IP SURVEY OUTLINE

Prof. Ochoa, Fall 2015

  1. COURSE OUTLINE
  2. INTRODUCTION
  3. Rationales for protection of IP
  4. Rationales for limitation of IP
  1. TRADE SECRET LAW
  2. Definition
  3. Misappropriation
  4. Acquisition by improper means
  5. Disclosure or use of Trade Secret
  6. Defenses
  7. Reverse Engineering
  8. Independent Invention
  9. Ownership
  10. Remedies
  1. PATENT LAW [35 USC ]
  2. Patent Prosecution
  3. Specification and claims
  4. Written description, enablement & best mode
  5. Patentable Subject Matter
  6. Statutory Requirements
  7. Utility
  8. Novelty & Statutory Bar
  9. Non-obviousness
  10. Exclusive Rights & Duration
  11. Infringement
  12. Defenses
  13. Design Patents
  1. COPYRIGHT LAW
  2. Prerequisites
  3. Originality and Fixation
  4. Idea/Expression and Merger Doctrine
  5. Copyright in Useful Articles
  6. Publication, Formalities, Duration
  7. Publication and Notice
  8. Registration
  9. Duration & Renewal
  10. Infringement
  11. Exclusive rights
  12. Copying and Substantial Similarity of Expression
  13. Moral Rights
  14. Fair Use
  15. Related State-Law Claims: Idea Submission and Misappropriation
  1. TRADEMARK LAW
  2. Trademark Subject Matter
  3. Fanciful, arbitrary and suggestive marks
  4. Descriptive marks and secondary meaning
  5. Generic terms
  6. Trade dress
  7. Functionality
  8. Use and Ownership
  9. Common-law priority
  10. Registration of mark on the Principal Register
  11. Advantages
  12. Incontestability
  13. Intent-to-Use applications
  14. Geographic scope of trademark
  15. Common-law rule
  16. Good-faith remote junior user
  17. Dawn Donut rule
  18. Trademark Infringement
  19. Defenses to Infringement
  20. Descriptive fair use
  21. Nominative fair use
  22. Trademark Dilution
  23. False Advertising
  1. RIGHTS OF PUBLICITY
  2. Common-Law Right
  3. Use of identity for commercial purposes
  4. Post-mortem rights
  5. Defenses
  6. First-sale
  7. First Amendment
  1. COMMON THEMES
  2. Ownership
  3. Exhaustion (First-Sale doctrine) and Parallel Imports
  4. Secondary Liability
  5. Remedies
  6. Injunctive relief
  7. Monetary relief
  8. Preemption
  1. INTRODUCTION
  2. Sources of Authority
  3. Constitution: Art. I, § 8, Cl. 8  Patent & Copyright
  4. “To promote the progress of Science and the useful Arts, by securing for limited times to Authors and Inventors the exclusive rights to their respective writings and discoveries.”
  5. Federal Law
  6. Patent: 35 U.S.C.
  7. Right of inventors – 20 yr period
  8. Exclusive right = monopoly
  9. Copyright: 17 U.S.C.
  10. Right of Authors, Publishers & Consumers – life of author + 70 yr
  11. Original works of authorship
  12. Exclusive right to produce
  13. Trademark: 15 U.S.C. + State Law
  14. Law of brand names and logos – anything used to distinguish the goods and services of one business from another
  15. False advertising
  16. Indefinitely as long as business is using
  17. State Law
  18. Trade Secret
  19. Unfair competition – common law tort (i.e. false advertising, trade secret misappropriation and trademark infringement originated here but is now codified under federal law)
  20. Right of Publicity
  1. Rationales for Protection of IP
  2. Patent & Copyright
  3. Incentive -- financial incentive to create things and protect them from free-riding
  4. Natural right/ unjust enrichment -- the creator deserves to profit from their creation
  5. Trademark = consumer protection
  6. Prevents confusion in relevant markets
  7. Protects good will of producer
  1. Rationales for Limitation of IP
  2. Free competition -- provides goods at the lowest possible prices
  3. Protection of public domain
  4. Freedom of speech (copyright and trademark)

** Where legislation is ambiguous, refer to these policy considerations to justify a certain outcome

  1. INS v. Associated Press
  2. Hold: unfair competition by ∆, as two competing parties are endeavoring to make money and ∆s are misappropriating π’s quasi property interest in the news it collected and misrepresenting it as their own. (justified as “natural right”)
  3. Limitation: only postpones participation of ∆ in distribution and reproduction that ∆ has not gathered, and only to the extent necessary to prevent competitor from reaping fruits of π’s efforts and expenditures
  1. Stanley v. Columbia Broadcasting System, Inc.: to insure free trade in ideas the monopoly created by copyright is limited to the arrangement and combination of ideas – the form, sequence, and manner in which the composition expresses the ideas.
