Florida State University Fall 2006 Intellectual Property Seminar

November 16, 2006Dennis Clarke

Intellectual Property Protections

Copyrights © 2002 Database Corporation P 2002 Columbia Records

Trademarks ®SM

“Registered U.S. Patent and Trademark Office”

“Reg. U.S. Pat. & TM Off“

Trade Secrets ABC Corp. CONFIDENTIAL COPY :______Use Pursuant to ABC Trade Secret Policy

Maskworks M IBM

Patents Patent Pending; Patent 6,900,001;

Copyrights © PProtects Expression of Idea, Not the Underlying Idea, Method or SystemCopyright Protection Exists From the Time the Work is Created in a FIXED FORMCopyright can Protect Scientific Articles, Books, Software Code, Manuals, Web Pages, Graphic Artwork, Multi-Media Works, Compilation of Facts (Databases), Online Works, etc.Legislation:

Digital Millennium Copyright Act (DMCA) OF 1998 Includes Five Titles (Sections)International Treaties/Conventions (e.g., Berne Convention) Provide Some International Rights

Copyrights (cont’d)Registration System (17 U.S.C.) Money Damages for Infringement Term (as Amended by the Sonny Bono Copyright

Term Extension Act (CTEA)(1998)):• Known Author: Author’s Lifetime Plus 70 Years• Works Made for Hire: 95 Years From Publication or

120 years from Creation, Whichever Is Shorter (includes Anonymous and Unknown Pseudonymous Works)

Registration Not Required for Copyright Protection, but is Required to Sue for Infringement

Both Civil and Criminal Infringement Possible Civil Must File Within 3 Years of Claim Accruing Criminal Must File Within 5 Years of Cause of Action

Copyrights (cont’d)

Remedies Include: Statutory Damages

(Min = $750, Max = $30,000 for ALL Infringements of a Single Copyright-Can be increased to $150,000)

Actual Damages and Other Infringer’s Profits

Attorney’s Fees Willful Infringement

Registration Provides Advantages If Registered Before or Within 5 Years of

Publication, prima facie Evidence in Court of Validity of Copyright

If Registered Within 3 Months After Publication or Prior to an Infringement, Statutory Damages Available

Can Register Copyright with U.S. Customs to Prevent Importation of Infringing Copies

Copyrights (cont’d)Can Register Any Time Within the Life of the Copyright Author of Work Immediately Owns the Copyright Upon Creation (Fixation) EXCEPTION: “Work Made for Hire” Owned by

Employer if:• Works by an Employee Within Scope of

Employment; or• Work in Specific Enumerated Categories and

Specially Commissioned and Expressly Agreed to in Writing that Work is “Work Made for Hire”

• Additional Explicit Language May Be Required in Agreement for Software Copyright Ownership to Fall Within Work Made for Hire Exception (Software per se Does Not Fall in One of the Nine Enumerated Categories)

Copyrights (cont’d)

States, State Instrumentalities and State Officials Not Immune From Copyright Infringement Suit Ruled Unconstitutional by U.S. Supreme Court

(College Savings Bank v Florida Prepaid PostSecondary Education Expense Board et al., 527 U.S. 666 (1999))

Online Service Providers Liability Limited for: Transitory Digital Network Communications System Caching Information Residing on Systems or Networks at

Direction of Users Information Location Tools Non-Profit Educational Institutions Replacement of Removed or Disabled Material District Court Subpoena to Identify Infringer

Maskworks (*M*, M, or mask work + ACME Corp.)

Protect Original Semiconductor Chip Design Layouts - May be Applicable to Chips and Nanotechnology and Possibly to Biotech Micro ArraysFederal RegistrationFile Within 2 Years of Chip CommercializationCan Prevent Unauthorized Copying of Chip Layout Information10 Year Protection from First Commercial Exploitation or Registration, Whichever is FirstEnforcement: Injunction to Prevent Import; Seizure & Forfeiture; and Destruction of Seized Goods

Trademarks ®™ SM

Indicates the Source/Origin of the Product or Service Types of Marks

1. Fanciful or Arbitrary – Xerox Copiers, Apple Computers2. Suggestive – Coppertone (suntan oil), Whirlpool (washers),

Rollerblade (in-line skates), white-out (correction fluid)3. Descriptive – Fish Fri (fried fish) - mark must have “secondary

meaning”4. Generic – lose right when this occurs, e.g., aspirin

Protects Trademarks from Being Used by Others Protection Available Via Federal Registration (®) or Common Law (™)

