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© 2005 Dechert LLP Overview of Intellectual Property: The Legal Perspective Michael Edelman Dechert LLP 650.813.4857 Presented.

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Presentation on theme: "© 2005 Dechert LLP Overview of Intellectual Property: The Legal Perspective Michael Edelman Dechert LLP 650.813.4857 Presented."— Presentation transcript:

1 © 2005 Dechert LLP Overview of Intellectual Property: The Legal Perspective Michael Edelman Dechert LLP Presented at the University of Arizona (Optical Sciences Center) February 17, 2005

2 Overview of Intellectual Property: The Legal Perspective 2 Summary Different types of intellectual property How to obtain rights in intellectual property Enforcement of intellectual property rights Issues specific to patent litigation Recent case law on intellectual property issues

3 Overview of Intellectual Property: The Legal Perspective 3 Different Types of Intellectual Property Patents Copyrights Trademarks Trade secrets Other related claims

4 Overview of Intellectual Property: The Legal Perspective 4 Different Types of Intellectual Property Patents –Government issued grant, conferring upon owner the right to exclude others from making, using, offering for sale, or selling an invention Does not convey a positive right to make, use, or sell the invention –Patent term lasts for 20 years after filing date (for patents filed after 6/8/1995) –Rooted in Article I, Section 8 of the Constitution Congress is given the 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”

5 Overview of Intellectual Property: The Legal Perspective 5 Different Types of Intellectual Property –To be patented, invention must be useful and novel “ On-sale” bar Anticipation defense Obviousness defense –Arguably most powerful type of intellectual property

6 Overview of Intellectual Property: The Legal Perspective 6 Different Types of Intellectual Property Copyright –Protects expressions of a work of authorship –Does not protect ideas themselves: Section 102 of Copyright Act: “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated or embodied in such a work”

7 Overview of Intellectual Property: The Legal Perspective 7 Different Types of Intellectual Property –Examples of works that can be the subject of copyright protection: Books; designs; musical recordings; source code –Though one can own copyright without registration, owner needs a registration to sue –In order to sue, must show “substantial similarity” between copyrighted work and infringing work

8 Overview of Intellectual Property: The Legal Perspective 8 Different Types of Intellectual Property Trademarks/trade dress –Protects against consumer confusion –Typically not considered a “property” right in the same way as patents –Do not need trademark registration to sue, but it is extremely helpful for enforcement –To succeed in suit, need to show mark is distinctive and that there is likelihood of confusion

9 Overview of Intellectual Property: The Legal Perspective 9 Different Types of Intellectual Property –Federal trademarks governed by Lanham Act; state protection also available –Trade dress: Packaging or non- functional product design that becomes identified with particular source

10 Overview of Intellectual Property: The Legal Perspective 10 Different Types of Intellectual Property Trade secrets –Governed by state law rather than federal law –Uniform Trade Secrets Act enacted by most states –Trade secret must be subject of reasonable efforts to preserve secrecy, and have independent economic value from secrecy –Often difficult to enforce; difficult to adequately define trade secret and prove it has stayed secret

11 Overview of Intellectual Property: The Legal Perspective 11 Different Types of Intellectual Property Other –Corporate opportunities –Ideas protected by contract/agreement –Unfair competition laws

12 Overview of Intellectual Property: The Legal Perspective 12 How to Obtain Intellectual Property Rights Common misconception: Intellectual property rights are only obtained through certificate with PTO –Not true for certain types of IP Patents –Must obtain patent registration to have rights –Newer federal law permits recovery of damages for pre- issuance infringement under certain circumstances

13 Overview of Intellectual Property: The Legal Perspective 13 How to Obtain Intellectual Property Rights Copyrights –Can possess a common law copyright without obtaining a registration certificate –Cannot proceed with infringement suit without obtaining registration

14 Overview of Intellectual Property: The Legal Perspective 14 How to Obtain Intellectual Property Rights Trademarks –Trademark rights acquired by use, not by registration –Registration provides procedural advantages, but is not requirement for infringement suit Trade secrets –No registration required; can possess a trade secret even if never used

15 Overview of Intellectual Property: The Legal Perspective 15 How to Obtain Intellectual Property Rights Obtaining a patent –Can be expensive and arduous process –First file a patent application with PTO, which should include written description and proposed claims (the “specification”), and drawings Specification often includes background of invention, summary of invention, detailed description of invention, abstract, and oath or declaration –Can file “provisional” application to protect rights

16 Overview of Intellectual Property: The Legal Perspective 16 How to Obtain Intellectual Property Rights –After filing, often have to wait many months or possibly years before PTO issues an “office action” Examiner will search for prior art, and also examine application for other defects –Office action usually rejects claims, often because of Examiner’s belief that inventions in application are not novel (can be “anticipated” by prior art or inventions can be “obvious”)

17 Overview of Intellectual Property: The Legal Perspective 17 How to Obtain Intellectual Property Rights –Applicant can then file response to Office Action, arguing why invention is novel compared to prior art This is “danger area” for litigation, because statements made by applicant can come back to haunt it –Eventually, PTO either issues a final rejection, or accepts some or all of claims and patent is issued –After issuance, patent is presumed valid, and it is burden of defendant to disprove validity