  1. Sears, Roebuck & Co. v. Stiffel Co.: A State may not, consistently with the Supremacy Clause, extend the life of a patent beyond its expiration date or give a patent on an article that lacked the level of invention required for a federal patent. State law of unfair competition cannot override the federal patent law.
  1. Trade Secret Protection
  1. State Law – but 47 states have adopted Uniform Trade Secret Act
  1. Steps of Analysis
  2. Does the information or idea at issue qualify as a trade secret; AND
  3. If so, is the ∆’s acquisition, disclosure, or use of it prohibited under one of the theories of improper means or misappropriation?
  1. What are the secrets?
  2. Trade Secret: information of any type (including formulas, recipes, patterns, computer programs, databases, and methods) that –
  3. Derives independent economic value from
  4. Not being generally known to, and not being readily ascertainable by proper means, by other persons who can obtain economic value from its disclosure or use; and
  5. Is subject of efforts that are reasonable under the circumstances to maintain its secrecy
  6. Factors to consider in determining existence of TS:
  7. The extent to which the secret is known to other
  8. Extent of efforts to keep it secret (i.e., non-disclosure agreements, how effective measures will be, limited to need-to-know)
  9. Ease to which it could be acquired by others
  10. Value of the secret
  11. Cybertek: Software protectable under TS doctrine, given appropriate facts and circumstances
  12. Life insurance software constituted a tradesecret because the combination of concepts as developed and utilized in its system went beyond general information known in computer industry.
  1. Was there misappropriation or improper means?
  2. Misappropriation [UTSA § 1(2)]
  3. Acquisition by improper means; OR
  4. Disclosure or use of a TS of another w/o express or implied consent by a person who
  5. Used improper means to acquire knowledge of the TS; OR
  6. At the time of disclosure or use, knew or had reason to know that his knowledge of the TS was –
  7. Derived from or through a person who had utilized improper means to acquire it;
  8. Acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use; or
  9. Derived from or through a person who owed a duty to the person seeking relief to maintain its secrecy or limit its use; or
  10. Before a material change of his position, knew or had reason to know that it was a trade secret and that knowledge of it had been acquired by accident or mistake.
  1. Improper Means [UTSA § 1(1)]: generally, those that are independently unlawful -- includes theft, bribery, misrepresentation, breach, or inducement of a breach of duty to maintain secrecy, or espionage through electronic or other means
  2. DuPont v. Christopher: broader view of improper means including anything that violates the generally accepted principles of commercial morality and reasonable conduct.
  3. Hold: Aerial photography from whatever altitude, is an improper method of discovering the trade secrets exposed during construction of the DuPont plant  π may prohibit disclosure.
  4. This is an example illustrating that improper means does not have to be independently unlawful
  5. Breaches of Confidence
  6. Finding a duty of confidentiality, or duty to maintain secrecy. Look for:
  7. ∆ may have a duty by virtue of her relationship to the π Traditional fiduciary relationships s/a partnership and joint venture relationships, or attorney-client relationships
  8. Contracts implied-in-fact and implied-in-law
  9. Express contractual provision
  10. Third-Party Liability: To be liable, persons obtaining a TS through an intermediate source, rather than directly from the π, must have notice, or reason to know, that the information is a TS and was obtained or is being disclosed through improper conduct or a breach of confidence.
  1. Inevitable Disclosure
  2. Pepsico v. Redmond: threatened misappropriation can be enjoined where there is a high probability of inevitable and immediate use of the TS  ∆’s new employment will inevitably lead him to rely on π’s TS.
  3. Hold: π injunction granted – the particularized plans/processes developed by π and disclosed to ∆ while under employment, which are unknown to the industry, would inevitably be used as ∆ launches Gatorade and Snapple’s new plan know exactly how competitor will price, distribute and market drinks
  4. Problems with Doctrine:
  5. Creates a de facto non-compete and runs counter to public policy favor employee mobility
  6. Covenant is imposed after the employment contract is made and therefore alters the employment relationship w/o employee’s consent
  1. Defenses
  2. Proper means = independent invention or reverse engineering, but ∆ has BOP
  3. If ∆’s (or its source’s) means of obtaining the t/s are “proper”, and there is no duty of confidentiality, the ∆ is free to use or disclose the t/s with impunity.
