10 things business owners should know about intellectual property
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10 Things Business Owners Should Know About Intellectual PropertyTRANSCRIPT
10 Things Business Owners Should Know About Intellectual Property
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Presented By: Kelley Clements Keller, Esq.
You Should Know …
1. What Constitutes Intellectual Property (IP) and Why It is Important
1. What Constitutes IP
IP is a legal concept which refers to the products of human imagination, creativity, and ingenuity that have value in the marketplace and for which exclusive rights are recognized.
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1. What Constitutes IP
Intellectual property is an intangible or intellectual asset that provides its owner with a competitive advantage.
The loss of these assets can be very costly, often times even more so than loss of physical assets such as a building, property/inventory, or equipment.
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1. What Constitutes IP
Examples include inventions, business logos, and musical compositions.
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1. Why IP Is Important
IP is not only an important part of a business’s plan for success, but a vital part of the U.S. economy and the nation’s competitive advantage in the global marketplace.
Three Ways Nations Grow Rich Natural Resources Cheap Labor Creativity Of Its People
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1. Why IP Is Important
U.S. Constitution – Article 1, Sec. 8, Cl. 8 “To promote the Progress of Science and useful Arts, by
securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”
“There is so much of our economy that is linked to branded products, copyrights. So much of our economy thrives on creativity.” Former U.S. Commerce Secretary Carlos Gutierrez
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You Should Know …
2. The Two Rules of Thumb for Determining Whether a Piece of IP is Worth Protecting
2. Deciding Whether to Protect IP
Is the IP directly related to your competitive advantage?
Does the IP have value in the marketplace?
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You Should Know …
3. The Four Major Forms of Intellectual Property
3. The Four Major Forms of IP
Patents Grant from the federal government to exclude others
from making, using and selling an invention for a limited time. It’s a “contract” between the inventor and the government.
Protects functional items that are useful, novel and nonobvious.
Scope and Duration of Protection
National (no rights during pendency) 20 years from date of filing (utility/plant) 14 years from date of grant (design)
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3. The Four Major Forms of IP
Trademarks Words, phrases, symbols, designs, or a
combination thereof … that distinguish a manufacturer’s or merchant’s goods from those offered by others.
Scope and Duration of Protection
National In perpetuity, so long as in use
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3. The Four Major Forms of IP
Copyrights “Copyright protection subsists in original works of
authorship fixed in any tangible medium.”
Exclusive rights of federal copyright registration – reproduce the work, prepare derivative works, distribute copies of the work, perform the work publicly, and display the work publicly.
Scope and Duration of Protection
National Life plus 70 years
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3. The Four Major Forms of IP
Trade Secrets Formula, pattern, physical device, idea, process, or
other information that provides the owner of the information with a competitive advantage in the marketplace.
Examples include the Coca-Cola formula, WD-40 formula, and KFC recipe
Scope and Duration of Protection
Worldwide Until no longer secret
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You Should Know …
4. The Four Types of Patents and How Patent Protection is Obtained
4. Patents and Patent Protection
Utility Patents Business Method Patents
Design Patents
Plant Patents
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4. Patents and Patent Protection
Patentable Subject Matter
The Supreme Court has said that patents cover “anything under the sun that is made by man.” –Diamond v. Chakrabarty, 447 U.S. 303 (1980) (genetically-engineered bacteria that broke down crude oil)
Patentability Tests Usefulness – 35 U.S.C. § 101. Novelty – 35 U.S.C. § 102. Non-Obviousness – 35 U.S.C. § 103.
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4. Patents and Patent Protection
What is an Invention?
Conception + Reduction to Practice = Invention
Who is an Inventor?
Inventorship cannot be determined until the patent application claims are drafted.
Inventor is one who contributes significantly to conception OR reduction to practice.
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4. Patents and Patent Protection
What Does a Patent do?
Patent grants exclude others from:
Making the invention Using the invention Selling the invention Offering the invention for sale Importing the invention
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5. The Four Types of Trademarks and the Requirements for Federal Registration
5. Types of Trademarks
Trademarks Identify and distinguish the source of a good
Service Marks Identify and distinguish the source of a service
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5. Types of Trademarks
Collective or Membership Marks Used by a cooperative to indicate that goods/services
are provided by a group member.
Certification Marks Used to indicate (“certify”) the quality of goods
or services. The placement of a certification mark on goods or use in conjunction with services is an assurance to consumers that the goods and services meet the standards of the certifying organization.
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5. Types of Trademarks
Other Forms of Trade Identity:
Trade Dress Encompasses the distinctive “look” of a product.
Trade dress can include product packaging, distinctive restaurant designs, product configuration or product containers.
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5. Types of Trademarks
Product Configuration The actual design of the product itself (as
contrasted with its packaging). Product configuration is a form of trade dress. It must be “inherently distinctive” to be protectable.
Trade Names The names of businesses used to identify corporate
identity as contrasted with the source of a product or service. This can be confusing since a trade name can be a trademark, but need not always be, e.g. Coca-Cola Corporation versus Coca-Cola brand cola.