Federal and State Protections Trademarks Can Last Forever, As Long As Use Continues Federal Registration (15 U.S.C.) Some State Registrations

Common Law Trademarks

No Application/Registration Required Just USE

Can Use ™ or SM to Assert Rights in a Mark

Optional

Injunctions Destruction of Infringing Goods

Monetary Recovery Infringer’s Profits – Generally Requires Willful Intent

Reasonable Royalty (Damages: Lost Profit or Reasonable Royalty Typically Requires Actual Confusion)

May Be Difficult to Obtain

Federal Trademark Registration

Basis for Filing:– Use: Goods Bearing Trademark Have Been Used in

Interstate or Foreign-US Commerce– Intent-to-Use Mark (ITU)– Foreign Application Filing Within 6 Months Before U.S.

Filing (§44(d)) – Foreign Registration for Same Trademark (§44(e)) – only

Need a Copy of the Foreign Trademark Registration– Extension of Madrid Protocol Application (§66(a))

File Application With United States Patent and Trademark Office (USPTO)

Upon Registration Can Use ®, HOWEVER, do NOT use before Registration

Term: 10 Years from Date of Registration, Renewal in 10 Year Increments, As Long as Mark is Still in Use

Filing Can be Done Electronically or Hardcopy – Electronic Filing has a Lower Fee

Federal Trademark Registration (cont’d) Enforcement

Record Registered Trademarks with U.S. Customs Service to Keep Out Infringing Goods Bearing the Mark (As of 10/05 Customs has a New Electronic Recordation System)

Send Protest Letters to Alleged Infringers Federal Registration Gives Procedural Advantages in

Litigation Litigation – Can receive:

• Injunctions• Destruction of Infringing Goods• Infringer’s Profits• Attorneys Fees (Exceptional Cases)

Trademarks and Domain Names

Cybersquatting Civil Liability May Arise Under 35 U.S.C. §1125(d), Provided: Bad Faith Intent to Profit, and Registers, Traffics in, or Uses a Registered Mark Court Can Order:

• Forfeiture or Cancellation of the Domain Name, or

• Transfer of the Domain Name to the Owner of the Mark

In rem Actions Can be Available When Owner of Infringing Domain Name is Not Subject to Personal Jurisdiction or Despite Due Diligence Domain Name Owner Can Not be Located

Trademarks and Domain Names (cont’d) Uniform Dispute Resolution Policy (UDRP)

Domain Name Arbitration Procedures The Internet Corporation for Assigned Names and

Numbers (ICANN) Implemented• Approved Arbitrators include: World Intellectual

Property Organisation (WIPO) (SW), National Arbitration Forum (NAF) (US), eResolution (CANADA), CPR Institute for Dispute Resolution (CPRADR) (US)

Can Receive Transfer of Domain NameExample:

• Gene Logic v Cho, National Arbitration Forum, Claim No. FA011200013042, 3/4/02. (Cho ordered to transfer “genelogic.biz” to Gene Logic.)

Trade Secrets

Used to Keep Company Technologies and Information Secret from Competition

May Include: Software Code, Methods of Manufacture, Formulas, etc.

Information That: (1) Has Independent Economic Value By Not Being

Generally Known To, and Not Being Readily Ascertainable by Proper Means By, Other Persons Who Can Obtain Economic Value From Its Disclosure or Us, and

(2) Is the Subject of Efforts That Are Reasonable Under the Circumstances to Maintain Its Secrecy

Governed by Individual State Law

Trade Secrets (cont’d)

Action for Misappropriation Generally Must Be Brought Within 3 to 5 Years After the Misappropriation Is Discovered or by the Exercise of Reasonable Diligence it Should Have Been Discovered

No Time Limit on Protection, PROVIDED it Stays a Secret

Simple to Implement:People with Access Informed and Sign Trade Secret AgreementMark Trade Secret Information as Trade SecretImplement Procedures to Safeguard Trade Secret Information

Trade Secrets (cont’d)

Accidental and/or Illegal Disclosure Can End Trade Secret Protection Independent (Legal) Development of Trade Secret By Third Party Is Permitted

– Major Difference From Patents Can Be Licensed

Can be Enforceable Even After Public Disclosure if Written Properly Illegal Disclosures can be Civilly and Criminally Prosecuted

