INTELLECTUAL PROPERTY PRIMER FOR GENERAL PRACTICE ATTORNEYS by: CHRISTOPHER A. PROSKEY, JD, MBA The...

INTELLECTUAL PROPERTY INTELLECTUAL PROPERTY PRIMER FOR GENERAL PRIMER FOR GENERAL PRACTICE ATTORNEYSPRACTICE ATTORNEYS

by:by:

CHRISTOPHER A. PROSKEY, JD, MBACHRISTOPHER A. PROSKEY, JD, MBAThe Zarley Law Firm, P.L.C.The Zarley Law Firm, P.L.C.

Capital Square, 400 Locust Street Suite 200Capital Square, 400 Locust Street Suite [email protected]

515-558-0200515-558-0200

IP - DefinedIP - Defined

““Cows come this week!”Cows come this week!”

“ “I hated this rock! I hated this rock!

Soon to be in the creek!”Soon to be in the creek!”

IP - DefinedIP - Defined

What isn’t Intellectual Property What isn’t Intellectual Property Anything you can touch, eat, walk on…. Anything you can touch, eat, walk on….

What is Intellectual Property: What is Intellectual Property: Ideational creation of the mind for which an Ideational creation of the mind for which an

exclusiveexclusive set of rights are recognized. set of rights are recognized.

Rights reserved for the owner or inventorRights reserved for the owner or inventor

Inherently must be protected by the law(s) Inherently must be protected by the law(s)

Claim 1 – Patent InfringementClaim 1 – Patent Infringement


What is a PatentWhat is a Patent A grant by the government that gives the A grant by the government that gives the

creator of an invention the sole right to creator of an invention the sole right to MAKEMAKE, , USEUSE or or SELLSELL that invention in that country for that invention in that country for a set period of time.a set period of time.

US = 20-years from the date of filing of the Patent US = 20-years from the date of filing of the Patent ApplicationApplication

You must file for a patent in You must file for a patent in EACHEACH country you country you want protection inwant protection in


Patent Attorney =

PatentAgent =

Applied Sciences Degree

+Law

School +Pass Any

State’s Bar +Pass

Patent Bar

Applied Sciences Degree

+Pass

Patent Bar

• How do you get a Patent?


Standard for Patentability:Standard for Patentability: Anything that is:Anything that is:

NewNew – 35 U.S.C. – 35 U.S.C. § 101; § 101; § 102§ 102

UsefulUseful – 35 U.S.C. – 35 U.S.C. § 101; § 102§ 101; § 102

NonobviousNonobvious – 35 U.S.C. – 35 U.S.C. § 103§ 103

Terms of Art – Be Careful!!! Terms of Art – Be Careful!!!

Gilbert Lowell & Lewis Skolnick

Claim 1 - Patent InfringementClaim 1 - Patent Infringement

But what can you get a Patent on? But what can you get a Patent on? 35 U.S.C. § 10135 U.S.C. § 101You can get a patent on any New, Useful & Nonobvious:You can get a patent on any New, Useful & Nonobvious: ProcessProcess MachineMachine ManufactureManufacture Composition of MatterComposition of Matter Any New & Useful Improvement ThereofAny New & Useful Improvement Thereof

This now includes:This now includes: Plants Plants Animals Animals Business MethodsBusiness Methods

Claim 1 – Patent InfringementClaim 1 – Patent InfringementWhat is Required in a Patent ?What is Required in a Patent ?

35 U.S.C. 35 U.S.C. § 112 – DISCLOSURE!!!!!!§ 112 – DISCLOSURE!!!!!! You get a guaranteed monopoly for 20 years but you You get a guaranteed monopoly for 20 years but you

must give up the family jewelsmust give up the family jewelsWritten description. Written description.

Manner and process of making and using it.Manner and process of making and using it.

Clear, concise and exact terms.Clear, concise and exact terms.

Must Must enableenable any person skilled in the art to practice the any person skilled in the art to practice the invention.invention.

Shall set forth Shall set forth best modebest mode. .

Conclude with Conclude with claimclaim[s] particularly pointing out and distinctly [s] particularly pointing out and distinctly claiming the subject matter. claiming the subject matter.

