OVERVIEW OF INTELLECTUAL PROPERTY LAW PROF. PAUL JANICKE INSTITUTE FOR INTELLECTUAL PROPERTY & INFORMATION LAW UNIVERSITY OF HOUSTON LAW CENTER 2011

IP Survey -- Copyright 2 COPYRIGHT STATUTE: 17 U.S.C. –PREEMPTS SIMILAR STATE LAWS PROTECTS “WORKS OF AUTHORSHIP” (§102) –BOOKS, ARTICLES, POEMS, PLAYS –PHOTOS, DRAWINGS, PAINTINGS –FILMS –MUSIC –SOFTWARE –COMPILATIONS

2011IP Survey -- Copyright 3 REQUIREMENTS FIX THE WORK IN A TANGIBLE MEDIUM (§102(a)) PROTECTION IS AUTOMATIC –NO PAPERWORK NEEDED –NO NOTICE NEEDED –NO REGISTRATION NEEDED

20114IP Survey -- Copyright NOT A VERB ONCE THE WORK IS FIXED, COPYRIGHT EXISTS –CAUSES OF ACTION ACCRUE AGAINST COPIERS THEREFORE: IMPROPER TO SAY “HE IS GOING TO COPYRIGHT HIS POEM?” OR “LAWYER WILL COPYRIGHT IT FOR HIM”

20115IP Survey -- Copyright PROTECTION AGAINST: COPYING MAKING DERIVATIVE WORK FROM THE ORIGINAL NO PROTECTION AGAINST: –INDEPENDENT CREATION –FAIR USE

20116IP Survey -- Copyright DURATION LIFE OF AUTHOR PLUS 70 YEARS IF JOINT AUTHORS, LAST SURVIVOR PLUS 70 YEARS

2011IP Survey -- Copyright 7 TRADEMARKS (= BRANDS) USED ON GOODS OR CONTAINERS LIKE CATTLE BRANDS THEY SIGNAL A COMMON SOURCE, OR AT LEAST COMMON SOURCE OF QUALITY CONTROL

2011IP Survey -- Copyright 8 TRADEMARK CAN BE: A WORD: FORD A GROUP OF WORDS: COMPAQ DESKPRO A PHRASE: HAVE IT YOUR WAY A LOGO: [WE’LL SEE SOME]

2011IP Survey -- Copyright 9 REQUIREMENTS FOR MARK OWNERSHIP AND ENFORCEMENT: 1.PLACE THE MARK ON GOODS, CONTAINERS; and 2.MOVE THE MARKED GOODS IN COMMERCE. REGISTRATION IS NOT NEEDED! DON’T SAY “TRADEMARK” AS A VERB!

2011IP Survey -- Copyright 10 SERVICE MARKS USED “IN CONNECTION WITH” SERVICES, TO SIGNAL COMMON SOURCE USE CAN BE IN ADVERTISING SERVICES MUST ACTUALLY BE RENDERED IN COMMERCE

2011IP Survey -- Copyright 11 EXAMPLES OF SERVICE MARKS: MERRILL LYNCH McDONALD’S [WORD] [GOLDEN ARCHES] for McDONALD’S DALLAS COWBOYS HOLIDAY INN

2011IP Survey -- Copyright 12 REQUIREMENTS FOR OWNING A SERVICE MARK: USE THE MARK IN COMMERCE FOR ACTUAL COMMERCIAL SERVICES –EXCLUSIVE RIGHT ARISES FROM FIRST USE IN COMMERCE –REGISTRATION IS NOT NEEDED

2011IP Survey -- Copyright 13 WHAT KIND OF MARK?

2011IP Survey -- Copyright 14 WHAT KIND OF MARK?

2011IP Survey -- Copyright 15 WHAT KIND OF MARK?

2011IP Survey -- Copyright 16 WHAT KIND OF MARK?

2011IP Survey -- Copyright 17 WHAT KIND OF MARK?

2011IP Survey -- Copyright 18 NATURE OF RIGHTS IN MARKS PREVENT OTHERS FROM USING SAME OR SIMILAR MARK WHERE CONFUSION WOULD BE LIKELY NOT A RIGHT TO PREVENT ALL USES OF THE WORD! –“CADILLAC” FOR CARS AND DOG FOOD –“CHAMPION” FOR PAPER; AND BOXING GLOVES; AND SPARK PLUGS

2011IP Survey -- Copyright 19 DURATION OF THE EXCLUSIVE RIGHT FOREVER, AS LONG AS YOU ARE 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 WITHOUT QUALITY CONTROLS]

2011IP Survey -- Copyright 20 TRADE SECRET ANY TYPE OF COMPETITIVELY VALUABLE INFO [BUSINESS; TECHNICAL] MUST NOT BE GENERALLY KNOWN IN THE INDUSTRY MUST BE SUBJECT TO REASONABLE PRECAUTIONS TO PRESERVE SECRECY

