OVERVIEW OF INTELLECTUAL PROPERTY LAW PROF. PAUL JANICKE INSTITUTE FOR INTELLECTUAL PROPERTY & INFORMATION LAW UNIVERSITY OF HOUSTON LAW CENTER 2017

COPYRIGHT STATUTE: 17 U.S.C. PROTECTS “WORKS OF AUTHORSHIP” (§102) PREEMPTS SIMILAR STATE LAWS PROTECTS “WORKS OF AUTHORSHIP” (§102) BOOKS, ARTICLES, POEMS, PLAYS PHOTOS, DRAWINGS, PAINTINGS FILMS MUSIC SOFTWARE COMPILATIONS 2017 IP Survey -- OVERVIEW

REQUIREMENTS FIX THE WORK IN A TANGIBLE MEDIUM (§102(a)) PROTECTION IS AUTOMATIC NO PAPERWORK NEEDED NO NOTICE NEEDED NO REGISTRATION NEEDED 2017 IP Survey -- OVERVIEW

NOT A VERB ONCE THE WORK IS FIXED, COPYRIGHT RIGHTS AUTOMATICALLY EXIST CAUSES OF ACTION ACCRUE AGAINST ANY COPIERS 2017 IP Survey -- OVERVIEW

YOU CAN’T COPYRIGHT ANYTHING – IT’S ALREADY DONE! THE WORK IS “COPYRIGHTED” FROM THE MOMENT OF FIXATION NO PAPERWORK IS NEEDED 2017 IP Survey -- OVERVIEW

BUT IT’S OK TO SAY: “THE WORK IS COPYRIGHTED” “WE HAVE REGISTERED THE COPYRIGHT” (IF TRUE) REGISTRATION IS OPTIONAL BUT NEEDED BEFORE AN INFRINGEMENT SUIT CAN BE COMMENCED 2017 IP Survey -- OVERVIEW

PROTECTION IS TO PREVENT: SOMEONE COPYING SUBSTANTIAL PORTIONS SOMEONE MAKING A DERIVATIVE WORK FROM THE ORIGINAL NO PROTECTION AGAINST: INDEPENDENT CREATION FAIR USE OF SMALL PORTIONS 2017 IP Survey -- OVERVIEW

DURATION: REALLY LONG LIFE OF AUTHOR PLUS 70 YEARS IF JOINT AUTHORS, LAST SURVIVOR PLUS 70 YEARS 2017 IP Survey -- OVERVIEW

TRADEMARKS: ARE SIMPLY BRANDS LIKE CATTLE BRANDS USED ON GOODS OR CONTAINERS, MOVING IN COMMERCE THE MARK SIGNALS A COMMON SOURCE, OR AT LEAST A COMMON SOURCE OF QUALITY CONTROL 2017 IP Survey -- OVERVIEW

THESE TOO ARE AUTOMATIC RIGHTS TRADEMARK OWNERSHIP EXISTS UPON USE IN COMMERCE REGISTRATION IS OPTIONAL NO VERB “TO TRADEMARK” YOU USE IT, YOU’VE GOT IT 2017 IP Survey -- OVERVIEW

YOU HAVE NO RIGHTS FROM BEING THE FIRST TO THINK OF A MARK, EVEN IF FIRST TO DO SO FROM PUTTING THE MARK ON GOODS THAT YOU DO NOT SHIP IN COMMERCE 2017 IP Survey -- OVERVIEW

TRADEMARK CAN BE: A WORD: FORD A GROUP OF WORDS: COMPAQ DESKPRO A PHRASE: HAVE IT YOUR WAY A LOGO: [WE’LL SEE SOME] 2017 IP Survey -- OVERVIEW

REQUIREMENTS FOR MARK OWNERSHIP AND ENFORCEMENT: PLACE THE MARK ON GOODS, CONTAINERS; and MOVE THE MARKED GOODS IN COMMERCE. REGISTRATION IS NOT NEEDED! DON’T SAY “TRADEMARK” AS A VERB! 2017 IP Survey -- OVERVIEW