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5. Requirements - Distinctiveness
Trademarks Must be Distinctive to Obtain Federal Registration and Protection
Inherently Distinctive Its intrinsic nature serves to identify a particular
source
Acquired Distinctiveness or Secondary Meaning Distinctiveness may be acquired through use if the
public comes to recognize the mark as an indicator of source, thus giving it “secondary meaning”
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5. Requirements - Distinctiveness
Spectrum of Distinctiveness for Trademarks, which helps determine the Strength of a Mark
Fanciful or Coined Marks Arbitrary Marks Suggestive Marks Descriptive Marks Generic Terms
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5. Requirements - Distinctiveness
Fanciful or Coined Marks
Marks that do not have independent meaning or significance apart from their existence as a trademark, aka made-up words. These are the strongest marks on the spectrum of distinctiveness
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For oil and gas products
For food products
For copying equipment
5. Requirements - Distinctiveness
Arbitrary Marks
Existing words that are used in connection with goods/services that are wholly unrelated to the normal meaning of the word. These are also very strong marks
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For computers
For Internet search engine services
For electronic commerce services
5. Requirements - Distinctiveness
Suggestive Marks
Marks that require thought, imagination, or perception to identify the nature of the goods/ services. These are not as strong as fanciful or arbitrary marks.
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For outdoor clothing and equipment
For detergent
For tuna
5. Requirements - Distinctiveness
Descriptive Marks
Terms that immediately convey an idea of an ingredient, quality, characteristic, purpose, or function of the goods/ services. These are not protectable as marks without showing “acquired distinctiveness” or “secondary meaning”
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For financial services
For electronic goods and retail services
For insurance services
NEW YORK LIFE INSURANCE COMPANY®
5. Requirements - Distinctiveness
Generic Terms
The common name of a good/service. These terms can never function as trademarks:
CEREAL for cereal MULTISTATE BAR
EXAMININATION for an attorney competency exam
LIGHT BEER for low-calorie beer
CRAB HOUSE for restaurant that serves crab
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Examples of formerly protected trademarks that are now generic terms:
ASPIRIN LINOLEUM ESCALATOR CELLOPHANE ZIPPER THERMOS
5. Requirements - Distinctiveness
Types of Marks that are Protectable through a Showing of “Acquired Distinctiveness” or “Secondary Meaning”
Personal Names: AVERY DENNISON for office products, MCDONALD’S for fast food services, and GALLO for wine
Color, Sound, Scent: color PINK for fiberglass insulation, “Doink-Doink” sound for Law & Order, peppermint scent for office supplies
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5. Federal Registration Benefits
Benefits of Federal Trademark Registration
Prima Facie evidence of validity and ownership Constructive use conferring nationwide priority as
of date of filing Constructive notice of the registrant’s ownership of
the mark, e.g. use of the symbol ® Ability to become incontestable Improved ability to block importation of infringing
goods Broader array of remedies in an infringement action
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You Should Know …
6. The Types of Material Eligible for Copyright Protection
What Copyright Protects
Copyright protects "original works of authorship" that are fixed in "a tangible form of expression."
The fixed form does not have to be directly perceptible so long as it can be
communicated with the aid of a machine or other device.
6. Copyrightable Materials
Literary WorksMusical WorksDramatic WorksPantomimes and choreographic worksPictorial, graphic, and sculptural worksMotion pictures, other audiovisual works and
sound recordings
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6. Copyrightable Materials
What is NOT copyrightable …
Ideas, concepts, or discoveries Titles, names, short phrases, and slogans Works that are not fixed in a tangible form of
expression such as improvised speech or dance Anything written or created by the US
government.
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6. The Bundle of Rights
What rights does the owner control?
Reproduction of the Work Prepare of Derivative Works Distribution of Copies of the Work Public Performances of the Work Public Display of the Work
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6. Federal Registration Benefits
Benefits of Federal Copyright Registration
Prima Facie evidence of validity and ownership Ability to sue for infringement and seek
injunctions Statutory damages and attorneys’ fees Preempts the defense of “innocent infringement” Improved ability to block importation of infringing
goods
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You Should Know …
7. Legal Vehicles Available for Trade Secret Protection
7. Trade Secret Protection
Patchwork of State Laws Model: The Uniform Trade Secrets Act (48 States)
The Economic Espionage Act of 1996 Criminalizes theft of trade secrets
Current Legislative Initiatives Efforts to create federal civil remedies
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You Should Know …
8. The Most Common Types of Trade Secret Disputes
8. Trade Secret Disputes
Employer v. former Employee “The information was in my head …”
Lawful discovery v. theft Permission Independent development No longer secret
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You Should Know …
9. The Elements of a Trade Secret Protection Program
9. Trade Secret Protection
Security Measures Consider physical layout of facilities – points of entry Areas where sensitive work occurs, etc.
Confidentiality procedures Document control Protocols for computer use Procedures directed at employees Procedures directed at persons out of the company
Managing, monitoring and assessing the program
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You Should Know …
10.How to Measure the Value of Your IP
10. Valuing Your IP
Conduct an Intellectual Property Audit
Is our IP being properly protected? Identify existing patents, trademarks, copyrights,
licenses Identify works in progress: R&D Identify trade secrets and describe how they are being
protected
What is the monetary value of our IP? Investment capital Mergers & Acquisitions
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Wrapping it Up
Questions?
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Thank You!
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Kelley Clements Keller, Esq.(717) 386-5035
[email protected]@KelleyKeller/YourIPMatters/KelleyKeller