Protecting Your Clients’ Creative and

Valuable Ideas
The Basics of Intellectual Property Law
 WHAT IS INTELLECTUAL
PROPERTY?
• The protection of ideas

• IP = Idea Protection

• Originates from U. S. Constitution – “To Promote the

Progress of Science and useful Arts…”
 THE VAST REACH OF IP LAW
• Books
• Machines – cars, laptops, cellphones, aircraft
• Sporting goods – sunglasses, tree stands, laser sights
• Soft drinks
• Artwork
• Running shoes
• Remote controls – TV, garage doors, trail cams
• Full length movies
• Food – cookies, pop chips, tabasco
• Service mark sounds – NBC chimes
 WHY IS IP IMPORTANT?

• Advances human enjoyment

• Music, art, writings, innovations

• Intangible corporate assets - $$$$

• Licenses
• Royalties
• Trading Chips

• Provides protection from competitors

• How to go about protecting it?
• First - must identify
 BASIC IP CONCEPTS

• Patents, copyrights, trademarks, trade secrets – for each

one:
• What is it?
• What qualifies for it?
• How do you get it?
• How long can it last?
• “some” CAUTIONS
 BASIC CLIENT
MISUNDERSTANDINGS
• “I’d like to get a copyright on the new name for my
restaurant”
• “Can you get me a patent on my song?”
• “Let’s trademark the title of my book?”
• “I saw a new product in Canada, and I want to get a
patent on it in Florida”
 CHALLENGE IN IDENTIFYING
VALUABLE IP?
• Many Engineers and Scientists:
• Solve every day problems
• Don’t beat their own drums
• Are humble
• Are quiet

• The enterprise needs a way to identify IP

TANGIBLE ASSETS – IDENTIFY
AND INVENTORY
 INTANGIBLE ASSETS –
DIFFICULT TO IDENTIFY
 TYPES OF PROTECTION

• Copyrights
• Trademarks & Servicemarks
• Trade Secrets
• Patents
• Contracts
• Many situations will call for some combination of the
types of protection available
 CRAFT BEER EXAMPLE

• Trade Secrets – recipes, ingredients, etc.

• Trademarks – name, name of beer
• Copyright – web site, label/marketing artwork
• Trade dress – look and feel of packaging and label
• Contracts – covenants not to compete, assignments,
secrecy
 SOFTWARE PRODUCT
EXAMPLE
• Copyright
• The code itself
• Structure, sequence, organization

• Trademark – the name

• Patent – the process
• Trade Secret – keep the source code secret
• Contracts
• Assignments – with contributors
• Licenses – with users
 RESTAURANT EXAMPLE

• Trade Secrets – recipes, ingredients, etc.

• Trademarks – name, name of dish
• Copyright – web site, artwork
• Trade dress – look and feel of lobby
• Contracts – covenants not to compete, assignments,
secrecy
 TYPES OF INTELLECTUAL
PROPERTY
• Copyrights
• Trademarks & Servicemarks
• Trade Secrets
• Patents
 TYPES OF INTELLECTUAL
PROPERTY
• Copyrights
• Trademarks & Servicemarks
• Trade Secrets
• Patents
COPYRIGHTS – TYPICAL BASIC
QUESTIONS
• Where does protection come from?
• Who can obtain protection?
• What can be covered?
• What rights are granted?
• How long does protection last?
• What qualifies as “Fair Use” of another’s work?
 U.S. CONSTITUTION
ARTICLE 1, SECTION 8, CLAUSE 8
The Congress shall have power….

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.
 COPYRIGHTS

• Subject Matter:
• Works of original authorship
• Fixed in a tangible medium of expression from which they can be
perceived, reproduced, or otherwise communicated directly, or
with the aid of a machine or device
 COPYRIGHTS

• Works of authorship include:

• Literary works
• Musical
• Dramatic
• Pantomimes
• Pictorial, graphic, sculptural
• Motion pictures, other audiovisual
• Sound recordings
• Architectural works
 EXAMPLES

• Books
• Sheet music, Recordings
• Photographs
• Paintings
• Software
• Company brochures
• Website content
 COPYRIGHTS

• Copyright holder owns the EXCLUSIVE right:

