Introduction To U.S. IP Law and The International Interface: Prof. Lisa Ouellette Stanford Law School

Introduction to U.S.
IP Law and
the International Interface
Prof. Lisa Ouellette
Stanford Law School
Why should international
lawyers care about U.S. IP law?
Outline: Four Types of IP, Four Questions
1.Trade Secrets
2.Patents
3.Copyrights
4.Trademarks
1.When is there a valid IP right?

2.When is it infringed?
3.Are there any limitations or defenses?
4.What is the remedy?
Trade Secret (18 Patent (35 U.S.C.) Copyright (17 Trademark (15
U.S.C. & state law) U.S.C. & state law) U.S.C. & state law)
Validity secrecy (not novel, nonobvious, independent source-identifying,
generally known useful, adequately creation, modicum inherent/acquired
or available), value disclosed; no of creativity, distinctiveness,
due to secrecy, abstract ideas or fixation; no ideas, priority of use; no
reasonable efforts laws of nature facts, or useful generic words or
articles functional features
Infringement acquisition by all-elements rule actual copying + likelihood of
improper means (or equivalents); substantial confusion or
or violation of making, using, similarity (copying, dilution due to
confidential offering to sell, derivatives, defendant’s use as
relationship selling, importing distribution, a mark in
performance/displa commerce
y)
Limitations independent experimental use, fair use, abandonment,

discovery, reverse inequitable independent descriptive or
engineering conduct, first sale creation, first sale nominative fair use,
first sale
Remedies eBay provides framework for evaluating whether injunction is appropriate; damages
also available (including statutory damages for registered copyrights); potential
criminal liability in all but patent
Sources of U.S. IP Law The Congress
shall have
• Federal Patent Act and Power…
Copyright Act (based on To promote the
Constitutional IP Clause) Progress of
Science and
• Trademarks: Federal Lanham useful Arts, by
Act (based on Commerce securing for
Clause) and state law of unfair limited Times to
Authors and
competition
Inventors the
• Trade Secrets: state statutes exclusive Right to
(primarily based on Uniform their respective
Trade Secrets Act); new federal Writings and
Discoveries.
Defend Trade Secrets Act
U.S. IP Law Institutions
Congress & U.S.

State Supreme State
Legislatures Court Supreme
Courts
13 U.S. Courts
of Appeal Lower State
(including Federal Circuit) Courts
U.S. Patent & 94 U.S.

Trademark District
Office Courts
Copyright Food & Drug

Office Administration …and more!
Trade Secret Law
When do you have a trade secret?
Uniform Trade Secrets Act
§1(4) “Trade secret” means information … that:
(i) derives independent economic value … from
not being generally known to, and not being
not in readily ascertainable by proper means by,
CA
other persons…and
(ii) is the subject of efforts that are reasonable
under the circumstances to maintain its
secrecy.
Adopted in some form by all states except NY and MA;
federal Defend Trade Secrets Act is very similar.
When has a trade secret been
misappropriated?
theft / improper means violation of a

(doesn’t have to be illegal!) confidential
relationship
What are the limitations on trade
secret rights?
independent discovery
reverse engineering
y)

first sale
Patent Law
Patent Law
• Patent Act codified at 35 U.S.C.
• Federal courts have exclusive jurisdiction, and
Federal Circuit (created 1982) has exclusive
appellate jurisdiction.
• Many recent changes, in part due to concern
about “patent trolls” and litigation abuse.
– 22 Supreme Court patent cases since 2010.
– 2011 America Invents Act, including expanded
post-grant procedures before PTO.
State Laws Targeting
Bad-Faith Patent
Assertions
Source:
Patent Progress
6/27/16
“The name of the game is the claims!”
Anatomy of a Patent Claim

preamble A device for writing
transition (comprising = open) comprising:
body elements (a) a wooden cylinder with a hollow
core;
(b) said hollow core containing material
comprising 90% graphite;
(c) eraser material attached to one end
of said wooden cylinder.
Look to the claim elements, as construed by a

