Sierra Nevada College

Intellectual Property (BLAW 410)

Final Review
1) Reading Responsibility Chapters 1, 2, 3, 4, 8, 9, 10, 11, 12, 13, 14, 17,
18 through p. 372 (Oath of the Inventor), 19.
2) The Final Exam will be comprehensive covering material from the entire
semester. The Final will constitute 25% of your grade in the class and
will be held on Friday, December 11th from 11:30-2:30pm. There will be
an on-line component; bring your laptops.
3) General IP Intellectual property is property of the intellect. Less
tangible than the two other property rights, real property and private
(personal) property. When we speak of intellectual property rights, most
of us think of trademarks, copyrights and patents. What distinguishes IP
rights from other property rights? Limited exclusivity. In general, you
own real property or private property exclusively until such time as you
decide to unload it. With IP, you have exclusive use for only a statutorily
limited fixed amount of time: patent - generally 20 years, copyright
generally life of author plus 70 years, trademark (as well see is a little
different) as long as in use.
i) Copyright and patent laws attempt to balance the private property rights
of the individual against those of the greater society, by allowing
LIMITED exclusivity over intellectual property and, thus, providing both
an individual economic incentive for creativity and discovery along with
the eventual societal benefits of such creations and discoveries. The
focus of trademark law, however, is on ensuring integrity of the
marketplace. We want to make sure that the marketplace remains
competitive but that consumers are not confused or misled by unfair
business practices.
ii) Source of intellectual property rights is our founding fathers, the authors
of the U.S. Constitution. Article 1, Section 8 (Powers of Congress) 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; to make all Laws which shall be necessary
and proper for carrying into Execution the foregoing Powers, and all

Powers vested by this Constitution in the Government of the United

States, or in any Department or Officer thereof called enabling
legislation, gives Congress the power to legislate and exert Federal
control over IP.
Congress is prolific with intellectual property
legislation due to the U.S. trade surplus of IP, one of the few areas of the
economy that has such a surplus.
iii) There is a lot of overlap in the various areas of IP. For instance, some
creative works may enjoy protection under both patent and copyright.
Examples: the ornamental nature of a design may be patentable, the
aesthetic nature, copyrightable. The functional nature of a software
program may be patentable, while the creative expression of that
functionality, copyrightable.
4) Trademark Law Trademark law covers names, designs, logos,
slogans, sounds, colors, fragrances, trade dress, etc. Generally divided
into trademarks (identifying source of a product) and service marks
(identifying source of a service). Also, certification marks (Good
Housekeeping seal of approval) and collective marks (American Bar
Association). Theyre still all trademarks and speak to the source and/or
quality of the product or services.
a) It is not a government grant; protection in this country is based
upon use. To be able to federally register, use must be in interstate
commerce, so selling a product on the internet would constitute
interstate commerce and, if registered, federal trademark
protection. States also provide registration for intrastate uses. But
protection does not require either federal or state registration
(although registration has many benefits). You have common law
protection even without registration if you are the 1st user of a
mark in a particular geographical area. Symbol designating federal
registration of trademark - Symbols claiming protection without
registration - TM or SM Generic or descriptive marks are not
protectible. Examples: Electronic Goods descriptive.
Aspirin generic. Normally, a mark is protectible only with
respect to a particular type of good or service. But some marks
have become so strong that they receive across-the-board
protection. Example: Coca-Cola; you could not market Coca-Cola
jeans. U.S. governmental agency dealing with trademarks:
USPTO located in Alexandria, VA.

5) Function of Trademark To distinguish ones goods or services from

others, identify common source, indicate consistent quality, and provide
an advertising tool.
6) Usage - In this country, trademark protection is based upon usage, first
usage. Exception to usage requirement: Intent-to-Use Application. What
are the benefits of Intent-to-Use Application? If USPTO determines
mark unregistrable, will not have expended a lot of money. Also, priority
measured from date filed, not 1st use. With Intent-to-Use have 6 months
to prove usage, extendable. Note: With Intent-to-Use, you are not
registered until usage is proved. Continued usage of a trademark is
required; failure to use for three years, presumption of abandonment if
some third party wants to challenge your mark, but the mark is not
technically abandoned until you fail to renew and show continued use.
7) Federal Registration - To federally register, must be in interstate
commerce. Dont need to federally register, can rely on state registration
if intrastate or even common law trademark, where you may still have a
cause of action against a confusingly similar mark. Advantages of
federal registration: a) nationwide constructive use as of filing date, b)
barring importation of goods with infringing trademarks, c) right to bring
action in federal court, d) incontestability after 5 years of continuous use.
(After 1st five years of registered use, must file an affidavit of use. Also,
every 10 years registration must be renewed.) e) use of registration
symbol, f) internet domain name, g) prima facie evidence of validity of
mark.
8) Categories of Marks A hierarchy of strength of marks, weak to strong:
a) Generic not a mark at all, not registrable.
b) Descriptive describes the product or service, not registrable until
consumer links the mark with a single source, called secondary
meaning or acquired distinctiveness.
c) Suggestive Greyhound Bus, Orange Crush suggests the service
or product Registrable without proof of secondary meaning or
distinctiveness.