2011IP Survey -- Copyright STATE LAW GOVERNS ALMOST ENTIRELY THERE IS NO FEDERAL PRIVATE ACTION FOR TRADE SECRET MISAPPROPRIATION CRIMINAL ACTIONS (STATE AND FEDERAL) ARE POSSIBLE, BUT RARE

2011IP Survey -- Copyright 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

2011IP Survey -- Copyright 23 TYPICAL STEPS TO PRESERVE SECRECY EMPLOYEE CONTRACTS MARKING DOCUMENTS “CONFIDENTIAL” WRITTEN POLICY STATEMENTS EXIT INTERVIEWS

2011IP Survey -- Copyright 24 FORMALITIES FOR PROTECTION AND BRINGING SUIT NONE NO TYPE OF CERTIFICATE IS AVAILABLE

2011IP Survey -- Copyright 25 WHAT IS MISAPPROPRIATION? USING A PROPERLY LEARNED PROTECTED SECRET WITHOUT PERMISSION [90% OF CASES] LEARNING THE PROTECTED SECRET BY BREACH OF CONFIDENCE OR OTHER ILLEGAL MEANS [10% OF CASES]

2011IP Survey -- Copyright LEARNING INDEPENDENTLY IS OK INCLUDES REVERSE ENGINEERING OF A PUBLICLY AVAILABLE PRODUCT

2011IP Survey -- Copyright 27 PATENT LAW EXCLUSIVELY FEDERAL LAW –35 USC THE ONLY TYPE OF I.P. WHERE A GOVERNMENT GRANT, OR GOVERNMENT DOCUMENT, IS REQUIRED

2011IP Survey -- Copyright 28 PATENT TERM NORMALLY TERM IS VARIABLE –BEGINS ON THE ISSUANCE DATE –EXPIRES 20 YEARS FROM FILING DATE –TERM IS THEREFORE: 20 YEARS minus TIME SPENT BEFORE THE PATENT & TRADEMARK OFFICE (PTO) IN ADDITION, MODEST EXTENSIONS IN SPECIAL CIRCUMSTANCES – NO “RENEWALS”

2011IP Survey -- Copyright 29 COSTS ARE EXPENSIVE USUALLY AT LEAST $2,000 TO GET ON FILE FOREIGN COUNTERPARTS ARE EVEN MORE EXPENSIVE ISSUE FEES AND MAINTENANCE FEES APPLY IN EVERY COUNTRY

2011IP Survey -- Copyright 30 WHAT CAN BE PATENTED 35 USC 101 MANUFACTURES MACHINES COMPOSITIONS OF MATTER METHODS (OF MAKING OR USING SOMETHING) –SOFTWARE IS USUALLY ELIGIBLE, IF NOT TOO ABSTRACT OR GENERIC

2011IP Survey -- Copyright 31 A FEW THINGS THAT CAN’T PURE ABSTRACT PROCEDURES, e.g., MOVING BITS AROUND WRITTEN MATERIAL UNASSOCIATED WITH PHYSICAL STRUCTURE NATURALLY OCCURRING SUBSTANCES

2011IP Survey -- Copyright 32 WHO CAN FILE IN U.S., ACTUAL INVENTORS (i.e., CONCEIVERS) THE ASSIGNEE OF THE APPLICATION CAN THEN TAKE OVER, AND USUALLY DOES

2011IP Survey -- Copyright 33 WHAT A PATENT COVERS A FAMILY OF SIMILAR THINGS, DEFINED BY A “CLAIM” [NO ONE WANTS A CLAIM LIMITED TO ONE STRUCTURE THAT THE CLIENT ACTUALLY DEVISED! TOO EASY TO DESIGN AROUND]

2011IP Survey -- Copyright 34 WHAT DO YOU GET FOR “PATENT PENDING”? LEGALLY: NOTHING. TERM BEGINS ONLY AT THE GRANT DATE (SOME MINOR RIGHTS AT 18-MO. PUBLICATION) MERELY A WARNING TO OTHERS, BUT CAN BE VALUABLE IN THE PRACTICAL WORLD

2011IP Survey -- Copyright 35 NATURE OF THE RIGHTS TO EXCLUDE OTHERS FROM COMMERCIALIZING ANY MEMBER OF THE FAMILY CLAIMED –WHETHER OR NOT CONCEIVED BY THE INVENTORS

2011IP Survey -- Copyright NO RIGHT TO MAKE OR SELL IS CONFERRED ON THE PATENT OWNER –USUALLY, MANY PATENTS OVERLAP –LICENSES NEEDED FROM THE OTHERS TO PRACTICE YOUR OWN PATENT! –EXAMPLE: COMPUTER SYSTEM

2011IP Survey -- Copyright 37 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

2011IP Survey -- Copyright SOME “CHAMPION” REGISTRATIONS..\Champion2 regis certif.pdf..\Champion3 regis certif.pdf..\Champion4 regis certif.pdf..\Champion4 specimen.pdf