intellectual property update for the general practitioner
TRANSCRIPT
Intellectual Property Update for the General Practitioner
presented byCrissa A. Seymour Cook
Recent Developments in the Law 2014University of Kansas School of Law
Types of Intellectual Property• Trademarks
- Source indicators
• Copyrights- Works of Authorship: *Writings *Music *Software
Types of Intellectual Property
• Patents- Inventions: *Processes/Methods *Machines/Devices
• Trade Secrets- Confidential information which has economic value: *Formulas *Customer lists *Manufacturing processes
TRADEMARKS
Trademarks• Trademarks
- Assets of a Business – Both as property and as goodwill- family of marks- slogans- designs/icons- product configuration
TrademarksYou should always use a TM symbol with all
trademarks whenever possible. TM may be used for any mark in commerce.
You should always use the registration symbol (®) for registered trademarks.- Removes defense of innocent infringement
Is the Mark Available for Registration or Use?SEARCHES help to determine whether the mark is
available for registration and use– Federal searches [www.uspto.gov]– State searches [secretaries of state] – not tasked
with searching or enforcement– Domain Name searches – “Common Law” – internet, phone books, business
names– Proprietary Databases – CT Corsearch, Thomson
Trademark Protection• Trademark Rights Acquired Through Use
of the Mark in Commerce– Common law rights – can use the ™ symbol– Limited to geographic region in which mark is
used– Enforcement through state common law
usually via unfair competition statute
Trademark Protection• Federal protection/registration – benefits
– others will find it in making a search– gives rights to use the mark throughout the
United States except as against prior users in their areas of use, regardless of owner-registrant’s actual area of use;
– after five years exclusive and continuous used mark and its registration are incontestable*; and
– constructive notice nationwide of the trademark owner's claim
Trademark Protection• Federal protection – benefits (continued)
– Evidence of ownership of the trademark– Jurisdiction of federal courts may be invoked– Registration can be used as a basis for
obtaining registration in foreign countries– Registration may be filed with U.S.
Customs Service to prevent importation of infringing foreign goods
– Domain Name rights - Ability to receive special rights with regard to domain names
Federal Trademark Protection1. Trademarks Must be Distinctive
A. Inherently Distinctive Marks– Fanciful: no other meaning than its meaning as a
trademark [STARBUCKS, LEGO, VERIZON]
– Arbitrary: words with separate meaning, but nothing to do with the associated product/service [CAMEL for cigarettes, APPLE for computers]
– Suggestive: suggest a characteristic of a good or service without actually describing that characteristic. [COPPERTONE for sunblock, EARTHLINK for internet service, JETBLUE for airline service]
Federal Trademark Protection1. Trademarks Must be Distinctive (continued)
B. Descriptive: - merely identifies a characteristic of the article or service it marks [WORLD WATERPARK ASSOCIATION]
• A descriptive mark entitled to federal protection only if it acquires distinctiveness (aka secondary meaning)
» Shown through long-term use, advertising expenditures, sales revenue, testimonials, etc.
C. Generic: - never entitled to trademark protection, i.e. “laptop computer” [ASPIRIN, ELEVATOR, CELLOPHANE, YO-YO, GOOGLE?]
1. Famous marks must ward against genericide
Federal Trademark Protection2. Trademarks Must Not be Confusingly Similar to
Other Marks- Factors to consider: In re E.I. DuPont du Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973)A. visually, audibly, or phonetically similar?B. are the goods/services related or competing?B. trade channels overlap?C. sophistication of consumers
**Notably, PTO Examiners will only search PTO database for pending/registered marks
Domain Names
Claim of Cybersquatting 15 U.S.C. § 1125(d): registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else
– “typosquatting” [i.e., www.kleeneks.com]Domain Name Disputes
– Arbitration proceeding and is relatively inexpensive– Usually involves 1 complaint and 1 response and then
decision by appointed arbitrator- can have oral argument before some tribunals- no discovery
** key hurdle in both scenarios is that the Respondent must have acted in bad faith
Domain Names
Hot issue: Use of others trademarks as a keyword or adword for a Google search.
• 1-800 Contacts, Inc. v. Lens.com, Inc., 10th. Cir. July 16, 2013.– Court held that using a competitor’s trademark as a
keyword that activates sponsored lines in Google’s search engine does not constitute trademark infringement.
– Issue: sponsored link had a “clickthrough” rate of only 1.5% - not enough to evidence a likelihood of confusion.