d) Arbitrary common word, unfamiliar product Camel cigarettes.

e) Fanciful made up names Kodak, Vytorin, etc.
9) Exceptions to Trademark Protection
a)
b)
c)
d)
e)
f)
g)
h)
i)

descriptive and confusingly similar marks

disparaging or falsely suggestive marks West Point Guns
insignias, flags of nations
immoral or scandalous matter
names, portraits of living persons, or of deceased Presidents
(without consent)
deceptive matter Sheffield cutlery not made in Sheffield
mere surnames not registrable unless secondary meaning
geographical terms not registrable without secondary meaning
(they are primarily descriptive) also, no geographical
deception
statutorily protected marks Smokey the Bear, Olympic rings,
Red Cross

10)Loss of Trademark Rights a) Use it or lose it, coupled with an intent not
to resume use. Non-use for three years is prima facie evidence of
abandonment so can be challenged by third party, b) genericide, c) failure
to renew or provide affidavit of continued use every ten years or to
provide evidence of use after first five years.
11)Trademark Use and Compliance Policies a) displayed prominently, b)
use in connection with appropriate goods and services, c) use registration
symbols , TM, SM, d) use original marks consistently, e) owner
identified is a federally registered trademark of, f) adjectives rather
than nouns or use the term brand.
12)Policing and Maintenance Weekly USPTO Official Gazette, state
registrations, internet, etc. Hire a watchdog company remember the
story of Warner Bros. discovering a Harry Potter Festival in Hong Kong.
13)Third Party Uses Cannot prohibit all uses Often used in advertising
O.K. provided no false advertising, misleading use, product
disparagement, or consumer confusion.

14)New Developments in Trademark Law

a)

New developments in trademark law are related to the internet.

(1 billion users worldwide, retail commerce of $71 billion in
2004.) Having a domain name that is identical or close to a
companys trademark is important. Most people use Google but
some people just type in a companys name. Domain names can
legally be bought and sold (business.com 7.5 million, sex.com
12 million)

b)

Cybersquatting To prey on consumer confusion and to divert

customers to other websites or to ransom the sale of the domain
name.

c)

Cybersquatting Remedies - four types in descending order of

difficulty and expense:
i.

Plain vanilla trademark infringement action requires

likelihood of confusion and use in commerce (may be
difficult if domain name only registered but not used).

ii. Federal Trademark Dilution Act of 1995 must show

likelihood of dilution of mark (not actual confusion) and
use in commerce (which may be shown with bad intent).
Ex: Candyland.com (Hasbro)
iii. Anticybersquatting Consumer Protection Act of 1999
must show bad faith registration of confusingly similar
mark or identical domain name, trying to sell domain
name constitutes commercial use domain name can be
cancelled, money damages but can be expensive.
iv. Uniform Domain Name Dispute Resolution Policy like
an on-line arbitration must show domain name is
identical or confusingly similar to your trademark, no
legitimate interest in the domain name, being used in bad
faith (trying to sell it) cancellation or transfer of
domain name, no money

15)International Trademark Law

a)

Origins of international trademark law can be traced back to

1883 Paris Convention for the Protection of Industrial
Property concept of reciprocity originated you have to give
citizens of other member nations same trademark protection as
your own Also, you get first filing date in a signatory nation
with all other subsequent filings in signatory nations if you file
within 6 months - 172 nations are signatories, virtually the entire
civilized world.

b)

Foreign nationals registering in U.S. 4 ways to do it: a) use, b)

intent to use, AND c) based on pending application filed in
foreign country within previous six months (get that filing date
in U.S.), d) based on registration issued in foreign country. The
latter two require a statement of bona fide intent to use but can
actually get federally registered without use. They will still
have to prove usage between the fifth and sixth year, just like
U.S. registrants. Applications can be turned down for same
reasons U.S. applicants would be turned down: merely
descriptive, confusingly similar, etc. Acquired distinctiveness
(secondary meaning) can only come from use.

c)

U.S. nationals registering abroad In that most of the world has

priority based upon filing date, not usage, U.S. interests need to
seriously consider international filing of potential trademarks
lest they get extorted by a pirate filing first in a particular
country. Foreign counsel is imperative for successful
international trademark registration. Processing time and fees
can vary dramatically. Fees can be almost prohibitive in some
territories, the process lengthy in others. Countries treat filing
classifications differently. International searches are very tricky.
Trademarks may have different meanings in different
countries. Need to do your foreign filing within 6 months of
your USPTO filing. Even if you only anticipate foreign
expansion, you should file. You dont need to be using the mark
and, dependent upon the territory, youll get 3-5 years before
you have to prove usage.

d)

Shortcuts a) 1996 - Community Trademark System (27

countries of the EU) One application can cover any number of
classes of goods and services. 900 Euros covers three classes.
No searching required. One member country can torpedo entire
application. b) Also begun in 1996, Madrid Protocol, offshoot
of Madrid Agreement from 1800s. 74 countries are
signatories, including all of EU. U.S. only became a signatory
in 2003. File a single application with the WIPO at a cost of
900 Swiss francs (approximately $775). Each member country
conducts examination and may independently refuse.