• to reproduce
• to prepare derivative works
• to distribute copies
• to publicly perform
• to publicly display
 COPYRIGHTS

• Term of protection:
• “rights” vest at moment of authorship/creation
• Copyright Registration not req’d for vesting
• Registration IS required for bringing suit
• for individual author - life, plus 70 years
• for corporation - lesser of:
• 95 years from publication, or
• 120 years from creation
 COPYRIGHT – REGISTRATION
ADVANTAGES

• Winning plaintiff – attorney’s fees

• Statutory damages
• $750 to $30,000 per work
• up to $150,000 if “willful infringement”

• Customs impounding of infringing goods

 COPYRIGHT LAW WILL NOT
PROTECT
• Ideas
• Procedures
• Processes
• Systems
• Methods of operation
• Concepts
• Principles
• Discoveries
COPYRIGHT – NON-EMPLOYEE
AS AUTHOR
• Employee authorship – in line and scope
• “Author” is the employer
• Employer owns the copyright rights

• Independent contractor author

• Ind. contractor owns the copyright rights
• unless otherwise agreed in writing

• Notice provision
• “Copyright 2018 Bradley Arant Boult Cummings LLP”
 COPYRIGHT – COPYRIGHT
NOTICE
• Notice no longer required for protection
• But a good idea to use one
• Keep the honest people honest

• Notice format
• Copyright 2018 Bill Jones
• © 2018 Acme Incorporated

• All rights reserved

• Refers to the exclusive rights, some may be licensed away
 COPYRIGHTS – SOFTWARE
ISSUES
• Software protected – defined in the Act
• Literary – source code
• Non-literal - Structure, seq., org., GUI, logic

• Joint work – merged, inseparable, interdependent, unitary whole

• Co-owners of all rights
• Pro-rata accounting – if not otherwise agreed
• Obtain rights from all contributors

• Deposit code (redacted) to protect the trade secret

 COPYRIGHTS – FAIR USE
• Sec 107 – “Limitations on Exclusive Rights”
• Notwithstanding the [exclusive rights sections], the fair use of a copyrighted
work ….for purposes such as criticism, comment, news reporting, teaching ….
scholarship, or research, is
• NOT an infringement of copyright.

• Factors
• purpose and character of the use, commercial vs nonprofit, and transformative
(changed, new, etc)
• the nature of the copyrighted work – (just facts, from published work)
• the amount taken compared to the whole (less is more, except in Parody), and
• effect on the potential market for the copyrighted work.
 TYPICAL COPYRIGHT MATTERS
• Registrations of all types of authorship
• Artwork
• Photography
• Software
• Joint works
• Derivative works

• Licensing of Works
• Assignments – by commissioned authors to the payor
• Architectural works
• Maps
• Music
 TYPES OF INTELLECTUAL
PROPERTY
• Copyrights
• Trademarks & Servicemarks
• Trade Secrets
• Patents
 TRADEMARKS – TYPICAL
BASIC QUESTIONS
• Where does protection come from?
• What are trademarks?
• Who can obtain protection?
• What rights are granted?
• How long does protection last?
 U.S. CONSTITUTION
ARTICLE 1, SECTION 8, CLAUSE 3
COMMERCE CLAUSE

Congress shall have power….

“To regulate Commerce

with foreign Nations,
and among the several States,
and with the Indian Tribes.”
 TRADEMARKS
• VERY important IP right
• Brand identity – market niche protection
• Reduce clutter. Prevent confusion. Distinguish.
• Relatively inexpensive to protect (compared to patent protection)
• Work well across borders, cultures, and languages
• Long-term protection while in use (QUAKER – 1895)
• Provide value for expansion beyond core business
• Assigned, pledged, licensed
• Registration is important
 TRADEMARKS &
SERVICEMARKS
• Indicates source of goods and services
• Word, name, symbol, device, sound, color
• Used to distinguish your goods and services from those
sold by others
• Brand identity
 THE POWER OF TRADEMARKS

• Trademarks as full words – well known

• BUT – can a single letter or a small design element serve

to identify a particular product to a consumer?
TRADEMARK “PIECES”
 KEY TO LOGO IMAGES

