Intellectual Property in the United States

Intellectual Property in the United States Part 3

2009-07-12T07:10:00.000-07:00

1.Trade Secrets.

Trade secrets in the United States are exclusively a matter of state law. The nature and scope of these rights may differ significantly between individual states. A business must therefore pay careful attention to the choice of law as well as forum selection in trade secret contracts.

Generally speaking to obtain trade secret protection a business must show:

1) That the information has some value.

2) The business took reasonable steps to preserve the secrecy of the information. Such steps include:

a. tightly restricting access to the information,

b. limiting its disclosure to authorised personnel only,

c. making the information confidential and

d. executing nondisclosure agreements with all individuals granted access to the information.

2.Examples of Trade Secrets.

The courts have granted trade secret protection to the following:

a. customer lists,

b. software source code,

c. blueprints,

d. formulae,

e. recipes,

f. methods of manufacturing and

g. methods of doing business.

3.Trade Secrets Rights.

The owner of the trade secret may protect the secret from misappropriation by another. This includes unauthorised disclosure, possession, use or exploitation.
The owner of a trade secret may show that an employee breached a fiduciary or contractual duty not to disclose the trade secret.
It may also be where a third party, whol knows or should have known of the information's trade secret status has obtained the information without authority. That is by obtaining the information through the owners current or former employees. It also includes by obtaining the information through some other means such as industrial espionage.
Trade secret protection does not prevent a competitor from independently creating or reverse engineering the trade secret. Once a trade secret is disclosed in a non-confidential manner its protection is lost. The information then enters the public domain.

4.Trade Secrets Remedies.

The remedies available for trade secret misappropriation include:

a. injunction relief,

b. actual damages in the form of either plaintiff's lost profits or

c. the defendant's profits,

d. multiple damages for wilful misappropriation and

e. attorneys fees.

Criminal sanctions might also be available.
A defendant may independently developed or reverse engineer a plaintiff's trade secret without liability. Because of this many courts refused to grant a plaintiff a broad injunction against the use of a misappropriated trade secret. What the courts are instead prepared to do is to grant a "lead time” injunction. This is meant to prevent the defendant from using the trade secret for a set period of time. This set period of time is the time the defendant would have needed to obtain the trade secret legally. What is meant by legally is for instance by the defendant's own research and development.
In other words the lead time is the time period that the defendant would have needed to obtained the trade secret through his own research and development.

See: International Intellectual Property Law Global Jurisdictions by Dennis Campbell and Susan Cotter 1996 published by John Wiley and Son Ltd pages 367 - 368 paragraphs 9.64 - 9.68.

Intellectual Property in the United States Part 2

2009-07-12T04:46:00.000-07:00

1. Trademarks.

A trademark is a symbol used to identify the source of particular goods and services. Trademarks help the public to distinguish one product or service from another. Trademarks also assure the public of the quality of the products or service sold under the particular trademark. A guiding principle of trademark law in the United States is the distinctiveness of the trademark. A distinctive mark can better perform the function of informing the public as to the source and quality of the product to which the trademark is attached. Therefore the more distinctive and “strong” a trademark is the better protection from infringement and unfair competition the trademark will receive.
Examples of trademarks are:

a. “Apple” - personal computer,

b. “Pepsi” - soft drink,

c. “IBM” - mainframe computer.

See: International Intellectual Property Law Global Jurisdictions
by Dennis Campbell and Susan Cotter 1996 published by John
Wiley and Son Ltd paragraph 9.3 pages 339-340.

2. Trademark Example.

Applying the above to your invention the very quite pool cleaner the Silient Skimmer would mean that for instance you would register the words “Silient Skimmer” as a trademark in the category to which pool cleaners relates.

3. Copyright.

Copyright protection subsists in original works of authorship. The works of authorship must be fixed in any tangible medium of expression. The works of authorship include the following categories:

1) literary works;

2) musical works, including any accompanying words;

3) dramatic works, including any accompanying music;

4) pantomimes and choreographic works;

5) pictorial, graphic, and sculptural works;

6) motion pictures and other audiovisual works;

7) sound recordings; and

8) architectural works.