16)Copyright Law Present controlling federal statute is the Copyright Act

of 1976. Has been amended many times including most recently by the
Sonny Bono Copyright Term Extension Act (life plus 70) and Digital
Millennium Copyright Act, both 1998. There used to be a publishing
requirement for copyright protection, now only requires fixation as well
discuss. Publication is the distribution of copies of a work to the public
for sale or other transfer of ownership, by rental, lease, or lending. As
with trademark, no federal registration required. Copyright protection is
automatic, even without publication.
17)Advantages of federal copyright registration: a) public record, b) must
be registered to go to court in an infringement action, c) within 5 years
after publication, prima facie evidence of validity, d) within 3 months
after publication or prior to infringement, statutory damages and
attorneys fees, e) U.S. Customs and Border Protection can deny import
of infringing copies.
18)Copyrightable Matter Three basic requirements for copyright
protection: That it be a work of authorship as defined under statute, that it
be original (including a semblance of creativity), and that it be fixed in a
tangible medium of expression.
a) Works of authorship - Eight basic categories or subject matter
enumerated under the Copyright Act. i) literary works - huge
category, books, scripts, articles, reports, computer programs,
websites, etc., ii) musical works (compositions and words), iii)
dramatic works (stageplays), iv) pantomimes and choreographic
works, v) pictorial, graphic and sculptural, vi) motion pictures, vii)
sound recordings, and viii) architectural works. Not an all-

inclusive list, derivative works and compilations are also

protectable and the courts have held other items protectable as
well. Musical works (compositions) and sound recordings are
two separate copyrights. Composition (owned by music publishers
and songwriters) covers the music and the lyrics; sound recording
(owned by the record label) covers the recorded performance of the
musical composition.
i. Music Publishing Rights Anytime someone wants to
record your composition on a CD, mechanical royalties
(compulsory). Whenever the song appears in the soundtrack
of an audiovisual work, synchronization royalties (must
have consent). Whenever a song is played radio, TV,
theatres, concert halls and arenas, stadiums, bars and other
venues, performance royalties (collected by societies like
ASCAP and BMI and usually split 50/50 between publishers
and songwriters).
ii. Sound Recording Rights (record label) - You can do a cover
and record an exact imitation of a sound recording without
infringing a record labels ownership. The publisher gets a
compulsory license; the record label gets nothing. The label
makes money on the sound recording by selling CDs or
iTunes copies and by licensing the sound recording for use
in other media (master use license).
iii.What is not protectable? Ideas, methods, processes,
systems, concepts, principles, discoveries, facts, titles,
public domain works, etc. (some of these may be
patentable) The Idea-Expression Dichotomy Ideas are
not protectable, the expression of ideas is. A work of
authorship is protectable but the ideas, procedures, systems,
etc. embodied in the work are not protectable. Baker v.
Selden case. The idea of the bookkeeping system was not
protectable even if the authors expression of the idea was.
iv. Useful Article Doctrine Involves distinguishing between
aesthetic copyrightable subject matter and functional nonprotectable subject matter. Copyrightable works are only
protectable to the extent that they can be identified

separately from, and are capable of existing independently

of the utilitarian aspects. Brandir International v. Cascade
Pacific bicycle rack case.
b) Originality Requires an independent creation i.e. it is a work
not copied from another. Doesnt require novelty like patent,
striking uniqueness or ingeniousness. Under copyright law, you
can have two people creating the same work on opposite coasts
independently and both could theoretically be afforded protection.
Also, to be protectable a work must demonstrate a minimal amount
of creative authorship. The standard is very low but blank forms,
column headings, names, titles and lists of ingredients do not have
sufficient creativity. Feist Publications v. Rural Telephone Service
phone book case. Alphabetic listing of names and addresses is not
sufficiently creative for protection.
c) Fixation The 1976 Copyright Act requires that a work be fixed in
a tangible medium of expression to be afforded protection. This
medium can be one now known or later developed. It can be in
words, numbers, notes, sounds, pictures, or any other graphic or
symbolic indicia, whether embodied in a physical object in written,
printed, photographic, sculptural, punched, magnetic, or any other
stable form, and whether it is capable of perception directly or by
means of any machine or device now known or later developed.
19)Exclusive Rights Afforded Under Copyright
a) Reproduction (hence, COPYright) there are exceptions like
fair use
b) Adaptation (derivative works) The new work is copyrightable
only with respect to new elements The original work and its
elements are still protected.
c) Distribution 1st sale doctrine you only lose distribution right
on that particular item Strict liability, if youre distributing
pirated copies and dont know it, still liable the 1st sale
doctrine applies only to lawfully made copies 1st sale doctrine
does not apply to records or software notice that those items
are not rented, too easy to copy (software is often licensed,

