taken to maintain secrecy by TS holder
- Information not generally known or available to the public or competitors
Who can sue for TS infringement?
The Trade Secret holder/owner, or licensees or 3rd parties who step into the shoes of the “party aggrieved”
Trade Secret: Public?
If it is available for the public to find or use it then it is not protectable (Public University Libraries, online forums, etc.)
Reasonable Affirmative Secrecy: Employment Contracts
Termination at-will contract considerations (under the freedom to contract) can be consideration for non-disclosure agreements. Can also have exit interviews that discourage disclosure to give grounds for a misappropriation suit.
Trade Secrets: Misappropriation Definition
Improper means of acquiring information OR use or disclosure of the secret without consent of the owner.
Looking for: Bribery, theft, espionage, fraud, etc.
Patents: Subject Matter Section 101
Processes, machines, compositions of matter, or any improvement thereon (includes substantial human effort to modify, like clones, adaptive formulas, etc.)
Patents: NOT Subject Matter
Naturally occurring phenomena, abstract ideas, mental processes, math formulas, weapons of mass destruction, and Illegal things (or things only useful for illegal purposes)
Patent Protection Timeline
20 Years from federal registry, with periods of upkeep every 3 1/2 years, 7 years, and 11 1/2 years.
Patents: The 2013 Shift
Pre- July 1st 2013 it was first to invent standard
Post- July 1st 2013 it was first to file standard
Patent Protection: what can you do with it?
Does NOT give you the right to use the invention, it only gives you the right to exclude others from making what you have registered. This is to incentivize licensing and market agreement.
Patents: Utility Requirement
Must 1) specifically and 2) substantially relate to a benefit applicable to the proposed invention. Only requirement is that it be real, not hypothetical, and not theoretical.
Doesn’t have to work, only has to have the potential for advancement.
Patents: Novelty Requirement Section 102
Must be new as compared to existing subject matter. Denied if a PUBLICLY accessible enabling disclosure exists that a person having ordinary skill in the art would do the same (includes disclosures, research papers, public use or sale, and more)
Watch out for “advancements” on inherency, where the prior art necessarily contemplates including the thing that you include.
Patents: Non-Obviousness Requirement
PHOSITA compilation? Then you don’t get it. Has to be a leap of the reasonable imagination, not a subtle combination of what exists.
Patents: Inventor Disclosure
Only have 1 year from any disclosure to file for patent application (excluding an Intent to Use application AKA a PROVISIONAL PATENT), only allowed if you are doing reasonable EXPERIMENTAL USE testing for no profit to find best mode or market for sale.
Patents: When is it “invented”?
Deemed invented when it meets the utility requirement and there is an established best mode.
Patents: Arguments to prove non-obviousness
1) Skepticism about feasibility
2) Long felt but unaddressed need
3) Prior failures of others in the Art
4) Unexpected commercial success
Patents: Disclosure Requirement
Must include an ABLEMENT which provides a PHOSITA the ability to recreate the subject of the patent.
Only has to disclose “A” best mode not “THE” best mode (the inventor’s preferred method of using it)
Patents: Product Marking
Technically you’re supposed to put the patent # on each product to provide notice, but it is strict liability for infringement (no notice requirement)
Design Patents
15 Year expiration instead of 20, based around a perception of form, not one of utility, so folds into Copyright. Using it in commerce can develop TM protection lasting for as long as you use it.
Patents: Inventors
Inventors are people not entities. Must disclose every inventor who substantially added to the process, as failure to do so will have your patent app. declined.
Patents: Shopright Doctrine
If an employee uses their time during employment and employer materials to create it gives the employer a non-exclusive royalty free license to use the invention.
Considerations: Scope of work, During working hours, Agency principles, etc.
Big Q: was it in service of the “master” or for personal use and gain?
Copyrights: Definition
1) Original works of 2) authorship 3) fixed in a 4) tangible medium now known or later developed 5) for more than a transitory period.
Copyright: Original Work
Less than the novelty standard; requires a “modicum of creativity”. IDEAS ARE NOT COPYRIGHTABLE
Copyright: Owner’s Rights
Owner has the right to make copies/distribute/publicly perform/ make derivative works. Must get license to do so from copyright owner.
Copyright: Fixed requirement
Must be more than a transitory period of time, so that it would take an outside act to delete it. Something that easily changes or changes over time would not be (hair, bushes, chalkboards)
Copyright: Destruction
If you rip up a copyright, if the owner met all the initial requirements when it was fixed, the copyright still exists.