See: 17 USC section 102(a).

4. Copyright Exclusions.

Copyright protection does not extend to any:

a) idea,

b) procedure,

c) process,

d) system,

e) method of operation,

f) concept,

g) principal or,

h) discovery.

This is regardless of the form in which it is described, explained, illustrated, or embodied in an original work of authorship.

See: 17 USC section 102(b).

5. Rights in Copyright.

The copyright owner is granted five exclusive rights by the Copyright Act. This covers all financially significant uses of a copyrighted work. This includes the following:

1) The right to reproduce and duplicate the work;

2) The right to make derivative works from the original;

3) The right to distribute copies of the work;

4) The right to perform the work; and

5) The right to display the work publicly.

Let's use a poem as an example.
The reproduction right prevents others on making unauthorised copies of the poem. The right to prepare derivative works prevents others from translating the poem. It also prevents them from adapting it into a motion picture.
The distribution right prevents the unauthorised sale, lease or transfer of copies of the poem.
The performance right prevents unauthorised public readings of the poem.
The display right prohibits unauthorised public projection of the poem.

See: International Intellectual Property Law Global Jurisdictions
by Dennis Campbell and Susan Cotter 1996 published by John
Wiley and Son Ltd paragraph 9.27 page 353.

6. Copyright Example.

As far as copyright goes it will subsist in your instructions on how to install and operate the Silent Skimmer.
Copyright also subsists in your technical or engineering drawings of your invention in this case the Silent Skimmer. For copyright to come into existence only a small amount of creativity is required. Copyright created after 1 January 1978 is valid for up to 50 years after you the author dies. After 1 March 1989 the requirement of a copyright notice is not necessary. It may be desirable.
Copyright in engineering drawings does not in general give the copyright owner the right to prevent a third party from creating and utilitarian object in accordance with the drawing. That is so long as no unauthorised reproductions of the drawings are made.
Engineering drawings of a highway sign cannot be copied without infringing the copyright therein. The copyright would not be infringed by a third party constructing a sign in accordance with the drawings.

See: Copyright Protection for Engineering Drawings by Arnold
B Silverman
http://www.tms.org/pubs/journals/JOM/matters/matters-9509.html. 2009/07/11.

Next time I hope to say something about trade secrets.

Recent case of T-Peg and Timberpeg East v Vermont Timber Works copyright infringement under the Architectural Works Copyright Protection Act was decided.

For a similar dicussion on intellectual property in the United Kingdom click here.

technorati.com

2009-07-10T08:07:00.001-07:00

qiy9n6237d

Intellectual Property in the United States Part 1.

2009-07-10T02:45:00.000-07:00

Intellectual Property in the United States.

Part 1.

1. Introduction.

So you have created this marvellous invention. How do you turn it into money? An invention forms part of your intellectual property. To exploit your intellectual property you have to protect it.
I do not suggest that you should try and do this yourself. This should be done by a qualified professional intellectual property attorney or lawyer. Before you however rush off to patent lawyers it would be advisable to educate yourself. You will then be in a much better position to instruct your intellectual property attorney. That is what I hope to achieve with this and forth coming articles.

2. A Division of Intellectual Property Rights.

Intellectual property rights in the United States generally can be devided into four categories. They are:
1. Patents;
2. Trademarks;
3. Copyright and;
4. Trade secrets.

Patents are further subdivided into:
1. Patents for inventions;
2. Patents for designs and;
3. Plant patents.

3. Patents.

4. A Patent for an Invention.

For a similar discussion on intellectual property in the
United Kingdom click here.

For a similar discussion on intellectual
property in the United Kingdom click here.

For a similar discussion on intellectual property in the

United Kingdom click here.

