WHAT IN-HOUSE COUNSEL
NEEDS TO KNOW ABOUT IP
August 14, 2015
5020 Montrose Blvd., Suite 750
Houston, TX 77006
713.426.3923
832.900.4941 (fax)
713.857.6005 (mobile)
Types of IP
&
What They Protect
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Patents
Protect inventions
•
•
•
•
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process
machine
article of manufacture
composition of matter
improvement
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Patents
E.g..:
• hammer
• way to use the hammer
• hammer’s ornamental design
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Patents
Invention must be:
• new
• useful
• nonobvious
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Patents
Indicia of nonobviousness:
(1) long felt but unsatisfied need
(2) appreciation problem existed but unrecognized what it was
(3) unsuccessful attempts to solve the problem
(4) commercial success
(5) invention’s replacement of prior art
(6) copying of the invention
(7) acquiescence to patent’s validity by licensing or avoiding infringement
(8) teaching away from the invention
(9) invention’s unexpected results
(10) disbelief and incredulity that the invention worked
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Copyright
Protects original works of authorship fixed
in a tangible medium of expression
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Copyright
E.g.:
(1)
(2)
(3)
(4)
(5)
(6)
(7)
(8)
literary works
musical works
dramatic works
pantomimes and choreographic works
pictorial, graphic, and sculptural works
motion pictures
sound recordings
architectural works
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Copyright
Protects expression
• of an idea, not the idea
• of a fact, not the fact
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Marks & Trade Dress
Trademark
• word
• name
• symbol
• device or
• combination thereof
that identifies and distinguishes goods and indicates
source of goods
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Marks & Trade Dress
Service mark
• word
• name
• symbol
• device or
• combination thereof
that identifies and distinguishes services and indicates
source of services
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Marks & Trade Dress
Trade Dress
• design or
• packaging
that has obtained secondary meaning—i.e., identifies
product with its manufacturer or source
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Marks & Trade Dress
Trade Dress
• design or
• packaging
that has obtained secondary meaning—i.e., identifies
product with its manufacturer or source
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Trade Secret
Protects information
• having economic value because of secrecy and
• subject to reasonable secrecy efforts
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Trade Secret
E.g.:
•
•
•
•
•
•
•
formula
compilation
program
device
method
list—actual or potential customers
list—actual or potential suppliers
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Violations of IP Rights
(Infringement)
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Patent Infringement
Direct Infringement
• without patent owner’s authority
- make, use, offer to sell, or sell within the U.S. or
- import into the U.S.
the claimed invention
• ask for FDA approval of a patented (drug or use) drug
claimed in a patent or the use of which is claimed in a
patent
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Patent Infringement
Infringe a claim, not a patent generally
Name of the game is the claim.
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Patent Infringement
Infringement
• accused device/use/etc. has every element of a claim
- literally or by an equivalent
Doctrine of Equivalents
• No substantial difference between claim element and
accused element
Patent Infringement
Inducing Patent Infringement
• encouraged infringing act
• knew of the patent and
• knew, or should have known, induced acts would
infringe
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Copyright Infringement
•
•
•
•
•
make copies
create derivative works
distribute copies
perform publicly
display publicly
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Copyright Infringement
Fair Use
• purposes such as
- criticism
- comment
- news reporting
- teaching
- scholarship
- research
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Copyright Infringement
Fair Use
• Factors
- use’s purpose and character (e.g., commercial
nature or nonprofit educational)
- copyrighted work’s nature
- amount and substantiality used in relation to
copyrighted work as a whole
- use’s effect on copyrighted work’s potential
market or value
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Copyright Infringement
Potential statutory damages if work is
federally registered
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Marks Infringement
(1) mark ownership
(2) mark is valid and legally protectable
and
(3) other’s use of the mark to identify
goods or services is likely to create
confusion concerning the origin of the
goods or services
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Marks Infringement
Factors
• type of mark infringed
• similarity between
- the two marks
- similarity of the products or services
• identity of
- retail outlets and purchasers
- advertising media used
• defendant’s intent
• actual confusion
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Marks Infringement
Potential treble damages and
attorney fees if mark is federally
registered
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Trade Secret Misappropriation
1. acquire TS if knew or had reason to know acquired by
improper means
2. disclose or use TS if acquired by improper means
3. disclose or use TS if knew or had reason to know
obtained:
• under duty to keep secret or limit use
• from entity who owed such a duty or
• from entity who obtained by improper means
4. disclose or use TS—before a material change of your
position—you knew or had reason to know:
• TS was a TS and
• obtained by accident or mistake
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Patents:
• USPTO chart: Process for Obtaining a Utility Patent:
• USPTO’s Inventors Assistance
Copyrights:
• Copyright Basics
• Fair Use
Trademarks:
• Federal Trademark process
• Likelihood of Confusion
Trade Secrets:
• Texas Uniform Trade Secrets Act
• Texas Penal Code § 31.05 – Theft of Trade Secrets
Additional links:
• at www.intellectual-property-laxton.com/
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Ramey & Schwaller, LLP
5020 Montrose Blvd., Suite 750
Houston, TX 77006
713.426.3923
832.900.4941 (fax)
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