not sold to avoid 1st sale doctrine issues) Compulsory

Licensing where an owner is unwilling, cant be found, or
individual licensing would be inefficient - includes covering a
musical composition, television retransmission, cell phone
ringtones, etc.
d) Performance largest source of revenue for copyright owners includes public performance only, place open to public with
substantial numbers of people performance includes radio and
television TV stations, radio stations, theaters, concert venues,
jukebox owners, big time DJs all have (or should have) blanket
licenses with performing rights societies (ASCAP, BMI) who
collect monies and distribute to owners of composition
copyrights owners of sound recordings get nothing
exception: since 1995, owners of sound recording copyrights
(record labels) get a piece of digital audio transmission (cable,
broadband ex. the digital music channels on your cable system)
record labels now get royalties for those performance uses
e) Display applies mostly to fine arts (paintings, photos,
sculpture, etc.) lawful owners may display (museums,
galleries) and there are exceptions teaching and religious
service scenarios
f) Other rights 1) Moral rights (droit morale) enacted in 1990
to comply with Berne convention rules - again pertains to fine
arts (paintings, photos, sculpture) attribution and integrity, lasts
for life of author 2) Droit de suite (continuation rights)
California Resale Royalties Act only one in the nation
Resident artists get a piece of resale of their works
constitutionality issue
20)Ownership/Transfers/Duration
a) Ownership the creator is the owner for Joint Works (like Lennon/
McCartney songs), if the intent of the parties is to create a joint work,
equal 50/50 share unless contracted otherwise need to agree on
grants of exclusive licenses but can each individually grant nonexclusive licenses Derivative Works if later added a piece, not
joint but derivative if separately copyrightable works compiled

without being transformed, not derivative but a collective work

(compilation). Works Made For Hire the company owns the
copyright - covers works made within scope of employment and
certain categories of specially commissioned works.
b) Transfers Copyright interests can be divided up in many small
pieces, by date, media, territory Exclusive rights transfers must be in
writing - Good idea to record transfers, liens, etc. with Copyright
Office But when youre searching records at the Copyright Office
website, remember that ANYBODY can file nobodys monitoring
liens that are filed dont get taken off when theyre no longer valid,
etc. Dont expect to do serious research on the site.
c) Duration of Copyright As of 1998, for works created after January 1,
1978, life plus 70 years For joint works life of surviving author
plus 70 years works made for hire 95 years from first publication
or 120 years from creation, whichever is shorter.
21)Searching Copyright Office Records, Notice of Copyright
a) Searching Nobody watching the store for accurate
submissions. No need to search prior to application as we
do with trademark registration - Copyright Office allows
independent creation. Can search by work, company or
individual. Ex. if youre acquiring an entity and its assets.
Assignment documents will also show up. You can also
physically go to the Copyright Office or Library of
Congress. Since theyre public record, you can obtain
copies of filed documents for a fee. Deposits, probably not.
b) Copyright Notice As of 1989, when U.S. finally joined the
Berne Convention, no longer required. For works published
before 1978, there was a real chance of losing protection
without proper notice. Proper notice is a followed by the
year of first publication and copyright claimant. Notice for
sound recordings now a circle P. Some sound recordings
now have both.

22)Copyright Infringement We normally think of copyright infringement

as a violation of copyright owners exclusive right to reproduce a work
(unauthorized copying). However, an infringement occurs when any of
the copyright owners five exclusive rights are violated. Also, anyone
who imports infringing works is liable. Nobody monitoring
infringement; its up to you. And the Statute of Limitations gives you
only 3 years from the infringing act to file suit, can be tolled from the
point where you knew or should have known.
a) Two elements required to prove infringement of right of
reproduction: 1) that you own the copyright (registration gives you
prima facie evidence) and 2) that there has been copying.
Remember that an independently created work cannot infringe,
even if identical.
b) To prove copying, you must show (a) Access and (b) Substantial
Similarity.
c) Access inferred if widely disseminated or if works so similar that
the possibility of independent, coincidental creation is precluded
the greater the similarity, the less access must be shown.
d) Substantial Similarity ordinary observer test (may mean young
men if video games are subject or computer experts if
programming is subject). Cant be limited to literal text or
plagiarist could make immaterial change and get off. If only a part
of a work is copied, is it substantial enough? If nothing is copied
per se, but a work is abstracted in its entirety, does that meet the
test? Very difficult standard and courts are all over the map. More
likely to find infringement if youve stolen from the heart of a
work. Even several notes of music sampled for incorporation in
another work have been held to be infringement.
e) Infringement Myths p. 272
f) Infringement Defenses
23)Fair Use Normally asserted for criticism, comment, news reporting,
teaching, scholarship or research, parodies. Four factor test (five for
Stanford University Library hand-out) Important to note that it is

almost impossible to guess where a court will come out on this test. 1)
Purpose and character of the use (commercial v. non-profit),
transformative nature of the use has original material been
transformed by adding new value or meaning? 2) Nature of the
copyrighted work factual v. fictional, published v. unpublished, 3)
Amount and Substantiality of portion taken, and 4) Effect of use on
potential market for copyrighted work, 5) Are You Good or Bad?
subjective judgment of the court e.g. Cabbage Patch Kids v. Garbage Pail
Kids
i) Parody a fair use defense. What is it? Viewed as productive
form of social commentary. Cannot take more than necessary from
original work. Parodist must be commenting on copyright owners
work, not some other topic.
ii) Library/Educator Use Libraries generally get away with copying
need to have notice on photocopy machines Educators Single
copies O.K. Multiple copies (like the Stanford library piece)
O.K. if its short, spontaneous and has copyright notice.
24)Remedies (penalties) for Infringement Injunctive relief, impoundment
of infringing works, compensatory damages and profits OR statutory
damages (if registered within 3 months of publishing) $750 to $30,000
per infringement, if willful up to $150,000. If you have a website and are
sharing 10,000 CDs, what could the statutory damages be? Millions.
Also, if registered within 3 months of publishing, costs and attorney fees.
Also criminal sanctions and fines in some cases.
25)Copyright and the Internet A huge problem. Authors have attempted to
minimize piracy of copyrighted works with DRMs (Digital Rights
Management) systems metering, encryption devices, watermarks, even
dissemination of viruses to deter piracy. (SONY sold millions of music
CDs with hidden files that could damage a users operating system,
install spyware, and render the computer vulnerable to viral attacks.)
Congress has attempted to legislate protection with statutes like The
Digital Millenium Copyright Act of 1998, making it illegal to try and
circumvent copyright protection tools and providing safe harbors to
ISPs like AOL and Yahoo (provided they have mechanisms in place to
terminate service of copyright offenders and notice and takedown
provisions, not liable). None of these initiatives have been very

