INTELLECTUAL PROPERTY LAW FOR

NON-IP PRACTITIONERS: ETHICS AND ISSUE SPOTTING

FOR EFFECTIVE REPRESENTATION

Philip FurgangPhilip Furgang

Furgang & Adwar, L.L.P.Furgang & Adwar, L.L.P.New York, New YorkNew 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

TrademarksTrademarks

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

TRADEMARKS cont. Common law (i.e., unregistered)

trademarksA 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 goodor service.

TrademarksTrademarks, , contcont

Why common law rights are important but Why common law rights are important but federal registration is much betterfederal registration is much better

National v. Local rightsNational v. Local rights

TRADEMARKS cont. Intent-to-Use vs. UseIntent-to-Use vs. Use

Intent-to-Use means just that. You are not using Intent-to-Use means just that. You are not using the mark, but intends to do so. the mark, but intends to do so. 15 USC 1051(b)(1)15 USC 1051(b)(1)

Use means the mark is in use in commerce as of Use means the mark is in use in commerce as of the filing date.the filing date.

The Client Needs a SearchThe Client Needs a Search

What is a Trademark SearchWhat is a Trademark Search What it includesWhat it includes What IP counsel doesWhat IP counsel does

TRADEMARKS TRADEMARKS Foreign FilingForeign Filing

Differences between the US and Foreign Differences between the US and Foreign Countries.Countries.

US – is based on common law first use or US – is based on common law first use or date of filing, which ever is earlierdate of filing, which ever is earlier

Foreign – is registration only, not use.Foreign – is registration only, not use.

TRADEMARKS cont. Important considerations:Important considerations:

If a subcontractor is the client’s sole source of If a subcontractor is the client’s sole source of supply the client can lose its trademark!supply the client can lose its trademark!

AgendaAgenda

A Review of Patent LawA Review of Patent Law The Ethical Problems Caused by The Ethical Problems Caused by

Revisions to the Patent ActRevisions to the Patent Act Trademark Rights Trademark Rights

Patent AgendaPatent Agenda

What A Patent DoesWhat A Patent Does Business Test for Seeking a PatentBusiness Test for Seeking a Patent Overview of the LawOverview of the Law Statutes of LimitationStatutes of Limitation

PATENTSPATENTSThe Points Covered:The Points Covered:

A - What a Patent Does A - What a Patent Does B - The Fundamental business testB - The Fundamental business test C - Patent law legal basics C - Patent law legal basics D - Statutes of limitationsD - Statutes of limitations E - Foreign FilingE - Foreign Filing E - Design patents vs. utility patentsE - Design patents vs. utility patents F - Important considerationF - Important consideration

ScenarioScenario

A client consults about a production deal A client consults about a production deal and which includes a new way of and which includes a new way of streaming which wil add significant value streaming which wil add significant value to the project .to the project .

This development may impact the client’s This development may impact the client’s bargaining position.bargaining position.

What A Patent DoesWhat A Patent Does

Excludes competition from marketplaceExcludes competition from marketplace Makes entry into the marketplace more Makes entry into the marketplace more

expensiveexpensive Makes the idea Makes the idea more valuablemore valuable Provides an additional revenue streamProvides an additional revenue stream

The Fundamental Business TestThe Fundamental Business Test

Is It Is It DifferentDifferent??

Will The Client Make Money From That Will The Client Make Money From That DifferenceDifference?”?”

March 16, 2013 the New Law Took March 16, 2013 the New Law Took EffectEffect

We became a First-to-File system. We became a First-to-File system.