• Pez, Google, Mattel, Coca Cola

• Planters, UAH, NFL, Wheaties, Vanderbilt

• McDonald’s, Zaxbys, Rolling Stones, MasterCard,

Walmart
Key to Alphabet Images
A = All detergent B = Bubblicious gum
C = Campbell’s soup D = Dawn detergent
E = Eggo waffles F = Frito Lay
G = Gatorade drink H = Hebrew National franks
I = Icee drink J = Jello
K = Kool Aid L = Lysol cleaner
M = M&M candy (peanut) N = Nilla wafers
O = Oreo cookies P = Pez candies
Q = Q-tips ear swabs R = Reese’s cup candies
S = Starburst candies T = Tide detergent
U = Uncle Ben’s rice V = V-8 drink
W = Wisk cleaner X = X-14 cleaner
Y = York Peppermint Patty Z = Zest soap
 EXAMPLES

• NBC peacock, and chimes

• Logo and trade dress

• Color pink for insulation

• Nike “swoosh”

• Phrase “Intel Inside”

EXAMPLES

•
MUSIC, SOUNDS, VOICE, SCENT

• 3,034,331 – McDonald’s – “I’m lovin it”

• the notes A B C E D

• 2,315,261 – Intel – Intel inside

• the notes D FLAT, D FLAT, G, D FLAT and A FLAT

• AOL
• rapid series of chime-like musical notes written on the treble clef in
the key of C major, comprising a progression of the musical notes C,
D, F, G, C, and the combined notes A and D
MUSIC, SOUNDS, VOICE, SCENT

• 3,020,512 – Brown and Brown, Inc.

• insurance brokerage services
• sound of a wild cat growling

• 916,522 – NBC chimes

 TRADEMARKS – WEAK TO
STRONG
• Generic words – pizza, shoe
• Descriptive – describe a feature of the goods
• Suggestive – requires mental connection
• Arbitrary – use word with different meaning
• Coined, Fanciful – totally made up
 TRADEMARKS – WEAK
• Generic - common names not capable of exclusive ownership (pizza,
house, automobile)
• Descriptive - describe a characteristic, element, function, of the
product; very weak, but inexpensive to put in use
Not protectable till acquire "secondary meaning" in consumer's mind.
“So associated with the product that it identifies the source of the
product and distinguishes the product from those of others”. Jeld-Wen
v. Dalco Industries (8th Cir. 11/10/99)
 TRADEMARKS – STRONG
• Suggestive - suggest something about the product, but do not
describe it
• Requires imagination, thought, and perception
 TRADEMARKS – STRONGEST

• Fanciful or "coined" – meaningless

• Arbitrary
• well-known words - arbitrary use
 TRADEMARKS

• Term:
• potentially perpetual
• must continue to use
• must exercise control over quality of goods
or services
 TRADEMARKS

• Infringement: Likelihood of confusion as to source or

sponsorship between two marks
• Many factor test
• Similarity of marks
• Similarity of goods / services
• Strength of mark
• Similarity of channels of trade
• Sophistication of purchasers (Lexus vs Lexis)
 SUGGESTIONS:
HOW TO PROTECT YOUR TRADEMARK OR
SERVICEMARK
• Select – brainstorm, differing “strengths”
• Search – clearance, “knockout”, full name
• Register – federal, state, pharma
• Use it
• Correctly – as an indicator, not as a noun (Aspirin)
• Consistently – not different versions
• With markings – ®, TM, SM,
• Use or Lose – must use to keep rights

• Police – keep track of others’ uses

• Broaden – Int’l market needs? Logo? Design? Tagline?
• Maintain – perpetual, 5 to 6 year, renewal, $$
 TRADEMARKS – TYPICAL
MATTERS
• Registrations
• Infringement cases
• Radio stations
• Financial institutions
• Residential developments

• Domain name disputes

• Arbitration
• Worldwide
• Bad faith use
• Pro-rata accounting – if not otherwise agreed
• Obtain rights from all contributors

• Licensing
 TYPES OF INTELLECTUAL
PROPERTY
• Copyrights
• Trademarks & Servicemarks
• Trade Secrets
• Patents
 TRADE SECRETS
• Think : “Trade” PLUS “Secret”
• Information used in trade or business. Has significant economic value
• Included in formula, pattern, compilation, computer software, drawing,
device, method, technique, or process
• Has significant economic value
• Not publicly known
• Not generally known to trade or business
• Can’t be derived from publicly available sources
• Has been subject to efforts to keep it secret
 DEFINITIONS -
MISAPPROPRIATION
• Misappropriation
• Acquisition of a trade secret by improper means; or
• Unauthorized disclosure or use by a person who acquired by
improper means, or who knew . . . it was a trade secret or was
acquired by improper means.