Does not need to be an instruction manual. Does not need to be an instruction manual.

Claim 1 – Patent InfringementClaim 1 – Patent InfringementAnatomy of a PatentAnatomy of a Patent Cover PageCover Page DrawingsDrawings Background of the Background of the

InventionInvention Summary of the Summary of the

InventionInvention Description of the Description of the

DrawingsDrawings Detailed Description of Detailed Description of

the Inventionthe Invention ClaimsClaims


The Name of the Game is the Claim!!!The Name of the Game is the Claim!!! The claims define the “metes and bounds” of the patent. The claims define the “metes and bounds” of the patent.

Like describing the border around your property. Like describing the border around your property.

Claim 1 – Patent InfringementClaim 1 – Patent InfringementWhen do you get a Patent?When do you get a Patent?

One Year Bar! One Year Bar! - 35 U.S.C. § 102- 35 U.S.C. § 102 You have one year from any public use, public sale, offer for You have one year from any public use, public sale, offer for

sale. sale. The clock does not start to tick if you are legitimately The clock does not start to tick if you are legitimately

experimenting – but you have to prove it. experimenting – but you have to prove it. The clock starts to tick when your invention is “ready for The clock starts to tick when your invention is “ready for

patenting” patenting” Case law allows for experimentationCase law allows for experimentation

The earlier you start the process the better. The earlier you start the process the better.

Should you choose not to patent your invention – you are forced to Should you choose not to patent your invention – you are forced to elect TRADE SECRET protection!elect TRADE SECRET protection!

Claim 1 – Patent InfringementClaim 1 – Patent InfringementHow much does a Patent cost?How much does a Patent cost?

Depending on the complexity - Drafting & Filing a Patent Application Depending on the complexity - Drafting & Filing a Patent Application can cost anywhere from $3,500 to $10,000, or more.can cost anywhere from $3,500 to $10,000, or more.

How long does it take to get a Patent?How long does it take to get a Patent?The patenting process can take anywhere from 2-10 years.The patenting process can take anywhere from 2-10 years.


Patent Infringement occurs when you:Patent Infringement occurs when you: MakeMake UseUse Sell, Sell, Offer For Sale, or Offer For Sale, or Import Import something that meets something that meets Each-and-Every LimitationEach-and-Every Limitation

of of 1 claim1 claim of a patent of a patent

Claim 2 – Copyright InfringementClaim 2 – Copyright Infringement

Claim 2 – Copyright InfringementClaim 2 – Copyright InfringementWhat is a Copyright? What is a Copyright?

The legal right granted to an author, composer, The legal right granted to an author, composer, playwright, publisher, or distributor to exclusive:playwright, publisher, or distributor to exclusive:

publication, publication,

production, production,

sale, or sale, or

distribution of a distribution of a

literary, literary,

musical, musical,

dramatic, or dramatic, or

artistic work. artistic work.

Standard for CopyrightabilityStandard for Copyrightability: : any "original work of authorship" that is "fixed in any "original work of authorship" that is "fixed in

a tangible medium of expression." a tangible medium of expression." It does not extend to ideas or concepts.It does not extend to ideas or concepts.


37 C.F.R. § 202.1(a) prohibits copyright of a 37 C.F.R. § 202.1(a) prohibits copyright of a single word, title or small group of words or single word, title or small group of words or phrases, regardless of originality phrases, regardless of originality

Planesi v. PetersPlanesi v. Peters, 2005 WL 1939885 (9th Cir. 2005) No. 05-781, 2005 WL 1939885 (9th Cir. 2005) No. 05-781..

Individual words and short phrases are Individual words and short phrases are generally reserved for Trademarksgenerally reserved for Trademarks

Claim 2 – Copyright InfringementClaim 2 – Copyright Infringement When do you get a When do you get a CopyCopyRIGHTRIGHT..

Automatic and instantaneous the moment the Automatic and instantaneous the moment the "original work of authorship“ is "fixed in a "original work of authorship“ is "fixed in a tangible medium of expression." tangible medium of expression."