successful. In 2000, eBay was absolved from auctioning infringing

works because they have neither the ability or right to control infringing
activity.
26)International Copyright Law As with trademark, there are a number of
treaties regarding copyright. Most important - Berne Convention, which
the U.S. only joined in 1989. More than 160 member nations, virtually
all of the industrialized world. Members must give the same copyright
protections to foreign nationals as they give their own citizens;
establishes minimums. That having been said, copyright protection
around the world differs from country to country. For instance, in most
of the world, protection lasts for authors life plus 50 years. So, before
publishing in another country, understand protection afforded in that
country.
a) In order to join the Berne Convention, U.S. had to modify its
copyright laws, most notably, no copyright notice required for
protection. To sue for copyright infringement in this country, a
U.S. citizen must register the copyright. Not so with foreign
nationals. To sue a foreign infringer, unless they conduct business
in the U.S., you will need to sue them in their native country.
b) First sale doctrine in international practice. In general, copyrighted
goods cannot be imported into the U.S. without copyright owners
permission. So, if legally manufactured outside the U.S., copyright
owner controls U.S. imports. But, if you manufacture in the U.S.,
sell abroad, and they come back into the U.S. (grey market goods
as opposed to black market goods), the copyright owner cannot
stop them due to the first sale doctrine.
27)Patent excludes others from making, using, selling, or importing your
invention patent law incentivizes invention by giving inventor limited
exclusivity over the invention in return for full disclosure to the public of
the specifics of the invention. Yes, patent applications are now a matter
of public record. Damages available for infringement during patent
pending period.
a) As mentioned previously, there is much overlap in all of the IP
areas e.g. something that qualifies for design patent may also
qualify for copyright, something may qualify for trademark and

design patent protection (bottle), may want to use trade secret

rather than patent to avoid disclosure and eventual public domain
up to the owners of intellectual property and their lawyers to
devise a strategy to protect works.
b) Patent based on a governmental grant dont get it by mere usage
(trademark) or fixation (copyright) no common law rights
without registration - unlike copyright, requires more than
independent creation, requires novelty (not known or used by
others) East coast, West coast same invention who gets patent?
A: 1st to file, provided the filer is the inventor
28) Types of patents: Utility, most common includes process (method of
doing something to produce a given result, chrome plating, making
synthetic diamonds, smelting ore, etc.), machine (devise with moving
parts), manufacture (anything made by humans), composition of matter
(two or more chemical or other materials into a product, ex. polyester),
new and useful improvements or new use of existing invention term, 20
years from filing, Design ornamental designs for useful articles such as
furniture and containers term, 14 years from grant, Plant asexually
reproduced plant varieties (not from seed) term, 20 years from filing.
29)Conditions for patent protection i) must be utility, design, or plant
patent, ii) must be useful (utility), ornamental (design) or distinctive
(plant), iii) must be novel in relation to prior art in the field, and iv) must
not be obvious to person of ordinary skill in the field.
a) Usefulness utility patent. Some benefit to humanity (animals
too), amusement or entertainment considered useful. The bar on
usefulness is apparently not too high. If you havent gone to the
wacky patent of the month site, you should. (Show favorites.) It
must work (no perpetual motion machines), not have a detrimental,
dangerous or illegal purpose (thankfully, atomic weapons cannot
be patented), must be present usefulness (must have evidence of a
drugs effectiveness, on animals, O.K. need only be reasonably
safe, need not meet stricter standard of FDA for drug introduction).
For design patents, substitute ornamental, for plant patents,
substitute distinctive.

b) Novelty it has to be new; the first to invent will be granted a

patent. The textbook is very confusing in this area. Two concepts
involved here: 1) Novelty - In general, if something has already
been patented or has been described in a publication anywhere in
the world including a published U.S. patent application, has been
known, used or invented in the U.S. without abandonment, it is not
novel: no patent. And in order to incentivize timely applications,
2) Forfeiture of right to a patent due to delayed disclosure: If an
inventor has put the invention in use or on sale in the U.S. or has
patented or described the invention anywhere in the world more
than a year before the U.S. application is made or has abandoned
an invention: no patent (on sale bar, statutory bar).
c) Non-obviousness must be sufficiently different from what has
been used or described before so as to not be obvious to person of
ordinary skill in the field The Graham Factors i) Analogous
prior art review related existing inventions in the field, ii)
Differences in prior inventions, iii) if obvious to person with
ordinary skill in field, no patent, and iv) secondary considerations
commercial success, commercial acquiescence (competitors
seeking licenses), copying (infringement).
30)Exclusions from patent protection
a)
b)
c)
d)
e)