Obviously plant patents do not apply to your Silent Skimmer. I have included plant patents just for the sake of completeness. I hope next time to say something about copyright and trademarks. It is important to realise in order to effectively protect your invention you must make use of different

A patent for an invention is available to anyone who invents or discovers any:
1. new and useful process,
2. machine or,
3. manufacture, or
4. composition of matter or
5. any new and useful improvement thereof.
See: 35 USC section 101.
Invention means invention or discovery.
See: 35 USC section 100(a).

The term process means process, art or method. It includes a new use of a known process, machine, manufacture, composition of matter, or material.
See: 35 USC section 100(b).

5. Patent Example.

Let's say you invented a new pool cleaning device that is very silent. If you swim in a pool with this device then instead of the usual chukka chukka chukka you hear nothing. Only if you swim very close to this new pool cleaning device there is a very soft mmmmmmm. Let's call this new pool cleaning device the Silent Skimmer.

6. Novelty.

In order for the Silent Skimmer to be patentable it must be new.
Briefly as far as the formal condition or requirement of novelty is concerned the United States Code 35 in section 102 states that a person shall be entitled to a patent unless:
1. the invention was known or used by others in the United States or,
2. the invention was patented or described in a printed publication in the United States or a foreign country,
before the invention thereof by the applicant for the patent.
See: 35 USC section 102 (a).

It seems though that if the Silent Skimmer was known or used by others in a foreign country it will still be patentable in the United States.
Furthermore a person shall be entitled to a patent unless:
1. the invention was patented or described in a printed publication in the United States or a foreign country or;
2. in public use or
3. on sale in the United States,
more then one year before the date of the application for a patent in the United States.
See: 35 USC section 102(b).

7. Non-Obviousness.

A further condition or requirement for a patent is that the invention must be not be obvious. This is detirmined by a comparison between the subject matter sought to be patented and the prior art. The subject matter sought to be patented is your invention. The prior art can briefly be described as what was known at the stage when the invention was made that relates to the invention. The comparison between the subject matter and the prior art must not be obvious at the time the invention was made.
The person to whom it must not be obvious is to a person having ordinary skill in the art to whom the subject matter relates.
See: 35 USC section 103(a).

The Silent Skimmer must therefore not be obvious to a person having ordinary skill in the art of pool cleaning devices.

8. The Term of a Patent.

The grant of a patent shall be for a term which shall begin on the date on which the patent issues. The term shall end 20 years from the date on which the application for the patent was filed in the United States.
See: 35 USC section 154(a)2.

It takes about 2 years for a patent for a mechanical invention to be issued. This meansans that you will ordinarily have approximately 18 years to exploit your invention the Silent Skimmer.

9. A Patent for a Design.

A design patent is available for whoever invents any:
1. new,
2. original, and
3. ornamental design
for an article of manufacture.
The provisions relating to patents for inventions shall apply to patents for designs. That is unless otherwise provided.
See: 35 USC section 171.

Patents for designs shall be granted for a term of 14 years from the date of grant.
See: 35 USC section 173.

If your Silent Skimmer has a very modern futuristic housing containing the operational parts you would be entitled to a design patent for that housing.

10. A Patent for a Plant.

A patent is available for anyone who invents or discovers and asexually reproduces any distinct annual variety of plant. That includes:
1. cultivated sports,
2. mutants,
3. hybrids, and
4. newly found seedlings.
That is other than a tube propagated plants or a plant found in an uncultivated state.
The provisions relating to patents for inventions shall apply to patents for plants. That is except as otherwise provided.
See: 35 USC section 161.

11. The Rights of a Patent for a Plant.

The grant of a plants patent shall include the right to exclude others from:
a. asexually reproducing the plant, and
b. from using,
c. offering for sale, or
d. selling
the plant so reproduced throughout the United States.
It also includes any of the plant’s parts.
It also includes the right to exclude others from importing the plant so reproduced, or any parts therreof, into the United States.
See: 35 USC section 163. forms of intellectual property rights.