This is a This is a Common Law Common Law CopyrightCopyright To get a Federally Registered Copyright – must To get a Federally Registered Copyright – must

file a copyright registration with the United file a copyright registration with the United States Copyright OfficeStates Copyright Office

Claim 2 – Copyright InfringementClaim 2 – Copyright InfringementAdvantages of Federal Copyright Registration :Advantages of Federal Copyright Registration :

Establishes a public record of your copyright.Establishes a public record of your copyright.

Your copyright must be registered in order sue for infringement.Your copyright must be registered in order sue for infringement.

If registered within 5-years of publication, your registration certificate If registered within 5-years of publication, your registration certificate is prima facie evidence of the validity of your copyright.is prima facie evidence of the validity of your copyright.

If registered within 3-months of publication or before an infringement If registered within 3-months of publication or before an infringement occurs, once proven, statutory damages of up to $150,000 plus occurs, once proven, statutory damages of up to $150,000 plus attorney's fees could be awarded to you as copyright owner, even if attorney's fees could be awarded to you as copyright owner, even if your actual damages are minimal.your actual damages are minimal.

Registration deters potential infringement.Registration deters potential infringement.

If you don't register your copyright and someone else claims your If you don't register your copyright and someone else claims your work as their own, you will have to prove that it is actually yours.work as their own, you will have to prove that it is actually yours.


Copyright Notice: Copyright Notice: © Zarley Law Firm 2011© Zarley Law Firm 2011

Now Optional – but always good idea!Now Optional – but always good idea!

© Zarley Law Firm 2009 - 2011 - All Rights Reserved© Zarley Law Firm 2009 - 2011 - All Rights Reserved


Term of a Copyright:Term of a Copyright: 70 years after the death of the author70 years after the death of the author For a Work Made For Hire - 120 years after For a Work Made For Hire - 120 years after

creation or 95 years after publication, creation or 95 years after publication, whichever is shorterwhichever is shorter..

Claim 2 – Copyright InfringementClaim 2 – Copyright InfringementFair Use Doctrine - 17 U.S.C. § 107:Fair Use Doctrine - 17 U.S.C. § 107:

Permits some copying and distribution without permission of or Permits some copying and distribution without permission of or payment to the copyright holder. Does not clearly define fair use, payment to the copyright holder. Does not clearly define fair use, gives four non-exclusive factors to consider in a fair use analysis. gives four non-exclusive factors to consider in a fair use analysis.

1.1. the purpose and character of the use;the purpose and character of the use;

2.2. the nature of the copyrighted work;the nature of the copyrighted work;

3.3. the amount and substantialness of the portion used in the amount and substantialness of the portion used in relation to the relation to the copyrighted work as a whole; andcopyrighted work as a whole; and

4.4. the effect of the use upon the potential market for or value the effect of the use upon the potential market for or value of the of the copyrighted work.copyrighted work.

Claim 2 – Copyright InfringementClaim 2 – Copyright InfringementFair Use – ContinuedFair Use – Continued

Excerpts in a Excerpts in a reviewreview or or criticismcriticism for illustration or comment; for illustration or comment;

Quotation in Quotation in scholarlyscholarly or technical work; or technical work;

Use in a Use in a parodyparody; ;

Use in a Use in a news reportnews report; ;

Reproduction of a portion to Reproduction of a portion to replacereplace part of a damaged copy; part of a damaged copy;

Use by a teacher or student to illustrate an educational lesson; Use by a teacher or student to illustrate an educational lesson;

Reproduction for legislative or judicial proceedings; Reproduction for legislative or judicial proceedings;

Incidental and fortuitous reproduction, in a newsreel or broadcast, of Incidental and fortuitous reproduction, in a newsreel or broadcast, of a work located in the scene of an event being reported. a work located in the scene of an event being reported.