Products of nature only human-made inventions can be patented

Laws of nature scientific truths, abstract ideas (E=mc2)
Printed matter forms
Atomic weapons
Non-useful business methods and mental steps

31)Design Patents Diverse articles such as jewelry, furniture, clothing,

bottles, etc. Instead of useful it needs to be ornamental. Also, must
be an article of manufacture, must be new (novel), must be original i.e.
non-obvious.
32)Plant Patents Must discover and asexually reproduce (grafting, not
seeds) a new variety of plant. Instead of useful it needs to be
distinctive. Also novel (not existing in nature) and non-obvious.

33)Patent Searching a) Novelty Search (patentability search) initial search to determine

whether invention is new (novel against prior art) and non-obvious
(whether the subject matter would have been obvious to person
having ordinary skill in the art) Remember, we cannot patent an
invention that has been known or used in the U.S. or patented or
described in publications worldwide!
b) Freedom to Operate/Infringement/Full Patentability Search - If
going to market or on notice that you are infringing someone elses
patent, will conduct a freedom to operate/infringement/full
patentability search. More extensive; Use of professional search
firm and patent attorney will satisfy your duty of care precluding
any punitive damages.
c) Search Resources USPTO Search Room in Alexandria, Virginia.
Patent and Trademark Depository Library (UNR), USPTO
database full texts of patents granted since 1976, patent # and
classification for patents granted from 1790 through 1975,
commercial search services and databases like Delphion (one day
pass). Applications published about 18 months after filing, after
a lot of back-and-forth with the Patent Office.
d) Two principal means of searching the USPTO database, by
keyword and by classification. These two searches are no
guarantee of an inventions or designs novelty or nonobviousness. For instance, keyword searches only cover patents
granted since 1976. Also, since patent applications are maintained
in secrecy by the USPTO for a period of time, you have no way of
looking at those. Lastly, the USPTO database does not include any
foreign patents or any published descriptions or uses of an
invention or design worldwide. Certainly, we would at least want
to do a lot of Google or other search engine research before
actually filing an application. And it might also make sense to
visit a local Patent and Trademark Depository Library before
filing. Lastly, if the economics of the project warranted it, you
might enlist a professional search firm, buy some time on one of
the proprietary search systems like Delphion or Nexis/Lexis, or
hire a patent attorney to render an opinion before filing.

34)Patent Application Process Only 20% of inventors file patents without

attorneys FYI. Also, patents granted to 65% of applications. The
process takes from 1 to 3 years or longer.
a) Types of applications i) Provisional inexpensive and quick, no
claims required, must file regular utility patent within 12 months
why? Race with other inventors or time to assess commercial
potential disadvantage? No indication of inventions ultimate
patentability, ii) Utility, iii) Design, iv) Plant, v) Continuing
application let unrejected claims go forward will fighting rejected
claims, vi) Continuation-in-part adds new matter not disclosed in
earlier patent, vii) Divisional application examiner determines 2
inventions to be a single invention, must be connected in design,
operation or function, viii) PCT application one standard application
covering 135 nations basically reserves your filing date in the
respective countries and allows you to prosecute claims in any country
within the next 30 months precludes you from having to file in all
countries of interest simultaneously to avoid be barred.
b) Parts of the application 4 basic sections i) specification describes
the invention and manner and process of making and using it must
be so complete as to enable one skilled in the art to make and use the
invention must describe how invention works can include
references to other patents, publications, etc. includes title,
background discussing the field of invention and how this differs,
summary of invention, description of drawings, detailed description of
invention, lastly, the CLAIMS most important part of the application
one sentence each drafted to provide broadest possible scope of
protection (probably heard about infringers drafting around poorly
worded claims this section is why you need a patent attorney or
patent agent) note: design and plant patents have only one claim, ii)
abstract separate page concise statement of invention for USPTO
and public to quickly determine nature of invention, iii) drawings
strict rules companies that do nothing else, and iv) oath of inventor
that he/she believes they are first inventor patents must be in name
of actual inventor, not a company may be assigned to company
concurrently with application.