TRADEMARK’S FIRST COUSIN: SERVICE MARK USED “IN CONNECTION WITH” SERVICES, TO SIGNAL COMMON SOURCE USE CAN BE IN ADVERTISING SERVICES MUST ACTUALLY BE RENDERED IN COMMERCE 2017 IP Survey -- OVERVIEW

EXAMPLES OF SERVICE MARKS: MERRILL LYNCH McDONALD’S [WORD] [GOLDEN ARCHES] for McDONALD’S DALLAS COWBOYS HOLIDAY INN 2017 IP Survey -- OVERVIEW

REQUIREMENTS FOR OWNING A SERVICE MARK: USE THE MARK IN COMMERCE FOR ACTUAL COMMERCIAL SERVICES PRINT IT ON THE PAPERWORK, OR THE STOREFRONT, ETC. EXCLUSIVE OWNERSHIP ARISES FROM FIRST USE IN COMMERCE REGISTRATION IS NOT NEEDED 2017 IP Survey -- OVERVIEW

NO ONE OWNS A MARK FOR ALL GOODS/SERVICES YOU OWN A MARK FOR CERTAIN TYPES OF GOODS OTHERS CAN (AND USUALLY DO) OWN THE MARK FOR OTHER GOODS EXAMPLE: THERE ARE OVER 100 MARK OWNERS FOR “CHAMPION” 2017 IP Survey -- OVERVIEW

WHAT KIND OF MARK IS THIS? 2017 IP Survey -- OVERVIEW

WHAT KIND OF MARK? 2017 IP Survey -- OVERVIEW

WHAT KIND OF MARK? 2017 IP Survey -- OVERVIEW

WHAT KIND OF MARK? 2017 IP Survey -- OVERVIEW

WHAT KIND OF MARK? 2017 IP Survey -- OVERVIEW

NATURE OF RIGHTS IN MARKS PREVENT OTHERS FROM USING SAME OR SIMILAR MARK IF CONFUSION WOULD BE LIKELY NO RIGHT TO PREVENT ALL USES OF THE WORD! “CADILLAC” FOR CARS AND DOG FOOD “CHAMPION” FOR PAPER; AND BOXING GLOVES; AND SPARK PLUGS 2017 IP Survey -- OVERVIEW

DURATION OF THE EXCLUSIVE RIGHT FOREVER, AS LONG AS YOU ARE STILL USING IT IN COMMERCE, PROVIDED - - IT DOES NOT BECOME GENERIC IT DOES NOT LOSE ITS CHARACTER AS A SINGLE-SOURCE INDICATOR [e.g., BY ALLOWING OTHERS TO USE IT WITHOUT YOUR QUALITY CONTROL] 2017 IP Survey -- OVERVIEW

TRADE SECRET ANY TYPE OF COMPETITIVELY VALUABLE INFO [BUSINESS; TECHNICAL] MUST NOT BE GENERALLY KNOWN IN THE INDUSTRY MUST TAKE REASONABLE PRECAUTIONS TO PRESERVE SECRECY 2017 IP Survey -- OVERVIEW

EXAMPLES OF TRADE SECRETS: COMPANY’S FUTURE PRICING OR DISCOUNT INTENTIONS COMPANY’S MARKET-EXPANSION INTENTIONS COMPANY’S PLANNED ACQUISITIONS OF OTHER BUSINESSES TECHNICAL INFORMATION 2017 IP Survey -- OVERVIEW

TYPICAL STEPS TO PRESERVE SECRECY EMPLOYEE CONTRACTS SPECIFYING ONGOING SECRECY “CONFIDENTIAL” MARKING ON DOCUMENTS POSTED/DISTRIBUTED WRITTEN POLICY STATEMENTS EXIT INTERVIEWS 2017 IP Survey -- OVERVIEW

GOVERNMENT FORMALITIES NONE NO TYPE OF CERTIFICATE IS AVAILABLE 2017 IP Survey -- OVERVIEW

WHAT IS “MISAPPROPRIATION”? USING A PROPERLY LEARNED SECRET WITHOUT PERMISSION [90% OF CASES] LEARNING THE SECRET THROUGH A BREACH OF CONFIDENCE OR OTHER ILLEGAL MEANS [10% OF CASES] 2017 IP Survey -- OVERVIEW

