INTELLECTUAL PROPERTY LAW FOR NON-IP PRACTITIONERS: ETHICS AND ISSUE SPOTTING FOR EFFECTIVE REPRESENTATION Philip Furgang Furgang & Adwar, L.L.P. New York, New York

TRADEMARKS Terms of Art   A trademark is used to identify a good (e.g., a tablet)   A service mark is used to identify a service (e.g., an on-line retail store)

TRADEMARKS cont.   A trademark can be a: word, symbol, device, sound Anything 15 USC § 1127

Trademarks So long as used to distinguish goods and/or services from the goods or services of others.

TRADEMARKS cont. Common law (i.e., unregistered) trademarks A bad idea, but still in use   Federally registered trademarks   Trademarks last for ever – so long as the mark is used in commerce to identify the good or service.

Trademarks, cont  Why common law rights are important but federal registration is much better  National v. Local rights

TRADEMARKS cont. Intent-to-Use vs. Use Intent-to-Use vs. Use Intent-to-Use means just that. You are not using the mark, but intends to do so. 15 USC 1051(b)(1) Use means the mark is in use in commerce as of the filing date.

The Client Needs a Search  What is a Trademark Search  What it includes  What IP counsel does

TRADEMARKS Foreign Filing  Differences between the US and Foreign Countries.  US – is based on common law first use or date of filing, which ever is earlier  Foreign – is registration only, not use.

TRADEMARKS cont. Important considerations: Important considerations: If a subcontractor is the client’s sole source of supply the client can lose its trademark! If a subcontractor is the client’s sole source of supply the client can lose its trademark!

Agenda  A Review of Patent Law  The Ethical Problems Caused by Revisions to the Patent Act  Trademark Rights

Patent Agenda  What A Patent Does  Business Test for Seeking a Patent  Overview of the Law  Statutes of Limitation

PATENTS The Points Covered:  A - What a Patent Does  B - The Fundamental business test  C - Patent law legal basics  D - Statutes of limitations  E - Foreign Filing  E - Design patents vs. utility patents  F - Important consideration

Scenario  A client consults about a production deal and which includes a new way of streaming which wil add significant value to the project.  This development may impact the client’s bargaining position.

What A Patent Does  Excludes competition from marketplace  Makes entry into the marketplace more expensive  Makes the idea more valuable  Provides an additional revenue stream

The Fundamental Business Test  Is It Different?  Will The Client Make Money From That Difference?”

March 16, 2013 the New Law Took Effect We became a First-to-File system. Here is what this means to a client and your advice to that client:

STATUTE OF LIMITATION

The New Statute of Limitations Novelty A person shall be entitled to a patent unless--- A person shall be entitled to a patent unless---patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date 35 U.S.C. § 102

The New Statute of Limitations The Misleading Grace Period Disclosure made 1 year or less before the effective filing date of an application on a claimed Invention shall not be prior art to the claimed invention if

The New Statute of Limitations The Misleading Grace Period The subject matter disclosed had been publicly disclosed by the inventor or another who obtain the subject matter disclosed from the inventor

The New Statute of Limitations BUT – What does “disclosure” mean? It covers only disclosure but NOT Disclosure in order to sell, publish, or use the invention THERE IS NO 1 YEAR GRACE PERIOD!

The New Patent Act A Provisional Application: Is not a patent application It secures only a filing date But only to that which is disclosed AND Complies with the Patent Act in making the disclosure Gives 1 year in which to file the nonprovisional.

The New Patent Act Bottom line: Do Not Ignore a Client’s Needs – Tell the client to see a patent attorney at once! Make a memorandum to file of this advice! If possible, give the the memorandum to the client. AND HERE IS WHY YOU MUST

ISSUE SPOTTING AND WHY IT MATTERS Ethical Considerations Venturing out an area of concentration can lead to huge exposure When talking to a client, and advising, attorneys are required to know the law:

Ethical Considerations  A lawyer is charged with knowing the law. Guessing doesn’t count.  N.Y. Rules of Professional Conduct:  Rule 1.1:   (a) A lawyer should provide competent representation to a client.

Ethical Considerations   NY Rule 1.1(a) cont.   Competent representation requires the legal knowledge, skill, thoroughness and preparation reasonably necessary for the representation.

Ethical Considerations   NY Rule 1.1(a) cont.   (b) A lawyer shall not handle a legal matter that the lawyer knows or should know that the lawyer is not competent to handle, without associating with a lawyer who is competent to handle it.

Ethical Considerations Rule 1.1 of the ABA Model Rules of Professional Conduct (1995) provides:   A lawyer shall provide competent representation to a client. Competent representation requires the legal knowledge, skill, thoroughness and preparation reasonably necessary for the representation.

Ethical Considerations When is an attorney-client relationship formed? 1.Even “friendly” or “free” advice can form an attorney-client relationship making counsel liable for his advice: Randolph v. Resolution Trust   Corp., 995 F.2d 611, 615 (5th Cir. 1993);

Ethical Considerations Implied from the mere giving of advice implies an attorney-client relationship:. Randolph v. Resolution Trust Corp., 995 F.2d 611, 615 (5th Cir. 1993); DeVaux v. American Home Assurance Co., 44 N.E.2d 355, 357 (Mass. 1983)

Ethical Considerations The sad case of Togstad v. Vesely, Otto, Miller & Keffe, 291 N.W.2d 686 (Minn. 1980) The message: spot the issues to avoid problems:

Fundamental Tests  Is It Different?  Will You Make Money From The “Difference?”

Other Important Considerations:  If someone invents or contributes to an invention, it is owned by the contributor even if your client paid for it!  If someone invents or contributes to an invention, it is owned by the contributor even if your client paid for it! United States v. Dubilier Condenser Corp. 289 U.S. 178, 53 S.Ct. 55 (1933)  The most the client gets is a shop right. Id.  Refer the client to patent counsel to discuss the consequences.