UTSA – Uniform Trade Secret Act EEA – Economic Espionage Act

Types of Trade Secrets: Technical, Non-technical or Financial Data Formula Technique Process Method

Trade Secrets (cont’d) Examples:

– Coca Cola® Formula– Software Code– Client Lists

Current/Recent Cases– MicroStrategy v. Actuate Corp., (Fairfax County Cir. Ct. 2003) -

Software Code (Seeking injunction, profits and treble damages – all counts dismissed); (VA Sup. Ct. upholds Cir. Ct., Sept. 17, 2004)

– Herrick v. Garvey, (10th Cir.) - Trade Secret Status Restored Based on Refusal to Release Previously Released (1955) Information Under a FOIA Request.

– BBA NonWovens Simpsonville, Inc. v. Superior NonWovens, LLC, (Fed. Cir. 2002) - Dist. S.C. Award of $3.9+ M for Misappropriation of Quench Chamber Technology Affirmed.

PatentsPatentsLegal Monopoly

Gives the Patent Owner the Right to Exclude Others from Making, Using, Selling or Offering to Sell the Patented Invention

Does NOT Give the Patent Owner the Right to Make, Use, Sell or Offer to Sell the Patented Invention – May Require License from Another Patent Holder

(e.g., Improvement Patent)

Applicable Laws:Title 35 United States Code (“35 U.S.C.”)Title 37 Code of Federal Regulations (“37 CFR”)

PatentsPatentsTo Obtain, Must File Application with USPTO

Sue for Infringement – MUSTMUST Have Issued PatentInjunctions – Preliminary and Permanent Damages (Plus Interest and Costs)

Reasonable Royalty – Minimum Infringers Profits Lost Profits

Treble Damages (Willful Infringement)

Attorney Fees – Exceptional Cases (e.g., Bad Faith)

No Damages for Infringement Occurring Six (6) Years Before the Filing of the Infringement Suit (Laches)

Failure to Mark products Can Limit Damages

Plant

Utility

Design

UtilityUtility– New, Useful, and Non-obvious Process, Machine, Manufacture or

Composition of Matter– New and Useful Improvement of the Above– Term (Once Granted) Is 20 Years From Priority Date, which may

be Filing Date or Earlier if Priority Was Claimed to a Previously Filed Application

– Maintenance Fees at 3 ½, 7 ½, and 11 ½ Years After Patent Issues

Design– New, Original, and Non-obvious Ornamental Design for an Article

of Manufacture– Primarily Functional Aspects Not Protected– Term Is 14 Years From Date of Grant– No Maintenance Fees

Plant– New and Non-Obvious, Distinct Variety of Plant – Term (Once Granted) is 20 Years from Priority Date

Types of Patents (cont’d)

Design– New, Original, and Non-obvious Ornamental

Design for an Article of Manufacture– Primarily Functional– Term Is 14 Years From Date of Grant– No Maintenance Fees

Types of Claims

“Point-of-View” – Who / What Must Act / Exist to Infringe Each Claim

Independent – Broadest CoverageDependent – Narrower Coverage, Includes Independent Claim Language by Reference

Styles:ApparatusMethodSystemProduct-By-ProcessMeans“Beauregard” (Software claims)

1. A computer comprising:a processor.

2. The computer of claim 1 wherein the processor comprises:a 64-bit microprocessor; anda cache memory coupled to the 64-bit microprocessor.

1. A computer-readable medium having stored thereon a plurality of executableinstructions to perform a method comprising:generating a . . .;calculating a . . .; andstoring a result of the calculation.

Prior to Preparing the Application

Check for Statutory Bar Dates• U.S. Law Provides a One (1) Year Grace Period• Most Foreign Countries Require Absolute

Novelty, THEREFORE, DO NOT disclose before filing

Has the Invention Been Sold or Offered for Sale?