Copyright: Damages
Willful infringement: Punitive damages by statute
Non-willful: Can request statutory damages at any time prior to final judgment to prevent the dumb thief
Copyright: Derivative works
Must be sufficiently unique from original copyright, and must have permission from copyright holder.
Must be creative enough to distinguish from the original.
Copyright: conveyances
Copyrights are like property, and pass like such
Copyright: Licenses
Non-Exclusive: Can be oral or implicit
Exclusive: Must be in writing. Anything that alienates the copyright from the owner must be in writing for the statute of frauds and for business leverage.
Copyright: Subject Matter
Literary, musical, and dramatic works, pantomimes, pictorials, motion pictures, sound recordings, and architectural works. Includes programming
Copyright: Joint works of authorship
Requires that at the onset of creation there is an agreement that there will be an interdependent unified whole, with each contribution being copyrightable. Requires MINIMAL creativity in authorship.
Copyright: Hypo
A tattoo artist and a customer come up with a sketch together, with the customer’s ideas serving as basis. The sketch would be the tattoo artist’s copyright b/c ideas are not patentable (unless agreed upon joint authorship) and the tattoo itself is a derivative work b/c it is the same thing in a different medium.
Copyright: Timeline
Lasts from the moment it is fixed until 70 years after the death of the author.
Joint works last from the last surviving author plus 70 years.
Derivative works change “authorship” and continue protection
Copyright: Merger Doctrine and Scenes a Faire
Anti-Utility: If the creative work is required as a part of the industry or medium, then there is no copyright protection.
Copyrights: State copyrights
There may be state protection for things that are not “fixed”
Copyright: Hypo 2
If a singer performs a song for the first time in front of a live audience with a “give me a beat” mentality, it is NOT copyrighted b/c it lacks the fixation.
Needs to be simultaneously recorded at the author’s request. Also any joint authorship may require oral or implicit proof of agreement.
Copyrights: Works made for hire: Employer
Creator must create within the scope of their employment, determined by Agency principles (frolic could mean within scope, detour means its not within the scope).
Considerations: employer’s instrumentality, on work time, you were hired to do it, or at the very least did you create it to “Please the Master”
Copyrights: Works made for Hire: Independent Contractor
Requires a signed writing that alienates the original creator, and must be one of these specific types of works:
Contribution to a collective, Motion Picture, Translation, Compilation, Instructional Text, Test Answer Key, Atlas, or a Supplementary something.
Copyright: Creator’s unalienable rights
You can NEVER contract away your right to terminate the transfer of a copyright ownership
Copyrights: Works made for Hire: Duration
Lesser of 120 years after first fixed or 95 years after first published. This ALSO applies to any works made anonymously or under pseudonym
Copyrights: Works made for Hire: Fraud
If you fraudulently declare your work a work made for hire to falsely extend a copyrights lifetime, it is immediately dedicated to the PUBLIC DOMAIN
Copyrights: Infringement
Must show that you have a valid copyright, that you are the owner of the copyright, and that someone has infringed by using, transferring, copying, creating derivative works from, distributing, or publicly displaying your work. Must include some kind of misappropriation.
To prove copying, must show: Access to the copyrighted work, striking and substantial similarity to the copyrighted work (no intent requirement).
Copyrights: Affirmative Defenses
Invalidity of the copyright, Improper Ownership of the Copyright, Fair Use, Originality in Difference therefore independent creation, etc.
Copyrights: Hypo 3
If you claim your fictional work as fact, the Copyright office will take you at your word and bar you from copyright protection (facts aren’t copyrightable, only their creative compilation). If that compilation of facts is the only way to express the facts then you are prevented from copyright protection by the MERGER DOCTRINE
Copyrights: Motifs
Motifs independent of authorship go to the public domain, like Celtic crosses or religious hymns.
Copyrights: Music
Sound recordings are a limited right, must be accompanied by the sheet music for ownership.
Copyrights: Access
Fact Question: Must be first-person and direct. If a work is widely distributed there is one more requirement
Copyrights: Publication
Used to be very clear, but now if it is blurry just do date of fixation. Ex: Jewelry made available in an advertisement is publication
Copyrights: Fair Use
Things done for social commentary, education, parody, satire, etc. are not infringement if you can prove it.