(1961 (1961 Report of the Register of Copyrights on the General Revision of the U.S. Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law)Copyright Law)


Standard For Copyright InfringementStandard For Copyright InfringementWhether Defendant copied protected expression in Plaintiff’s Whether Defendant copied protected expression in Plaintiff’s copyrighted workcopyrighted work

Look to Fair Use as a defense.Look to Fair Use as a defense. Independent Creation: Defendant’s independent creation of the work Independent Creation: Defendant’s independent creation of the work

without reliance on Plaintiff’s copyrighted work is a strong defensewithout reliance on Plaintiff’s copyrighted work is a strong defense

Claim 2 – Copyright InfringementClaim 2 – Copyright InfringementDerivative Work 17 U.S.C. § 101Derivative Work 17 U.S.C. § 101

A “derivative work” is a work based upon one or more pre-existing A “derivative work” is a work based upon one or more pre-existing works, such as a translation, musical arrangement, dramatization, works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of art.which, as a whole, represent an original work of art.

Claim 3 – Trademark InfringementClaim 3 – Trademark Infringement


What is a Trademark? What is a Trademark? The Lanham Act 15 U.S.C. § 1051 et seq.The Lanham Act 15 U.S.C. § 1051 et seq.

Any name, symbol, figure, letter, word, or mark Any name, symbol, figure, letter, word, or mark adopted and used by a manufacturer or merchant adopted and used by a manufacturer or merchant in order to designate his or her goods and to in order to designate his or her goods and to distinguish them from those manufactured or sold distinguish them from those manufactured or sold by others. by others.

A Trademark is an indication of source!A Trademark is an indication of source!


What can you get a Trademark on?What can you get a Trademark on?• Any unique indication of source that will not Any unique indication of source that will not

confuse consumers about affiliations or deceive confuse consumers about affiliations or deceive consumers regarding qualities, including:consumers regarding qualities, including:

• ColorsColors• NamesNames• SoundsSounds• SmellsSmells• SymbolsSymbols


How do you get a Trademark?How do you get a Trademark?• Common Law Trademark Rights:Common Law Trademark Rights:

• Acquired simply by using the mark in commerce!Acquired simply by using the mark in commerce!

• Federally Registered Trademark? Federally Registered Trademark? • Must file a trademark application with the USPTOMust file a trademark application with the USPTO

• Cost = ~$1,000 to $1,500 to file a trademark application. Cost = ~$1,000 to $1,500 to file a trademark application.

Claim 3 – Trademark InfringementClaim 3 – Trademark InfringementRegistered Trademark v. Common Law Trademark:Registered Trademark v. Common Law Trademark:• Unregistered Mark: use “TM” or “SM” Unregistered Mark: use “TM” or “SM” • Registered Mark: use ®Registered Mark: use ®• Owner of unregistered marks can still sue to Owner of unregistered marks can still sue to

prevent unauthorized use of trademark under the prevent unauthorized use of trademark under the Lanham Act – enforcement is geographically limitedLanham Act – enforcement is geographically limited

• Registration freezes all other common law usersRegistration freezes all other common law users


Standard for Trademark InfringementStandard for Trademark Infringement• Likelihood of consumer confusion - FactorsLikelihood of consumer confusion - Factors

1.1. Strength of the markStrength of the mark

2.2. Proximity of the goodsProximity of the goods

3.3. Similarity of the marksSimilarity of the marks

4.4. Evidence of actual confusionEvidence of actual confusion

5.5. Marketing channels usedMarketing channels used

6.6. Type of goods and the degree of care likely to be exercised by the Type of goods and the degree of care likely to be exercised by the purchaserpurchaser

7.7. Defendant's intent in selecting the markDefendant's intent in selecting the mark

8.8. Likelihood of expansion of the product linesLikelihood of expansion of the product lines• AMF, Inc v Sleekcraft Boats, 599 F.2d 341 (C.A.9) 1979.AMF, Inc v Sleekcraft Boats, 599 F.2d 341 (C.A.9) 1979.

Claim 4 – Trade Secret Misappropriation Claim 4 – Trade Secret Misappropriation

Claim 4 – Trade Secret Misappropriation Claim 4 – Trade Secret Misappropriation What is a Trade Secret? What is a Trade Secret? – Iowa Code Chapter 550.2– Iowa Code Chapter 550.2

formula, formula, pattern, pattern, compilation, compilation, program, program, device, device, method, method, technique, or technique, or process – That:process – That:(1) (1) Derives economic value from not being generally known to the Derives economic value from not being generally known to the

public, and public, and (2) (2) Is the subject of reasonable efforts to maintain its secrecy. Is the subject of reasonable efforts to maintain its secrecy.