– Sponsored links in general rarely have a clickthrough rate of greater than 10%, which is normally necessary for the court to find a likelihood of confusion.
COPYRIGHT
CopyrightsCopyrights exist upon creation; benefits of federal registration–Anything that contains creative expression, i.e. advertisement, software, website, movies, songs–May immediately use the copyright notice, i.e. © 2014 University of Kansas
REQUIREMENTS FOR COPYRIGHT PROTECTION• Work of original creative authorship• Fixed in a tangible form of expression
from which it can be perceived, reproduced, or otherwise communicated, directly or with aid of a device
Copyrights1. literary works - fiction and nonfiction books,
manuscripts, computer programs, manuals2. musical works (and accompanying words) -- songs,
operas, and musical plays 3. dramatic works -- including music - plays and dramatic
readings 4. pantomimed and choreographed works 5. pictorial, graphics, and sculptural works – photos,
maps, globes, charts, technical drawings, diagrams, and models
6. motion pictures and audiovisual works7. sound recordings and records – digital recordings, CDs,
MP3s, and tapes
EXCLUSIVE RIGHTS IN COPYRIGHTED WORKS• Right to Reproduce or copy• Right to Distribute• Right to Display• Right to Perform• Right to Make Derivative Works
Copyright Protection• Unregistered Copyright
– Author owns immediately
• Registered CopyrightAuthor or owner may register copyright to avail itself of statutory rights- Ability to sue for infringement- Statutory Damages (Requires Timely Registration)
• Up to $30,000/infringing work• Up to $150,000 for willful infringement of work• Attorneys’ fees/legal expenses
Why Register?• Proof of ownership
– If you don’t register within five years of creating the work, the court doesn’t have to recognize the registration you do file as self evident proof.
• Access to courts• Statutory damages
– Must register within 3 months of publication or before infringement
– Otherwise, only an award of actual damages and profits is available to the copyright owner.
Ownership• Author is the presumptive owner• Transfer of Work
– Work for hire• Employer owns copyrights of employees if work
was prepared “within the scope of employment”• Employer does not automatically own copyrights
for work created by independent contractors, even if employer paid for the work
• If not employer/employee relationship, must obtain a written “Work for Hire Agreement” and must fall within statutorily enumerated categories
• Commissioning Party is considered the author– Assignment (in writing)
• Subject to termination
WORKS MADE FOR HIRE (17 USC § 101)
• Works made by an employee within the course of employment;
OR
• Works specially ordered pursuant to a signed written work for hire agreement AND if the works are in eligible categories
WORKS FOR HIRE CATEGORIES• contribution to a collective work• part of a motion picture or other• audiovisual work• a translation• a supplementary work• a compilation• an instructional text• a test or answer material for a test• an atlas
WORKS MADE FOR HIRE (17 USC § 101)
• In drafting contracts that include assignment clauses, do not make the mistake of calling a creation a “work for hire.”
• Best practice: Provide for a present assignment of the material to be created. (“…does hereby assign…” and NOT “promises to assign”)
• Exemplary pitfall: Assumption that hiring a software developer to develop your website is a work for hire…guess who owns the copyright on your website??
Duration of Copyright• For individual authors, a copyright persists for
the author’s life plus seventy years for works created on or after January 1, 1978.
• For works made for hire, anonymous and pseudonymous works, the duration of copyright will be 95 years from publication or 120 years from creation, whichever is shorter.
• For works created prior to January 1, 1978, the duration of copyright may vary depending upon when the work was created and/or published.
Copyright• Must get permission to use copyrighted
material from the copyright owner or their licensing agent
• Music – compulsory licensing (BMI, Harry Fox Agency, ASCAP, Copyright Office)
• Movies – movie studios• Photographs – stock photo companies
(Getty Images); photographers
Copyright• Certain works are NOT protected by copyright
law• Works that are in the public domain unoriginal
reprints of public domain works• U.S. Government Works
• 17 U.S.C.§ 105: Copyright protection under this title is not available for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise.
Copyright• Facts and ideas
– While the protection does cover the particular, distinctive words a writer uses to present ideas or facts, control over the underlying concepts or truths cannot be owned. Thus, a biography about a famous athlete qualifies for copyright, but the events and facts of his life do not.
– Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340 (1991).
• Data is not protected by copyright.– Selection and arrangement of data can be protected by
copyright
– However, must have “modicum of creativity”
Unprotectable Works (Examples)
• Works which have not been fixed in a tangible form of expression
• Titles, names, short phrases, and slogans• Mere listings of ingredients or contents• Works consisting entirely of information
that is common property and which contains no original authorship (e.g. height & weight charts, tape measures, calendars, etc.)