c) Filing Application Since 2000, could file electronically on the

internet slow getting accepted, now most patents filed electronically.
Fees as we saw there is a filing fee, a search fee, an examination fee,
an Information Disclosure Statement (IDS) fee, an issuance fee, a
publication fee and maintenance fees at 3, 7, and 11 year
anniversary. If maintenance fees not paid, public domain remember
the patents from The Official Gazette that had lapsed for failure to pay
maintenance fees. Maintenance fees are USPTOs biggest cash cow
and 93% pay at 3 year anniversary, 69% at 7, and only 44% at
11 years. The IDS must be filed within 3 months of the application
filing lays out all prior references that bear on the novelty or nonobviousness of the invention (printed publications, uses or sales,
foreign or domestic patents or applications, etc.) Theoretically,
youve already reviewed all of these and believe your invention still
stands.
d) Prosecuting the Application patent examiner assigned and will issue
an office action for defects or rejections 22 months for USPTO to
take first office action! they rely heavily on Manual of Patent
Examining Procedure (MPEP), you should too you respond, second
rejection is final action, may be appealed can apply for an
accelerated examination for a fee that restricts a number of your
options unlike trademark, not much recourse for member of public
to oppose a patent grant Can file a request for re-examination after
a patent is granted with evidence of prior art, publications, uses,
whatever During the course of examination, if examiner discovers
overlapping claims in process, a determination will be made by the
USPTO as to invention priority. You have to be first to conceive of
invention AND reduce it to practice (application filing or making and
testing invention).
e) Patent Notice Can use patent pending once application filed,
penalty for using without filing. Once granted, can use Patent
No.-----. Notice not required but recommended if no notice, you
have to prove in court that an infringer was notified and continued to
infringe.
35)Patent Ownership and Transfer You can license, sell and devise by will,
just like personal property. Actual inventor must sign patent application

but if a company actually owns it, there is a simultaneous filing of an

assignment.
a) Joint Inventions - If joint inventors, must be signed by all
inventors. Giving suggestions, making minor contributions,
helping to build a model do not constitute joint ownership.
Unlike copyright, joint inventors do not have to work together at
the same time or contribute the same. Each must have made
some contribution of inventive thought. The weird thing about
joint ownership in absence of an agreement to the contrary,
each joint owner can exploit the invention independently, like
joint owners of copyright but, unlike copyright, they have no
obligation to share the fruits with the other owners.
b) Disputes over Ownership In U.S., now first to file, like the rest
of the world. To claim invention requires two parts: 1)
Conception formation in the mind of the complete invention
(unlike copyright, you get points just for having the idea!) and 2)
Reduced to Practice by a) construction of the invention, testing to
ensure it works OR b) application with USPTO. Both are
required for ownership. Inventors keep evidence of their testing,
laboratory notebooks, other documents related to their work
author suggests have disinterested 3rd parties sign and date your
drawings and notes. Someone else may file first but you may
prove that you were attempting to reduce the invention to practice
first.
c) Employer/Employee Ownership Employment agreement may
spell out ownership. If no agreement, employee owns, even
when invented during working hours. Employer will have shop
right non-exclusive use of the invention in their business. On
your own time, its yours.
d) Assignment of patent rights Must be in writing. Recording the
assignment with the USPTO is recommended. Apparently, if you
dont record an assignment of a patent to you within 3 months of
the signature of such assignment, and some other yokel comes
along and without notice of your assignment buys the invention
from the inventor, he owns it!

e) Licensing Patent Rights Most lucrative. Like copyright, you

can slice and dice your rights when licensing by term, territory,
etc.
36) Patent Infringement
a) In general A patent is a governmental grant that allows the
owner of the patent to exclude others from making, using,
offering to sell, selling or importing. Doesnt grant you those
rights; it just grants you the right to exclude others. You can
only enforce a patent after it has been granted. So, during the
application process, both prior to and after application
publishing, during the entire patent pending period, no right to
enforce the patent. You can go back and get reasonable
royalties from infringers during the period between publication
and patent grant. What about the pre-publication period? Too
bad.
b) Types of patent infringement 1) Direct where you make,
use, sell, offer to sell, or import a patented invention no intent
to infringe required or 2) Indirect - you a) encourage or induce
another to infringe (inducement) indirect infringer must know
that infringement will occur or b) offer to sell or sell in the U.S.
a nonstaple component of a patented invention, knowing it
has no substantial use apart from use in a patented invention
(contributory infringement). In order to be held liable for
indirect infringement, there must first be someone who has
directly infringed. So, if you encourage another to infringe and
they dont, no indirect patent infringement. Selling nonstaple
components; if no buyers, no direct infringers.
c) Doctrine of Equivalents We dont want to allow minor
improvements or alterations to a patented invention to get by. If
an invention is equivalent to a patented invention i.e. it
performs substantially the same function, substantially the same
way, to reach substantially the same result = infringement.
Infringement occurs even if only one claim of a granted patent
is infringed upon. But that literal infringement must include
each element of a claim. From the book: If Claim 1 in a patent
is for a widget consisting of elements A, B, C, and D, and the