judge at a Markman hearing, to assess both
validity and infringement.
When is a patent valid?
§ 101 Patentable Subject Matter
§ 101 Utility
§ 112 Enablement & Written Description
§ 112 Claim Definiteness
§ 102 Novelty
§ 103 Nonobviousness
§ 101 – Patentable Subject Matter
• Broad statutory language, but…
• Supreme Court: “important implicit
exception” for “nature” and “abstract ideas”
• 4 recent S. Ct. cases, huge impact!
– In two years after June 2014 Alice v. CLS Bank, 201
invalidations out of 287 decisions on § 101
(including 106 decisions invalidating patents on
the pleadings) (source: BilskiBlog.com)
subject matter disclosure novelty
utility definiteness nonobviousness

§ 101 – Utility
• Can be important for chemical and biotech
inventions; don’t need human clinical trials, but
need some specific utility.
• But usually satisfied; silly or immoral inventions
still have utility.

§ 112 – Adequate Disclosure
• Enablement – Does the disclosure enable the
person having ordinary skill in the art
(PHOSITA) to make and use the invention
without “undue experimentation”?
• Written Description – Is the description
adequate to allow the PHOSITA to recognize
that the inventor “possessed” what is
claimed?

§ 112 – Claim Definiteness
• Supreme Court revised test in Nautilus v.
Biosig (2014): patent is invalid for
indefiniteness of claims “fail to inform, with
reasonable certainty, those skilled in the art
about the scope of the invention.”

§ 102 – Novelty & Statutory Bars
• Prior art that discloses every element of the
claimed invention destroys novelty.
• Unlike in Europe, inventor who publishes has
one-year grace period to file patent.
• America Invents Act: Shift from first-to-invent
(for patents filed before Mar. 16, 2013) to
first-to-file system.

§ 103 – Nonobviousness
(inventive step)
• “The ultimate condition of patentability.”
• Test: Would the differences between the prior
art and the claimed invention have been
obvious to a PHOSITA?
• U.S. courts often look for objective evidence /
secondary considerations, such as failure of
others and commercial success.

When is a patent infringed?
Direct Literal infringement: making, using, offering to sell,
§ 271(a) selling, or importing a patented invention
Doctrine of equivalents: infringing product / process has
equivalent to every element of patented invention
Indirect Active inducement (e.g., giving instructions)
§§ 271(b)-(c)
Contributory infringement (selling or importing part of a

patented invention)
Extraterritorial Supplying from the U.S. components of a patented
§§ 271(f)-(g) invention for use abroad
Importing into the U.S. a product made abroad by a
patented process
What are the limitations?
• Patent unenforceable for inequitable conduct
(fraud on the USPTO), including contradicting
statements made to other patent offices.
• Very narrow experimental use exception.
• Exhaustion of rights by first sale. (Supreme
Court may hear Lexmark v. Impression Products
on international exhaustion and conditional
sales.)
Utility Patents vs. Design Patents
• Utility patents protect functional aspects of invention
and are valid for 20 years from filing.
• Design patents protect ornamental designs and are
valid for 14 years (15 if filed after May 13, 2015).
y)