Copyright hot topic
• ABC v. Aero: Case pending before the U.S. Supreme Court– Decision expected by Summer.– Using tiny “personal” antennas to collect broadcast
television without paying fees that apply to cable companies, the broadcast is stored and can be replayed – like a DVR, but stored someone other than your living room and accessed over the internet.
– Sets the stage for reinterpreting digital and video law, and the definition of “public” vs “private performances”
Patents
.
America Invents Act (AIA)• Signed into law September 16, 2011• The most sweeping changes to U.S.
Patent Law in nearly 60 years• Change from a first to invent to a first
(inventor) to file system
Patentable subject matter
• Hot topics at the U.S. Supreme Court– Software– Business methods– Biotechnology
• Tug of war between the pro-patent Federal Circuit and the somewhat anti-patent Supreme Court.
Patentable subject matter
• What’s patentable? – §101 Patentable Inventions
• "New and Useful" OR Improvement thereof• Process, machine, manufacture, composition of
matter
– “Anything under the sun made by man”• Diamond v. Chakrabarty 447 U.S. 303 (1980)
Patentable subject matter
• “Anything under the sun made by man” – key language
• Laws of nature, abstract ideas, natural phenomenon, algorithms, etc. are not patentable– Are not made by man – handiwork of nature– Presence of a law of nature, algorithm, etc. does not
automatically render an otherwise patentable claim unpatentable
– Application or implementation may be patentable.
Patentable subject matter
• List of recent cases at U.S. Supreme:– Bilski v. Kappos (2010) – computer process
unpatentable– Mayo v. Prometheus (2012) – medical
diagnostic process unpatentable– AMP v. Myriad (2013) – isolated DNA
unpatentable
Patent Ownership PrimerIn the U.S., patent rights initially vest in their human inventors, and thus only inventors can apply for a patent. The application and/or patent can be assigned (and issue) to a company.
In the International realm and many foreign countries, companies can apply for patents on behalf of the human inventors (usually their employees).
“Employee” created IP
•General practitioners who draft agreements relating to employment, confidentiality, research, manufacturing, etc. need to be cognizant of IP provisions and the proper approach to establishing a clear chain of title.
“Employee” created IPThe term “employee” is used very broadly herein to encompass inventors that might not be traditional employees, but have some relationship to the company which may entitle the company to intellectual property created by that individual.
Essentially, any IP created by an organization is employee-created IP – because only human individuals can “invent” under the U.S. patent scheme.
This raises several issues with respect to establishing proper ownership and transfer of invention rights to the company or organization.
Stanford v. Roche2011 Supreme Court case that involved an HIV diagnostic test, developed as a result of joint efforts between Stanford and Cetus (a biotechnology company later acquired in-part by Roche).
Specifically, a Stanford researcher was working as a visitor at Cetus’s facility when he first conceived of the invention and devised a procedure for the HIV test. He then returned to Stanford and completed his work to test the procedure. Stanford was ultimately granted three patents on the invention.
Roche acquired various Cetus assets, including those relating to the HIV procedure developed at Cetus. After conducting clinical trials with the procedure, Roche began commercializing the HIV test kits worldwide.
Stanford v. RocheWhen Stanford later sued Roche for patent infringement, Roche claimed co-ownership of the invention by virtue of a contract the researcher had signed with Cetus as a condition to gaining access to Cetus’s facility. This contract contained a provision for the assignment of both present and future rights to inventions.
Key Language: “will assign and do[es] hereby assign...right, title and interest in ...the ideas, inventions, and improvements...[made] as a consequence of [his] access” to the Cetus facility
Stanford v. RocheIn contrast, Stanford’s employment agreement contained a promise to assign inventions, but not a present assignment of rights.
Key language: “agree to assign” to Stanford the inventor’s “right, title and interest” in inventions resulting from employment there
Stanford tried to argue that it did not need a present assignment from the researcher, because its rights automatically vested in the invention by virtue of the Bayh-Dole Act.
Stanford v. Roche
The Supreme Court confirmed that since 1790 U.S. patent rights initially vest in "the inventor" and that the non-specific language of the Bayh-Dole Act did not change this setup.
The Court pointed out that Bayh-Dole only confers the option to “retain” rights, but that one has to have those rights in the first place before being able to “retain” them. Thus, although the researcher was under a duty to assign his rights to Stanford, he had actually assigned them to Cetus (and thus Roche) first.