18 Overview of Intellectual Property: The Legal Perspective 18 Enforcement of Intellectual Property Rights Limited ways in which party can protect IP position in PTO –Interference proceedings –Re-examination proceedings –Filing an opposition to another party’s trademarks

19 Overview of Intellectual Property: The Legal Perspective 19 Enforcement of Intellectual Property Rights Typically, serious attempt to enforce IP rights requires sending of cease and desist letters and/or resort to the courts For high-tech companies, patent litigation is often critical –Remember “defensive” as well as “offensive” value of patents

20 Overview of Intellectual Property: The Legal Perspective 20 Enforcement of Intellectual Property Rights Strategies for enforcement of rights –Always enforce rights as part of an overall strategy – never take action in a vacuum –Always consider whether there is something that can be done in PTO that can avoid the need for litigation

21 Overview of Intellectual Property: The Legal Perspective 21 Enforcement of Intellectual Property Rights –Always make sure you evaluate the claims that can be asserted against you by opposing party –Always carefully evaluate the costs and all other burdens that litigation will entail before sending cease and desist letter –Do not hire a “litigation mill”

22 Overview of Intellectual Property: The Legal Perspective 22 Enforcement of Intellectual Property Rights –For patent litigation: Always make sure that file histories and files of prosecuting attorneys are reviewed Always make sure that attorneys have analyzed claim construction issues before filings Never assume that you have a “slam dunk” case – there is no such thing in patent litigation

23 Overview of Intellectual Property: The Legal Perspective 23 Issues Specific to Patent Litigation Patent litigation is typically the most expensive and burdensome type of IP litigation Patent litigation is the most intellectually challenging type of IP litigation –Extreme tension between arguments on infringement and validity

24 Overview of Intellectual Property: The Legal Perspective 24 Issues Specific to Patent Litigation Patent litigation has unique procedures –“Markman” hearing: Up to the court to decide “what the claims mean”; this usually requires a mini-trial on claim interpretation –Interpretation of claims is a heated and difficult issue District courts get it wrong almost half of the time

25 Overview of Intellectual Property: The Legal Perspective 25 Issues Specific to Patent Litigation To prove patent infringement: –Must show you have a valid patent Typical invalidity defenses: “on-sale” bar; anticipation; obviousness; lack of enablement; lack of written description –Must show you have an enforceable patent (no inequitable conduct) –Must show defendant infringes, either literally or under “doctrine of equivalents”

26 Overview of Intellectual Property: The Legal Perspective 26 Recent Case Law Knorr-Bremse v. Dana Corp., 383 F.3d 1337 (Fed.Cir. 2004). –No inference of willful infringement because of failure to produce advice of counsel NTP v. Research in Motion, 392 F.3d 1336 (Fed.Cir. 2004). –Affirming in part trial court’s finding that BlackBerry infringes plaintiff’s patents

27 Overview of Intellectual Property: The Legal Perspective 27 Recent Case Law Centricut v. ESAB, 390 F.2d 1361 (Fed. Cir. 2004) –“[W]here the accused infringer offers expert testimony negating infringement, the patentee cannot satisfy its burden of proof by relying only on testimony from those who are admittedly not expert in the field” KP Permanent Make-Up v. Lasting Impressions I, 125 S.Ct. 542 (2004) –To succeed on fair use defense in trademark case, defendant does not have a burden to negate any likelihood that the practice complained of will confuse consumers

28 Overview of Intellectual Property: The Legal Perspective 28 Summary The field of intellectual property is very diverse. Important to be familiar with basic mechanics of how to obtain intellectual property rights, and whether you need to use the PTO. Important to be familiar with the different strategies for enforcing rights, and come up with overall intellectual property plan. Patent litigation is a complex and costly endeavor, which requires planning and excellent legal advice.

29 Overview of Intellectual Property: The Legal Perspective 29 Michael Edelman Dechert LLP Palo Alto, California ; Michael N. Edelman is a partner in Dechert LLP’s intellectual property litigation group, resident in the Palo Alto office. He focuses his practice on patent infringement, trademark infringement, trade dress infringement, unfair competition, and misappropriation of trade secrets. He also has extensive experience handling disputes between employers and former employees concerning claims of misappropriation of trade secrets and diversion of corporate opportunities. In one of Michael's most recent trade secret and patent infringement cases, he won significant pre-trial orders and sanctions that helped lead to an extremely favorable settlement for his client. In this high-profile dispute between two public software companies, Michael supervised a team of computer forensic experts who used state-of-the-art technology to uncover the defendants' "disk wiping" activities. Michael is admitted to practice in California state courts, the Northern District of California, and the United States Court of Appeals for the Ninth Circuit. He is a graduate of the University of California at Santa Cruz (B.A., 1990) and the Santa Clara University School of Law (J.D., 1995), where he was the ethics editor of Volume 35 of the Santa Clara Law Review and was also the author of "Ethics Year in Review" and "Attorney Withdrawal From Concurrent Representations," which were published in the Santa Clara Law Review. He was also a recipient of American Jurisprudence Awards in Legal Research, Writing, and Commercial Transactions and participated in various Moot Court competitions.


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