Has the Invention Been Made Public (Published)?• Printed Publications• Disclosure to Third Parties• Public Use

Prior to Preparing the Application

Prior Art Searches• Not Required by the USPTO, HOWEVER, a Search

may Identify Material Prior Art that Might Affect the Patentability of Some or All of the Claims

Types of Prior Art Searches• Database Searches (Patent and Non-Patent)• “Hand” Search in Public Search Rooms at USPTO• Internet Searches• Inventors Frequently Know Most Relevant Prior

Art

Drafting the Patent Application Complete Description of the Invention in Order to satisfy

35 U.S.C. §112, ¶ 1 Requirements

Develop Drawings/Flowcharts

Draft Broadest Possible Claims Considering Known Prior Art

Target Claims for Specific, Limited Number of Infringers (“Point-of-View”)

Determine Who the Inventors are Based on the CLAIMS

Duty to Disclose§ 1.56 Duty to Disclose

Information Material to Patentability

(a)…Each individual associated with the filing and prosecution of a patent application has a duty of candor and a good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section…

Failure to Comply Can Result in a Patent Issuing from the Application Being Unenforceable Even Though Patent May Be Valid

Filing DecisionsApplication Publication

Automatic Within About 18 Months After Filing Date, Unless You File a Non-Publication Request

Will Application be Filed in Foreign Countries? If so, Application Must Be Published in U.S.

• Enables Infringement Damages to Begin Being Accumulated Once Infringer Has Actual Notice

• HOWEVER, Damages Will Only be Collectable if Application Issues as a Patent

If Not, May Want to File Non-Publication Request• Keeps Application Secret Until Patent Issues• However, Infringement Damages Cannot Start

Accumulating Until Issuance of the Patent

Protecting New Ideas/Products Copyright

– Software Code (e.g., 3-D Structure Modeling)

– Software Documentation– Manuals (User, Operator,

Programming, etc.)

Trademark– Brand Names– Service Marks– Domain Names

Protecting New Ideas/Products (cont’d)

Trade Secrets– Chemical Formulations– Methods of Manufacture (e.g., Micro Arrays)– Algorithms (e.g., Search Algorithms)

Patents– Algorithms– Sequence Analysis (Methods & Systems)– Databases– Integrated Circuits– Image Processing– Simulation & Modeling– Business Methods

Business Methods

Protection for:– Ways of Doing Business– Methods for Doing or Making Something– Business Information Services

Can be Protected as:– Electronic Systems– Software– Methods

Emerging Technology Patent Examples Micro Array:

– A machine-readable medium having stored thereon a program, said program executable to perform a method comprising:

generating a normalized dataset from a raw expression dataset using a normalization, the raw expression dataset comprising at least one expression intensity of nucleic acid probe sequences from at least one microarray; and

storing the normalized dataset.

Emerging Technology Patent Examples (cont’d) Method for Querying a

Database:– A method for querying a database comprising:

registering query component information relating to a query component used to assist queries to a database in which a new data type has been defined as well as information about said data type;

referring to said query component information if a queried data type is said newly defined data type;

searching for a query component for assisting querying data belonging to the data type;

when the query component for assisting querying data belonging to the data type is found, activating said query component to assist querying said data type by displaying a screen for entry of information needed to query data of said data type and handling entry of said information; and

generating query statements based on said registered query component information and issuing said generated query statements to said database management system.

Emerging Technology Patent Examples (cont’d) Data Mining:

– A method of data mining using a computer system having a first memory holding a training database of a plurality of records having attributes, and a second memory smaller than the first memory but having better accessibility than the first memory, the method comprising the steps of:

(a) loading a subset of the training database into the second memory;

(b) operating on the subset with the computer to prepare a binary decision tree from the subset of the training database, the binary decision tree having nodes associated with confidence intervals defining ranges of the attributes;

(c) reviewing the entire training database of the first memory against the confidence intervals of binary decision tree to collect split point statistics related to the location of a split point within the confidence interval; and

(d) using the split point statistics to assign a split point to each node;

whereby the number of times the training database must be loaded from the first memory is reduced.

Emerging Technology Patent Examples (cont’d) Reverse Auction:

– A method comprising the steps of: viewing, using a computer,

special fare listing information for air travel to a specified destination location from a specified departure location within a specified time range, said special fare listing information excluding a specified departure time;

transmitting, using a computer, a request to purchase a commitment for carriage corresponding to said special fare listing information;

receiving a commitment for carriage, including an obligation by an airline to provide a seat on a flight, that satisfies said request but does not specify a departure time;

accepting said commitment for carriage; and

receiving at a time subsequent to said accepting an identification of said departure time.