• “Improper Means”
• theft, bribery, misrepresentation, breach or inducement of a
breach of a duty to maintain secrecy or limit use, or espionage
through electronic or other means.
 BASICS OF LOSS OF TRADE
SECRETS
• Trade secret law will protect you from misappropriation
and theft.
• Trade secret law will not protect you from your
revelation of your trade secrets (purposeful or careless).
• Trade secret law will not protect you from your failure to
protect in the first instance.
 MISAPPROPRIATION, VALUE,
SECRECY
• Misappropriation or theft usually easy to identify
• Information, economic value, and advantage over a
competitor
• Secrecy – If a trade secret is not kept secret, then the
legal protections will be lost

• State and Federal causes of action for trade secret

misappropriation
 THE UNWANTED TRUTH

By the time misappropriation (use or

unwanted and unauthorized
disclosure) of trade secrets occurs, the
case already may be lost due to failure
to take steps to keep them secret!
 PLAN FOR PROTECTION

• Identify trade secrets

• Routine trade secret audits
• Steps for ongoing protection of trade secrets
 KEY PEOPLE IDENTIFY TRADE
SECRETS
• Manufacturing processes
• Computer programs
• Business know-how
• Formulas
• Business methods
• Vendor/Supplier/Customer Lists
• Marketing plans
• “Negative” information (what doesn’t work)
 POTENTIAL TRADE SECRETS

• Is the process/invention/information a secret?

• Is it valuable to the company?
• Is it known generally in the industry?
• Is it obvious to others?
• Can it easily be reverse engineered?
• Be wary of temptation to claim “everything” is a trade
secret
 TRADE SECRET AUDIT

• Are there measures in place to identify trade secrets?

• Are the measures effective or are others needed?
• Where are trade secrets maintained?
• Who has access?
• Are there written policies?
• Nondisclosure agreements?
• Further safeguards?
 EFFORTS TO KEEP SECRET -
EXAMPLES
• Visitor logs
• Secure spaces
• Need to know
• Shredding discipline
• Garbage
• Cleanse old computer hard drives
• Markings
• Don’t release outside company
 STEPS TO PROTECT TRADE
SECRETS
• Segregate trade secrets from non-trade secrets
• Label trade secret documents
• Employees - manuals, training, exit interviews, notice
letters
• Physical and virtual barriers
• Restrict/control plant access
• Prevent dissemination to public
• Nondisclosure agreements
 USE OF NON-DISCLOSURE
AGREEMENTS
• Critical element of a successful trade secret program
• Very common business document, but rarely gets the
legal scrutiny it needs
• “Internal” NDAs with employees and contractors
• “External” NDAs with business partners and transaction
candidates
• One size does NOT fit all!
WHAT IS COVERED BY THE NDA?

• Definition of “confidential information” should be precise but

manageable
• Usually should specifically list “trade secrets,” or include the
statutory definition as a type of information that is covered
• List specific categories that are important (e.g. customer lists,
product formulas, etc.)
 LABELING REQUIREMENTS

• Labeling requirements (or follow-up requirements) are often not

followed
• Result = possibly important information not expressly covered by
NDA
• Very large companies use labeling for risk management
• Reduces risk of either party’s unintentional noncompliance

• If you are concerned about your own client’s ability to comply

with a marking requirement, make it a separate obligation and
NOT a part of the definition of Confidential Information
 COMMON EXCEPTIONS

• Publicly available through no fault of receiving party

• Independently developed without use of disclosing
party’s confidential information
• Received from a third party not bound by a duty not to
disclose
• Residuals – usually defined as “information retained in
unaided memory”
 OBLIGATIONS UNDER NDAS

• Obvious one = don’t disclose!