first sale
Copyright Law
When do you have a valid copyright?
• “original works of authorship” 
independent creation +
modicum of creativity
• “fixed in any tangible medium of
expression”  more than
transitory duration (but might
have state law remedies for non-
fixed works!)
• no copyrights on facts, ideas
(only expressions of ideas),
methods of operation, or useful
articles (unless aesthetic
features are separable)
Compare: What can’t you protect?
Utility Patent Copyright
• laws of nature • facts
• abstract ideas • ideas
• obvious • uncreative
combinations of compilations of
existing elements existing material
• non-useful articles • useful articles
When is a copyright infringed?
• Direct liability:
– reproduction right (need to show both actual copying
and “substantial similarity”)
– right to prepare derivative works
– right to distribute (limited by first sale)
– right to perform / display publicly
– limited protection for moral rights under Visual Artists
Rights Act (VARA)
• Indirect liability based on traditional tort
principles (liability for employees) and patent
standards for inducement / contributory
infringement
• Many specific statutory exemptions (certain
library rights, classroom use, statutory licenses,
etc.); most important is fair use (4-factor test)
• Fair use:
– Parodies / “transformative” art
– Recording TV at home to watch later
– Thumbnail images in search
– HathiTrust & Google Books
• Not fair use:
– Excerpting the heart of a book pre-publication
– Photocopying articles for industry research
– Unauthorized, non-parodic sequel
y)

first sale
Trademark Law
Why protect trademarks?
• Different from trade secrets, patents, and
copyrights: don’t need to incentivize creation
of new marks.
• Case outcomes can depend on what theory
court finds most compelling:
– Reducing consumer search costs
– Providing incentive for firms to invest in quality
– Protecting firms’ property rights
When do you have a valid trademark?
generic descriptive suggestive arbitrary fanciful
yo-yo Vision Center Coppertone Apple Kodak
functional color,
packaging
features design
never protectable only with inherently distinctive /

protectable acquired distinctiveness source-indicating
(includes names and
geographical terms)
• any source-identifying “symbol,” including color or trade dress,

that meets threshold of distinctiveness (inherent or acquired)
• no protection for functional features (utilitarian or aesthetic)
• priority goes to first to use in commerce
When is a trademark infringed?
• Defendant must be using as a mark in commerce
• Likelihood of confusion
– Multi-factor test varies by Circuit (e.g., strength of
plaintiff’s mark, similarity of the marks, proximity of
the goods…)
– Types of confusion: product confusion, source
confusion, confusion as to sponsorship, initial interest
confusion, post-sale confusion, reverse confusion
• Dilution: plaintiff owns famous mark, association
between plaintiff’s and defendant’s mark is likely
to cause either blurring or tarnishment
Dilution by Blurring
Rolls Royce
Rolls Royce
Rolls Royce
Rolls Royce
Dilution by Tarnishment
“harms the reputation of the famous mark”
.
v.
4th Cir. 2007: no likelihood of confusion or dilution; successful parody

depends on famousness of LV mark and copying enough to evoke
Fair Use
Abandonment
Descriptive Nominative
describing other describing TM
product owner's product
Lanham Act § 33 – use “which is descriptive use which identifies the TM owner’s product
of and used fairly and in good faith only to for discussing it, comparative advertising,
describe the goods or services of such party” parody, etc. (1st Amendment concerns)
y)

first sale

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Introduction to U.S.

1.When is there a valid IP right?

Limitations independent experimental use, fair use, abandonment,

Congress & U.S.

U.S. Patent & 94 U.S.

Copyright Food & Drug

theft / improper means violation of a

Limitations independent experimental use, fair use, abandonment,

Anatomy of a Patent Claim

Look to the claim elements, as construed by a

§ 101 Patentable Subject Matter

§ 112 Enablement & Written Description

§ 112 Claim Definiteness

subject matter disclosure novelty

utility definiteness nonobviousness

subject matter disclosure novelty

utility definiteness nonobviousness

utility definiteness nonobviousness

subject matter disclosure novelty

utility definiteness nonobviousness

subject matter disclosure novelty

utility definiteness nonobviousness

utility definiteness nonobviousness

Contributory infringement (selling or importing part of a

Limitations independent experimental use, fair use, abandonment,

Limitations independent experimental use, fair use, abandonment,

never protectable only with inherently distinctive /

• any source-identifying “symbol,” including color or trade dress,

4th Cir. 2007: no likelihood of confusion or dilution; successful parody

Limitations independent experimental use, fair use, abandonment,

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