Claim 4 – Trade Secret Misappropriation Claim 4 – Trade Secret Misappropriation Examples of a Trade Secret? Examples of a Trade Secret?

Anything where you can sell your product but keep the Anything where you can sell your product but keep the family jewels! family jewels!

KFC’s 12 spicesKFC’s 12 spices Formula for Coke-a-ColaFormula for Coke-a-Cola Dr. Pepper’s 23 flavorsDr. Pepper’s 23 flavors Many product’s manufacturing processesMany product’s manufacturing processes

Claim 4 – Trade Secret Misappropriation Claim 4 – Trade Secret Misappropriation What is Trade Secret Misappropriation?What is Trade Secret Misappropriation? – Iowa Code Chapter 550.2 – Iowa Code Chapter 550.2

Doing any of the following: Doing any of the following: Acquisition by a person who knows that the trade secret is acquired by improper Acquisition by a person who knows that the trade secret is acquired by improper means. means. Disclosure or use by a person who uses improper means to acquire the trade secret. Disclosure or use by a person who uses improper means to acquire the trade secret. Disclosure or use by a person who at the time of disclosure or use, knows that the Disclosure or use by a person who at the time of disclosure or use, knows that the trade secret is derived from or through a person who had utilized improper means to trade secret is derived from or through a person who had utilized improper means to acquire the trade secret. acquire the trade secret. Disclosure or use by a person who at the time of disclosure or use knows that the trade Disclosure or use by a person who at the time of disclosure or use knows that the trade secret is acquired under circumstances giving rise to a duty to maintain its secrecy or secret is acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use. limit its use. Disclosure or use by a person who at the time of disclosure or use knows that the trade Disclosure or use by a person who at the time of disclosure or use knows that the trade secret is derived from or through a person who owes a duty to maintain the trade secret is derived from or through a person who owes a duty to maintain the trade secret's secrecy or limit its use. secret's secrecy or limit its use. Disclosure or use by a person who, before a material change in the person's position, Disclosure or use by a person who, before a material change in the person's position, knows that the information is a trade secret and that the trade secret has been acquired knows that the information is a trade secret and that the trade secret has been acquired by accident or mistake.by accident or mistake.

Claim 4 – Trade Secret Misappropriation Claim 4 – Trade Secret Misappropriation How do you protect a Trade Secret? How do you protect a Trade Secret?

Put reasonable procedures and processes in place:Put reasonable procedures and processes in place: Use Non-Disclosure AgreementsUse Non-Disclosure Agreements Use Non-Competition AgreementsUse Non-Competition Agreements Mark documents confidentialMark documents confidential Develop employee training and handbooks regarding the proper handling of trade Develop employee training and handbooks regarding the proper handling of trade

secret informationsecret information Limit access to trade secret information to those that need-to-knowLimit access to trade secret information to those that need-to-know

Be proactive in protecting your trade secrets Be proactive in protecting your trade secrets Once you let it out of the box – it can’t be put back inOnce you let it out of the box – it can’t be put back in

Claim 5 – Unfair CompetitionClaim 5 – Unfair Competition

Claim 5 – Unfair CompetitionClaim 5 – Unfair CompetitionWhat is Unfair Competition?What is Unfair Competition? 15 U.S.C. § 1125(a) Lanham Act 15 U.S.C. § 1125(a) Lanham Act

Somewhat the catchall or smell-test provision of IP law:Somewhat the catchall or smell-test provision of IP law: "false or misleading description of fact, or false or misleading representation of fact" in "false or misleading description of fact, or false or misleading representation of fact" in

commerce, which "is likely to cause confusion, or to cause mistake, or to deceive as to the commerce, which "is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another sponsorship, or approval of his or her goods, services, or commercial activities by another person.person.