• Be careful of efforts limitations
• Restrictions on reverse engineering

• Less obvious but still important = don’t use it for any

other purpose
 PERMITTED DISCLOSURES

• Employees who “need to know”

• Representatives (e.g., attorneys, accountants) only if
bound by a similar duty of nondisclosure
• Court order or other legal obligation
• This should NOT be an exception to what is covered (but often is
drafted this way)
• Require advance notice and efforts to seal it
 TERM

• Term is ok for non-trade secrets

• Typically some period of time after relationship ends, discussions
stop, or last confidential information is disclosed

• Exclude trade secrets

• Expiration with respect to trade secrets could be problematic to
efforts to enforce a trade secret that was disclosed under expired
NDA
 A FINAL THOUGHT ON NDAS

• Self-Protection in disclosure
• Just because there is an NDA with a third party, there is
not an obligation to disclose “everything”
• Only disclose what is needed for success of the
venture/experiment/collaboration
• Be wary of disclosing “crown jewels” even with an
NDA
 SUMMARY

• Information that is not kept secret is not protected as a

trade secret
• Take steps on the front end
• Regularly assess what the company wants to protect as
trade secrets and the steps being taken
• NDAs are vital for dealings with third parties that may
require disclosure of confidential information or trade
secrets
 TYPICAL TRADE SECRET
MATTERS
• Misappropriation cases
• Lack of secrecy measures
• Public info already

• Covenants not to compete

• Territory
• Time

• New employee / Ex-employee

• Retain information
• Lab books
• Software
IF INFO IS PUBLIC, THEN NO LONGER TS
(MOBILE MEDICAL INT’L CORP V. UNITED STATES, NO. 10-148C, REDACTED VERSION , 16NOV10, FED. CL.)
IF INFO IS PUBLIC, THEN NO LONGER TS
(MOBILE MEDICAL INT’L CORP V. UNITED STATES, NO. 10-148C, REDACTED VERSION , 16NOV10, FED. CL.)
IF INFO IS PUBLIC, THEN NO LONGER TS
(MOBILE MEDICAL INT’L CORP V. UNITED STATES, NO. 10-148C, REDACTED VERSION , 16NOV10, FED. CL.)
 USE OF CONTRACTS FOR IP
PROTECTION
• Licenses
• Click-wrap
• Formal, negotiated
• Field of use, types of rights, territory

• Assignments – employees, independent contractors

• Non-disclosure agreements
• Non-compete agreements
• Terms of use agreements
 TYPES OF INTELLECTUAL
PROPERTY
• Copyrights
• Trademarks & Servicemarks
• Trade Secrets
• Patents
 WHAT IS A PATENT?

• A patent is the right to exclude others from making,

using, selling, or offering to sell the patented invention
during the term of the patent
 WHAT A PATENT IS NOT

• A patent is not the exclusive right to practice (make, use,

or sell) the patented invention.

• In some cases, such as with improvement patents, you

may need a license from others to practice your own
invention.
PATENTABLE SUBJECT MATTER

• What Is Patentable?
• “Any new or useful process, machine, manufacture, or composition of
matter, or any new and useful improvement therefor”

• New, Useful, Nonobvious

• What is Not Patentable?

• Laws of Nature, Natural Phenomena, Purely Mathematical Algorithms
 ENFORCEMENT

• The patent owner is responsible for discovering

infringing activities and enforcing the patent against the
infringer, which may require initiating litigation in
federal court.

• The Patent Office does not attempt to detect or stop

patent infringement.
 WHY SEEK PATENT
PROTECTION?
• Exclude others. Without patent, others can copy with
impunity.
• Secure financing / funding
• Joint ventures or joint development
• Royalty revenue
• Cross – licensing
• Premium value when selling Company
 LIMITED IN TERRITORY

• Applies to activities only in United States.

• Patent protection is available in other countries.

 GOVERNMENT-GRANTED
MONOPOLY

• 20 years from date of filing for currently issued patents.

• 17 years for patents issued before June 8, 1995.

