An Intellectual Property Primerjrnifong@nkkpatentlaw.com

What is Intellectual Property?

How Important is Intellectual Property?- A case study of Star Scientific

Types of Intellectual Property

• Trademarks-identify the source of goods• Copyrights-protect works of art• Trade Secrets-secrets within an organization• Trade Dress-protects the look and feel of an

organization• Patents-protects goods and methods of

making and using those goods

Trademarks

• Any word, name, symbol, or device used to identify and distinguish goods from those manufactured or sold by others.

• A trademark is valid for as long as it is used by the Organization.

• Service Marks are a form of a Trademark and are used to identify the source of a service.

Trademarks continued…

What Protection Do Trademarks Offer?

• A Registered Federal Trademark protects against any confusingly similar uses by a third party within the United States.

• Strong marks are entitled to protection across a large spectrum of goods and services. E.g. McDonalds Hotel would be a trademark infringement of McDonalds marks.

• Weaker marks are entitled to protection amongst confusingly similar goods and services. E.g. Deer Park Printing Services would not likely be an infringement of Deer Park Water’s Trademark, but Deer Park Refreshing Wine Coolers likely would be an infringement.

Copyrights• Protect works of art• Books, maps, charts, prints, musical

compositions, dramatic works, photographs, paintings, drawings, sculptures, screen prints, computer programs, movies, sound recordings, dances, and architectural works.

• Last for life of the author plus 70 years.• A “Fair Use” of copyrights is allowed. Fair use

allows a limited copying of a work. • Teachers use portions of textbooks for teaching

purposes under the Fair use doctrine.

Trade Secrets

• Confidential information that is closely held within a company may be subject to trade secret protection.

• This is important when an employee with confidential information leaves to join a competitor. In this case, the Courts may enjoin the employee from taking the new job.

• Trade Secrets are very difficult to establish and win on in Court.

Trade Secrets continued

Trade Dress

• Applies to the visual appearance of a product or packaging.

• Only protects nonfunctional aspects of the design.

Patents

• Patents are a government granted monopoly on new, nonobvious, and useful inventions.

• There are two types of patents in the United States- Utility and Design.

• Utility patents protect the utility and function of something.

• Design patents protect the look of something.

Patents continued

• Design patents last for 14 years from date of issuance.

• Utility patents last for 20 years from date of issuance.

Patents continued

• Patents give you the right to exclude others from making, using, selling, or offering to sell a patented product.

• Kodak v Polaroid- Kodak paid $925 million dollars in a settlement.

• Blackberry v NTP- Blackberry paid $612 million dollars in a settlement.

• Richardson v Microsoft- Microsoft paid $537 million dollars in a settlement to an independent inventor.

Types of Agreements In Business

• Employment agreement: Non-compete, non-disclosure, IP rights assignment

• Non-disclosure agreement between parties• Joint Venture agreement• Licensing agreements• Distribution agreements• Franchise agreements

Intellectual Property Myths- Fact or Fiction?

• I can make millions of dollars off of a patent.– Maybe

• I don’t need a trademark before picking a business name.– Maybe

• I must get IP to make my business thrive.– Maybe

• Big Companies will just steal my idea like they did Robert Kearns in “Flash of Genius.” – Maybe

Myths continued• Provisional patent applications are the coolest

thing since sliced bread.– False

• I can get an international patent.– False

• I can download copyrighted music and no one will care.– False

• I can put a SASE containing my idea in the mail and get a poor man’s patent.– False

Finishing Up- A few real life examples

• Trade dress infringement?

Examples continued

• Trademark infringement?

Examples continued

Examples continued

• Copyright infringement?

Examples continued

• Pixelated images on TV- infringement?

Questions?