Here is what this means to a client and your Here is what this means to a client and your advice to that client:advice to that client:

STATUTE OF LIMITATIONSTATUTE OF LIMITATION

The New Statute of LimitationsThe New Statute of LimitationsNoveltyNovelty

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

The New Statute of LimitationsThe New Statute of LimitationsThe Misleading Grace PeriodThe Misleading Grace Period

Disclosure made 1 year or less Disclosure made 1 year or less before the effective filing date before the effective filing date of an application on a claimed of an application on a claimed Invention shall not be prior art Invention shall not be prior art to the claimed invention ifto the claimed invention if

The New Statute of LimitationsThe New Statute of LimitationsThe Misleading Grace PeriodThe Misleading Grace Period

The subject matter disclosed had been The subject matter disclosed had been publicly disclosed by the inventor or publicly disclosed by the inventor or another who obtain the subject matter another who obtain the subject matter disclosed from the inventordisclosed from the inventor

The New Statute of LimitationsThe New Statute of Limitations

BUT – What does “disclosure” mean?BUT – What does “disclosure” mean?

It covers only disclosure but NOT It covers only disclosure but NOT

Disclosure in order to sell, publish, or use the Disclosure in order to sell, publish, or use the invention THERE IS NO 1 YEAR GRACE invention THERE IS NO 1 YEAR GRACE PERIOD!PERIOD!

The New Patent ActThe New Patent Act

A Provisional Application:A Provisional Application:

Is not a patent applicationIs not a patent application

It secures only a filing dateIt secures only a filing date

But only to that which is disclosed ANDBut only to that which is disclosed AND

Complies with the Patent Act in making the Complies with the Patent Act in making the disclosuredisclosure

Gives 1 year in which to file the Gives 1 year in which to file the nonprovisional.nonprovisional.

The New Patent ActThe New Patent Act

Bottom line:Bottom line:

Do Not Ignore a Client’s Needs – Do Not Ignore a Client’s Needs –

Tell the client to see a patent attorney at Tell the client to see a patent attorney at once!once!

Make a memorandum to file of this advice! Make a memorandum to file of this advice!

If possible, give the the memorandum to If possible, give the the memorandum to the client. the client.

AND HERE IS WHY YOU MUSTAND HERE IS WHY YOU MUST

ISSUE SPOTTING ISSUE SPOTTING AND AND

WHY IT MATTERSWHY IT MATTERS

Ethical ConsiderationsEthical ConsiderationsVenturing out an area of concentration can Venturing out an area of concentration can lead to huge exposurelead to huge exposure

When talking to a client, and advising, When talking to a client, and advising, attorneys are required to know the law: attorneys are required to know the law:

Ethical ConsiderationsEthical Considerations

A lawyer is charged with knowing A lawyer is charged with knowing the law. Guessing doesn’t count.the law. Guessing doesn’t count.

N.Y. Rules of Professional Conduct: N.Y. Rules of Professional Conduct:

Rule 1.1:Rule 1.1:

(a) A lawyer should provide competent representation to a client.

Ethical ConsiderationsEthical Considerations

NY Rule 1.1(a) cont.

Competent representation requires the legal knowledge, skill, thoroughness and preparation reasonably necessary for the representation.

Ethical ConsiderationsEthical 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 ConsiderationsEthical 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 ConsiderationsEthical Considerations

When is an attorney-client relationship When is an attorney-client relationship formed?formed?

1.1. Even “friendly” or “free” advice Even “friendly” or “free” advice can form an attorney-client can form an attorney-client

relationship relationship making counsel liable for making counsel liable for his advice:his advice:

Randolph v. Resolution Trust Corp.,  995 F.2d 611, 615 (5th Cir.

1993);

Ethical ConsiderationsEthical 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 ConsiderationsEthical 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 TestsFundamental Tests

Is It Is It DifferentDifferent??

Will You Make Money From The Will You Make Money From The ““DifferenceDifference?”?”

Other Important Other Important Considerations:Considerations:

If someone invents or contributes to an If someone invents or contributes to an invention, it is owned by the contributor even if invention, it is owned by the contributor even if your client paid for it! 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. The most the client gets is a shop right. Id.Id. Refer the client to patent counsel to discuss the Refer the client to patent counsel to discuss the

consequences.consequences.