Stanford v. Roche – Take home point 1
The Bayh-Dole Act allows universities, rather than the U.S. government to own inventions arising out of federally-funded research. However, what the Act does not do is automatically vest ownership in the university. Rather, the Supreme Court, in Stanford v. Roche confirmed that the patent rights, under U.S. patent law originally vest in the inventor.
The university must still obtain an effective transfer of those rights via an assignment.
Stanford v. Roche – Take home point 2
The Court also stated that “it is often the case that whatever an employee produces in the course of his employment belongs to his employer. No one would claim that an autoworker who builds a car while working in a factory owns that car. But, as noted, patent law has always been different: We have rejected the idea that mere employment is sufficient to vest title to an employee’s invention in the employer.”
Stanford v. Roche – Take home point 2
Employment agreements should include express provisions clearly addressing ownership of employee-created IP. Ownership should not be taken for granted simply because there is an employer-employee relationship.
The same approach should be taken for independent contractors, etc.
Employment Agreements
Employment agreement provisions on inventions are generally either: (1) A promise to cooperate and assign rights; or (2) An automatic, present assignment that occurs constructively at the moment of invention. If Stanford had chosen option 2 for its employment contract, then it would have automatically taken rights in the invention (which it could then have elected to “retain” under Bayh-Dole.)
Employment Agreements
If possible, employment agreements should always have a present assignment of inventions.
Employment Agreements
A formal assignment should still be executed and recorded once a patent application has actually been prepared to provide notice to third parties.
Record within 3 months, otherwise can run into a BFP situation.
Employment Agreements
Broadly define “inventions” in the employment agreement to include those things developed pursuant not only to the employee’s job description, but also inventions developed that relate in any way to the employer’s business or other interests.
Employment Agreements
Caveat - State-specific requirements: Several states, including Kansas (KSA 44-130) have labor laws addressing the assignment of inventions.
Employment AgreementsKSA 44-130 (paraphrased):(a) Assignment provisions do not apply to an invention for which no equipment, supplies, facilities or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless:
(1) The invention relates to the business of the employer or to the employer's actual or demonstrably anticipated research or development; or (2) the invention results from any work performed by the employee for the employer.
Employment Agreements
KSA 44-130 (paraphrased):(b) Provisions which purport to apply to an invention prohibited under subsection (a) is void and unenforceable. It is unlawful to require an employee to sign one of these provisions as a condition of employment or continuing employment.
Employment AgreementsKSA 44-130 (paraphrased):(c) If the employment agreement requires assignment of employee inventions, the employer must also provide written notice to the employee that the agreement does not apply to inventions developed entirely by employee (own time, resources, information, etc.), unless:(1) it relates directly to the existing or future business or R&D of the employer; or(2) it results from any work performed by the employee for the employer.
Employment Agreements
KSA 44-130 (paraphrased): (d) The employee must disclose inventions it develops so that the employer can determine whether it has any rights in the invention.
Employment Agreements
• If there is no present assignment language in the employment agreement, management needs to have procedures in place to ensure inventions are in fact assigned to the company once they are conceived or created. Otherwise, the inventor/employee might be able to validly assign them to a third party.
• Recourse would be against the employee for breach of contract, but probably won’t be able to do anything about the third party patent owner.
Other Pitfalls
“Work for hire” – This language is sometimes used erroneously in employment agreements with respect to inventions. It is specific to copyright and does not apply to patent law.
There is, however, a “hired to invent” type doctrine, as well as a “shop rights” doctrine that may help a company successfully argue ownership, even where no specific employment provisions are present.
Other Pitfalls
• “Hired to invent” does not apply to general employee job descriptions. It must be a specific task and the facts must make it unmistakably clear the person was hired to achieve a specific result.
• “Shop rights” does not give the company patent-type rights. It’s traditionally viewed as simply a license to practice the invention.
Priority and Ownership
Equally as important as ownership.
Timing of assignment is key to establishing priority of invention in the international realm.
Practice Pointers•Assignments should also contain a transfer of the right to claim priority.•If practice in International realm, should be aware of assignment requirements of key jurisdictions.•Generally, want the assignor’s signature to be notarized. In addition, some places like Europe actually require both parties to sign. So need to also get the assignee’s signature (does not have to be notarized).
Practice Pointers
Final point: Many of these issues are not encountered during prosecution of the patent application. They are only raised during litigation when you try to assert the patent against someone – this is the key time when ownership and priority rights matter most!
Thank You!
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