LEARNING THE SECRET INDEPENDENTLY : OK TO USE THINK OF IT YOURSELF REVERSE ENGINEERING OF A PUBLICLY AVAILABLE PRODUCT 2017 IP Survey -- OVERVIEW

PATENT LAW EXCLUSIVELY FEDERAL LAW 35 U.S.C. GOVERNS IT THE ONLY TYPE OF I.P. WHERE A GOVERNMENT GRANT, OR GOVERNMENT-ISSUED DOCUMENT, IS REQUIRED 2017 IP Survey -- OVERVIEW

COSTS ARE EXPENSIVE USUALLY AT LEAST $2,000 JUST TO GET ON FILE [ATTY. FEES; GOVT. FEE] FOREIGN COUNTERPARTS ARE EVEN MORE EXPENSIVE ISSUE FEES AND MAINTENANCE FEES APPLY IN EACH COUNTRY 2017 IP Survey -- OVERVIEW

WHAT CAN BE PATENTED 35 USC 101 MANUFACTURES MACHINES COMPOSITIONS OF MATTER METHODS (OF MAKING OR USING SOMETHING) SOFTWARE IS SOMETIMES ELIGIBLE, IF NOT TOO “ABSTRACT” 2017 IP Survey -- OVERVIEW

THINGS THAT ARE INELIGIBLE FOR PATENTING IDEAS NATURALLY OCCURRING SUBSTANCES 2017 IP Survey -- OVERVIEW

A FEW MORE THINGS THAT ARE INELIGIBLE ABSTRACT COMPUTER PROCEDURES, e.g., MOVING BITS AROUND WRITTEN MATERIALS WITHOUT A NOVEL PHYSICAL STRUCTURE 2017 IP Survey -- OVERVIEW

METHODS OF DOING BUSINESS THESE ARE WIDELY BELIEVED TO BE INELIGIBLE UNDER PRESENT LAW 2017 IP Survey -- OVERVIEW

WHO CAN FILE ACTUAL “INVENTORS” (i.e., CONCEIVERS) ASSIGNEE OF AN INVENTION STILL MUST NAME THE INVENTORS STILL NEED AN INVENTORS’ STATEMENT FROM THEM 2017 IP Survey -- OVERVIEW

NOT ALLOWED: LETTING SOMEONE OTHER THAN THE CONCEIVER “TAKE OUT” THE PATENT, NAMING HIMSELF AS “INVENTOR” A FELONY 2017 IP Survey -- OVERVIEW

WHAT DO YOU GET FOR “PATENT PENDING”? LEGALLY: NOTHING. TERM BEGINS ONLY AT THE GRANT DATE A WARNING TO OTHERS, CAN BE VALUABLE IN THE PRACTICAL WORLD 2017 IP Survey -- OVERVIEW

NATURE OF THE RIGHTS TO EXCLUDE OTHERS FROM COMMERCIALIZING ANY MEMBER OF THE CLAIMED GROUP ALMOST ALL PATENTS CLAIM FAMILIES OF THINGS (COMPOUNDS, MACHINES), NOT INDIVIDUAL SPECIES 2017 IP Survey -- OVERVIEW

NO RIGHT TO MAKE OR SELL IS CONFERRED ON THE PATENT OWNER PATENTS OFTEN OVERLAP LICENSES ARE NEEDED FROM THE OTHERS TO PRACTICE YOUR OWN PATENT! EXAMPLE: COMPUTER SYSTEM; COMPONENTS MAY BE STILL PATENTED TO OTHERS 2017 IP Survey -- OVERVIEW

GEOGRAPHIC SCOPE U.S. ACTIVITY ONLY NO “WORLD PATENT” EXISTS TREATIES THUS FAR ARE MERELY FOR PAPERWORK SIMPLIFICATION AND QUASI-COMMON EXAMINATION MUST ISSUE PATENTS AND ENFORCE THEM COUNTRY-BY-COUNTRY 2017 IP Survey -- OVERVIEW