accused infringing device consists only of elements A, B, and

C, there is no literal infringement because element D is not
present. In that it would be easy to substitute one element with
an equivalent whereby there is no literal infringement, the
courts have developed the Doctrine of Equivalents. Thus, even
if a device does not literally infringe, it may be found to
infringe if there is an equivalence in its elements. Remember
how we talked about hierarchy of strengths in trademarks:
generic, descriptive, suggestive, arbitrary, fanciful? Same sort
of thing in patents. A pioneer patent, a large breakthrough in
existing art is stronger and is given wide range of equivalents so
protection is broader. If an accused invention is generally
equivalent, it infringes. Conversely, an invention that is only a
modest improvement to a prior invention, is given a limited
range of equivalents; to infringe, must be convincingly
equivalent.
d) First Sale Doctrine where have we seen this before?
copyrighted material. Same thing here. You unconditionally
sell me a patented invention, I can do what I want with it, resell
it, give it away, whatever. I can also repair it or replace parts,
but I can not entirely reconstruct it (would constitute making
the patented invention). Book mentions the convertible top
replacement case, where a convertible top manufacturer for
autos had a patent on the top. When the fabric wore out, that
company wanted you to buy a replacement from them. A 3rd
party company sold fabric replacements for the top, probably
cheaper. Patent holder sued although 3rd party company was
selling nonstaple components (fabric tops) and could be liable
for contributory infringement, court held that there was no
direct infringement car owners had a right to replace fabric
top without infringing on the patent. No direct infringement; no
indirect infringement.
e) International Infringement a) ITC International Trade
Commission, a quasi-judicial federal agency we touched on
them in trademark, they accept complaints from IP owners and
issue exclusion orders barring products with infringing
trademarks or infringing patents from entering the U.S.,
enforced by U.S. Customs. So, if the patented invention is a

process, although use of the process overseas is not a patent

infringement per se (outside the jurisdiction of U.S. law), you
cant use the process abroad to make products that get imported
into the U.S. ITC can issue an exclusion order on such
products, b) What about exporting unassembled components or
nonstaple components of patented inventions for assembly and
use abroad? Infringement. Cant export substantial portions of
unassembled components or nonstaple components in a manner
to induce assembly that would be an infringement in the U.S.
f) Defenses to Infringement
i.

No infringement no literal infringement and no

infringement under the Doctrine of Equivalents

ii. Patent Invalidity Should not have been issued not

useful, novel, or is obvious.
iii. Fraud Omissions or material misrepresentations during
the patent application process. Remember the duty of
candor and the IDS (Information Disclosure Statement)
that needs to be submitted within 3 months of the
application. Heres the reason to make it complete.
iv. Patent Misuse price fixing, product tying, other anticompetitive behavior or threatening litigation without
probable cause.
v.

Use was experimental or research oriented.

vi. 1st Inventor Defense I was actually the first inventor.

vii. Laches If you know youre being infringed upon, you
cant just sit on it and much later sue. Can only collect
damages for the six years prior to any litigation you
commence.
viii. Estoppel If you lead an infringer to believe that you will
not go after him and he relies on that, you cant then later
sue him.

g) Patent Litigation Incredibly expensive cat and mouse game.

The game begins with a cease and desist letter. Book
suggests that it not be threatening for fear that recipient files a
declaratory judgment action in their local courthouse. You
then need to participate from a distance. Author suggests you
dont even allege that infringement has occurred but identify
the patent and invite recipient to discuss the matter. Hmmm.
not sure I buy into this. I guess before you send the letter, there
must be big bucks at stake and you must feel good about the
strength of your patent claims. Federal Courts have exclusive
jurisdiction over patent matters. The case is won or lost based
upon a preponderance of the evidence (more likely than not).
37)International Patent Law We know about the Paris Convention we
covered it in the Trademark section of this class. 170 countries, each
member country guarantees the same rights in patent and trademark to
citizens of other member nations as its own citizens. However, a patent
granted in the U.S. only provides protection in the U.S., none outside the
U.S. You have to prosecute patents in each country in which you desire
protection independently. If you first file in the U.S., the Paris
Convention gives you 12 months to file in member countries while
receiving the benefit of the U.S. filing date. But you still have to go
through the process in each country.
Hence, the Patent Cooperation Treaty (PCT 135 countries). Under the
PCT, you can file one international application. Its not cheap but can
save you a bundle in the long run. The filing fee is over a grand, the
examination fee over 2 grand but the way it works is in two stages:
1) the international stage you file with the USPTO and you receive an
international search report and written opinion from an office designated
by the WIPO, the searching authority includes Finland, Japan, Korea,
Russia, Spain, Sweden, U.S. and European Union. You get the report and
opinion 4-5 months after the application. You can then decide which
countries, if any, you wish to prosecute a claim in with the national
stage at this point, you can request a preliminary examination in the
country The reports you receive in the process, if favorable, bode well
for your being granted patents. The real advantage of the process is
TIME. With the Paris Convention, you only get 12 months. With PCT,

you can get up to 30 months to prosecute an application in a given

territory.
38)Trade Secret State-based - You have information not readily available
to the competition - Secret recipes Colonel Sanders, Coca-Cola Trade
Secret Law Whole body of state-based law covering trade secret
Generally, if information is not generally known, has commercial value,
and youve taken reasonable steps to keep it secret, it is not legal for
anyone else to use it If they do, lawsuit.
39)Unfair Competition - Lanham Act (Federal Law covering Unfair
Competition) 2 basic sections: a) infringement of trademarks, service
marks, and trade dress, and b) false advertising and product
disparagement.
a) False Advertising Advertising that is literally false or likely to
mislead or confuse consumer mere sales talk or puffery is
not actionable if you use tests show, clinically proven, etc.
plaintiff merely has to prove that supporting tests were
inadequate and did not establish the proposition if merely
claiming product superiority without tests, plaintiff must prove
such claims false (more difficult)
b) Product Disparagement Similar to defamation, but commercial
in nature Defamatory statement of fact about your product/
business that was made public, was false, and caused damage.