Emerging Technology Patent Examples (cont’d) One Click Ordering:

– A client system for ordering an item comprising: an identifier that identifies a customer; a display component for displaying information identifying the item;

a single-action ordering component that in response to performance of only a single action, sends a request to a server system to order the identified item, the request including the identifier so that the server system can locate additional information needed to complete the order and so that the server system can fulfill the generated order to complete purchase of the item; and

a shopping cart ordering component that in response to performance of an add-to-shopping-cart action, sends a request to the server system to add the item to a shopping cart.

Emerging Technology Patent Examples (cont’d)

Gene Expression Analysis:– A computer program

comprising:computer code to

receive gene expression data;computer code to

compare said gene expression data to a common reference frame;

computer code to assign a grid representation to the gene expression data based on results of the comparison; and

a computer-readable medium to store said computer code.

Emerging Technology Patent Examples (cont’d)

Gene Expression Analysis:– A computer program

comprising:computer code to

receive gene expression data;computer code to

compare said gene expression data to a common reference frame;

computer code to assign a grid representation to the gene expression data based on results of the comparison; and

a computer-readable medium to store said computer code.

Emerging Technology Patent Examples (cont’d)

Method of Swinging*:– 1. A method of swinging on a swing, the

method comprising the steps of: a) suspending a seat for

supporting a user between only two chains that are hung from a tree branch;

b) positioning a user on the seat so that the user is facing a direction perpendicular to the tree branch;

c) having the user pull alternately on one chain to induce movement of the user and the swing toward one side, and then on the other chain to induce movement of the user and the swing toward the other side; and

d) repeating step c) to create side-to-side swinging motion, relative to the user, that is parallel to the tree branch.

* Case was Reexamined and all Claims were Canceled.

Emerging Technology Patent Examples (cont’d) Restroom Reservation

System*: (64 Claims!)– 1. A method of providing

reservations for restroom use, comprising:

receiving a reservation request from a user; and

notifying the user when the restroom is available for his or her use.

* Case was Reexamined and all Claims were Disclaimed by the Inventor.

IP Protection Do’s and Don’ts

Do’s Don’ts

Do File for Copyright Registrations of all Public Documents AS SOON AS POSSIBLE

Don’t Ignore Infringements

Do File for Trademark Registrations of all Trademarks and Service Marks

Don’t Ignore Infringements

Do Monitor Infringing Uses of Your Trademarks and Service Marks and Send Notices to Infringers

Don’t Misuse Your Own Trademarks

Do Implement and Enforce a Corporate Trade Secret Policy

Don’t Permit Non-Compliance with Trade Secret Policy

Do’s and Don’tsDo’s Don’ts

Do Protect Your Confidential Patent Information

Don’t Publicly Disclose Information Before Filing Application

Do Use a Non-disclosure Agreement (NDA) If Disclosing Any Aspect of Invention to a 3rd Party Prior to Filing Patent Application

WARNING: Use of NDA may Affect Ability to Get Foreign Patents

Do File a Provisional Patent Application Prior to Disclosure of Invention

Make Sure that What Your are About to Disclose is in the Provisional Application

Don’t Disclose Information that is NOT in the Provisional Application

Do’s and Don’tsDo’s Don’ts

Do Consult With Patent Counsel Prior to ANY Public Launch or Announcement of a Product or a Service

Don’t Talk About Your Idea with Non-Company Employees

Do Establish and Enforce a Program to Preserve Patent Invention Dates. Since the U.S. Is a First to Invent Country, Evidence of Prior Invention Can be Used to Invalidate Another’s Patent. This is Important for Interferences and Priority Determination.

Don’t Ignore the Program

Do’s AND Don’tsDo’s Don’ts

Do Use Bound Inventor Notebooks Don’t/Avoid using loose sheets of paper

Do Have Notebooks Collected and Stored in a Secure Place

Do Have ALL Entries in the Notebooks Witnessed and Dated

Do Develop and Implement Electronic Notebook Policies and Procedures, if Needed

Do Implement Document Control/Destruction Policy and FOLLOW IT

Don’t Alter Policy AFTER Receiving Notice of a Lawsuit and, if Documents Still Exist, DON’T Destroy Them After Receiving Notice of the Lawsuit

Contact Information:Dennis P. ClarkeDennis P. ClarkeMiles & Stockbridge PCMiles & Stockbridge PC1751 Pinnacle Drive1751 Pinnacle DriveSuite 500Suite 500McLean, VA 20175McLean, VA 20175(703) 610-8672(703) 610-8672