Includes:Includes:

Passing OffPassing Off False Advertising False Advertising

Claim 5 – Unfair CompetitionClaim 5 – Unfair CompetitionPassing OffPassing Off 15 U.S.C. § 1125(a) Lanham Act15 U.S.C. § 1125(a) Lanham Act

""(1)(1) an association of origin by the consumer between the an association of origin by the consumer between the mark and the first user, and mark and the first user, and (2)(2) a likelihood of consumer confusion when the mark is a likelihood of consumer confusion when the mark is applied to the second user's good(s).applied to the second user's good(s).

Claim 5 – Unfair CompetitionClaim 5 – Unfair CompetitionFalse Advertising False Advertising 15 U.S.C. § 1125(a) Lanham Act15 U.S.C. § 1125(a) Lanham Act

Plaintiff must show Plaintiff must show (1) the challenged statement is literally false or, even (1) the challenged statement is literally false or, even

though the statement is not literally false, that it is though the statement is not literally false, that it is likely to deceive or confuse customers, andlikely to deceive or confuse customers, and

(2) the defendant's false or misleading representation (2) the defendant's false or misleading representation was material in the sense that it would have some was material in the sense that it would have some effect on the consumers who are making the effect on the consumers who are making the purchasing decision. purchasing decision.

Claim 6 – Trade DressClaim 6 – Trade Dress

Claim 6 – Trade DressClaim 6 – Trade DressWhat is Trade Dress? - What is Trade Dress? - 15 U.S.C. § 1125(a) Lanham Act15 U.S.C. § 1125(a) Lanham Act

Characteristics of the visual appearance of a product Characteristics of the visual appearance of a product or its packaging (or even the design of a building) that or its packaging (or even the design of a building) that signify the source of the product to consumerssignify the source of the product to consumers Protected under §§ 43(a) of the Lanham Act Features do not need to be registered to be enforced Features must NOT be functional!!!

Protecting functionality is reserved for patents.

Claim 6 – Trade DressClaim 6 – Trade DressWhat is Trade Dress? - What is Trade Dress? - 15 U.S.C. § 1125(a) Lanham Act15 U.S.C. § 1125(a) Lanham Act

Two PesosTwo Pesos, 112 S.Ct. 2753 - protected unique look, feel, decoration , 112 S.Ct. 2753 - protected unique look, feel, decoration & design of a Mexican restaurant.& design of a Mexican restaurant.Ciba-Geigy CorpCiba-Geigy Corp., 547 F.Supp. 1095 (D.N.J. 1982) - Protected ., 547 F.Supp. 1095 (D.N.J. 1982) - Protected blue/white, pink/whit colors of a pillblue/white, pink/whit colors of a pillEx parte Haig & Haig LtdEx parte Haig & Haig Ltd., 118 U.S.P.Q. 229 (Comr. Pats 1958) - ., 118 U.S.P.Q. 229 (Comr. Pats 1958) - protected distinctive pinched shape of a Scotch bottleprotected distinctive pinched shape of a Scotch bottleFerrari SpA v. McBurnieFerrari SpA v. McBurnie, 11 U.S.P.Q. 2d 1843 (S.D. Cal. 1989) - , 11 U.S.P.Q. 2d 1843 (S.D. Cal. 1989) - protected shape of Ferrari car from becoming a toyprotected shape of Ferrari car from becoming a toy

Unsolicited AdviceUnsolicited Advice

Before your client goes into any new area or line of Before your client goes into any new area or line of business consider Claims 1-6. Who will they business consider Claims 1-6. Who will they upset, who will they take business from, and upset, who will they take business from, and what alleged IP rights will your client potentially what alleged IP rights will your client potentially be stepping on? be stepping on?

The End!The End!

Questions?Questions?

by:by: CHRISTOPHER A. PROSKEY, JD, MBACHRISTOPHER A. PROSKEY, JD, MBA

The Zarley Law Firm, P.L.C.The Zarley Law Firm, P.L.C.Capital Square, 400 Locust Street Suite 200Capital Square, 400 Locust Street Suite 200

[email protected] 515-558-0200515-558-0200

INTELLECTUAL PROPERTY PRIMER FOR GENERAL PRACTICE ATTORNEYS by: CHRISTOPHER A. PROSKEY, JD, MBA The...

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