FILING A PATENT APPLICATION

• File Before Disclosure if Possible

• Beware of Invention/Patent Marketing Services

• Hire a Qualified Patent Attorney

• Mark Products with “Patent Pending” after Filing

SELECTING A PATENT ATTORNEY
• Hire a only a Registered Patent Attorney
• Attorney should be experienced in the preparation (“prosecution”) of patent
applications
• Attorney should have experience and/or background in the technical area
• An IP Attorney will be able to help you and your clients develop a
comprehensive Intellectual Property Plan that includes:
• Patents
• Trademarks
• Copyrights
• Trade Secrets
• Licensing
• Enforcement
 WHAT AND WHEN TO PATENT?

• Patent Application should be considered when a change is

made to a product or process to:
• Solve a Problem
• Make an Improvement
• Increase Efficiency

• Invention may be an improvement on another party’s

product, even if that product is already patented
• Complexity of an invention DOES NOT equate with the
value of a patent
 WHAT ARE PARTS OF
APPLICATION?
• Abstract
• Specification
• Field of invention
• Background (problems solved).
• Summary
• Detailed description
• Drawings
• Claims (defines scope of monopoly)
 IMPORTANT QUESTIONS

• Can I design around someone else’s patent?

• What if my invention is just a slight improvement?
• How long after my filing will my application be
published?
Patent applications can be kept confidential.
 WHY A PATENT SEARCH?

• Helps inventor and patent attorney draft better

application
Increases likelihood of getting patent

• May reveal that the “invention” has already been

invented
Saves money!
 DESIGN PATENTS

• For ornamental features

• Important, unique, and worthy of separate protection
• Examples:
• Furniture
• Jewelry
• Christmas ornaments
PATENT MARKINGS

• After patent application filed, mark goods

“Patent Pending”

• After patent issues, mark goods with patent number. EX: “U.S.
Pat. No. 6,123,456”. Failure to mark, could limit infringement
damages.
 AMERICA INVENTS ACT

• The most substantial reform of U.S. patent laws in over

50 years.
 AIA - FIRST-TO-FILE
PROVISIONS
• U.S. has moved from a first-to-invent system to a first-
to-file system.
• first true inventor to FILE will be awarded the patent rights.

• First-to-file system appliesto applications with priority

claims that fall 18 months after the date of enactment
(March 16, 2013).
 PUBLIC DISCLOSURE GRACE
PERIOD
• The AIA retains an inventor’s one year personal grace
period for filing an application after disclosure, if the
public disclosure :
• Was made by the inventor;
• Was made by a third party that obtained the information from the
inventor

• BUT, no grace period for a third party disclosure of an

independently-created invention
 DERIVATION PROCEEDING

• The AIA replaces the current interference system with a

derivation proceeding.
• Derivation proceedings will determine whether an inventor
named in an earlier-filed application derived the claimed subject
matter from the inventor of a later-filed application.
• Derivation proceedings apply to applications having priority
claims that fall 18 months after the AIA’s enactment (March 16,
2013).
 PATENT PROSECUTION
CHANGES
• The AIA includes a mandatory 15% increase in all patent
fees, which became effective on Sept. 26, 2011.
• A $400 fee was also imposed for all non-electronic patent filings,
effective Nov. 16, 2011

• The AIA also created a new entity for fee calculation

purposes, the “micro entity,” which qualifies for a 75%
reduction in most patent fees.
 MICRO ENTITIES
• To qualify as a micro entity an applicant must:
• Qualify as a small entity;
• Be named as an inventor on no more than 4 previously-filed U.S. applications;
• Have less than three times the median household income in the previous
calendar year (as defined by the IRS); and
• Have not granted or be under an obligation to grant a license or other
ownership interest in the application to an entity that has three times the
median household income in the previous calendar year (as defined by the
IRS).

• Institutes of higher education, as defined by the AIA, also qualify

for micro entity status.
 IF ALL YOU REMEMBER:
• Patents
• U.S. is now “First to File” – so FILE
• Establish a culture of IP awareness

• Trademarks
• If early – do a clearance SEARCH – (traction lost?)
• If “Intend” to use – file an “Intent To Use”
• Design mark – if change logo (a lot or a little)- REFILE
• ®, TM, SM – USE
• Foreign markets? Global economy – Foreign filing

• Copyrights – benefits to filing BEFORE the infrgmt

• Joint Authorship issues

• Trade Secrets – Keep it SECRET

• Use ALL available forms of protection
• Joint Dev. Contracts – decide who owns the baby
• Thank You!!!!