  4. This is where t/s law differentiates from patent law – t/s offers no protection for work that has been disclosed to the public.
  1. General Employee Knowledge & Skill
  2. RULE:employee is free to take general skills and knowledge acquired in the course of employment and use it in later pursuits.
  3. Fleming Sales v. Bailey: RV manufacturer exec left and joined competitor
  4. Hold:MSJ for ∆  could have had a covenant not-to-compete
  5. General contact information of customer’s that is otherwise publicly available and readily ascertainable is not protectable as trade secrets; AND
  6. Business experience and knowhow as reflected in information π attempts to conceal (names, contact info and purchase history of customers), however valuable, are not something the law protects from the rigors of the market-place.
  7. Cf: Webcraft - ∆ (previously employed by custom printing co.) took rolodex of customers which took time and effort to create (not available to stranger), signed a non-disclosure agreement, took price information and quotes
  1. Protection for Non-Trade Secrets: Restrictive Covenants
  2. RULE: generally, restrictive covenants will be enforced only if they are reasonable with respect to the coventee, the coventor, and the public interest
  1. Covenants Not to Compete: employee agrees not to compete with the employer after leaving
  2. RULE: whether reasonably necessary to protect employer from improper or unfair competition –
  3. Does the employer have a legitimate business interest needing protection?
  4. Is the restrictive covenant reasonable in scope?
  5. Reasonableness: time (<2 years), place/location, scope of competition restricted, etc.
  6. Strictly construed against employer & employer bears burden of demonstrating that restraint is reasonable
  7. CA Business and Prof. Code: every contract by which anyone is restrained from engaging in lawful profession, trade or business of any kind is to that extent void
  1. Nondisclosure Agreements: employee agrees not to disclose trade secret of other confidential information of the employer during and after her employment
  2. RULE: NDAs that unreasonably restrain competition or unduly hinder an individual from pursuing his chosen livelihood will be unenforceable
  1. Remedies
  2. Injunction: π must demonstrate irreparable injury and an inadequate remedy at law in order to obtain an injunction
  3. Injunction is terminated wen the trade secret has ceased to exist, but may be continued for an additional reasonable period of time in order to eliminate commercial advantage that otherwise would be derived from the misappropriation. [UTSA § 2(a)]
  4. Damages
  1. Utility Patents
  2. Criteria for Patents
  3. § 101: Useful (utility) must be patent eligible subject matter
  4. § 102: Novel
  5. § 103: Non-obvious
  1. Patent Prosecution
  2. Procedural Criteria: A patent application must include -
  3. A written specification (§ 112)
  4. A technical drawing (§ 113)
  5. Claims; and
  6. An oath or declaration (§ 115)
  7. EXECPT: Inventors who wish to obtain an early filing date may file a “provisional application”  must file a written description of the invention, the drawings, but need not submit claims or an oath/declaration.
  1. Specification and Claims [§ 112]
  2. Specification includes:
  3. An enabling description – a written description of the invention that is sufficient to enable a person having ordinary skill in the art (PHOSITA) to practice the invention. The invention need not be reduced to practice.
  4. Technical drawings
  5. Explaining the invention and why it’s better than prior art
  6. Claims: explaining in legal language the scope of the invention in elements
  7. Each claim is evaluated separately – family of designs covered by the claim must include at least one member that is disclosed in the detailed part of the patent application
  8. “Consists of” = limited to elements; comprises = includes, but not limited to
  9. In order to examine validity, the claim is compared to prior art – family of designs covered by the language of a valid claim must not include any design disclosed in the prior literature
  10. Written description, enablement, and best mode: best known mode is still a requirement in the statute, but failure to include best known mode is no longer grounds for invalidation
  1. Procedure
  2. Submit application
  3. If denied, may appeal to PTAB
  4. May appeal PTAB judgment directly to federal circuit, or to district court for N.D.V.A. if you want to introduce new evidence
  1. Patentable Subject Matter [35 U.S.C. § 101]: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
  2. Legislative history: anything under the sun that is made by man – humans excluded. Statues includes:
  3. Processes, machine, manufacture, or composition of matter, OR
  4. Any improvement thereof.
  5. SCOTUS:
  6. Patent eligible: a non-naturally occurring manufacture or composition of matter – a product of human ingenuity having distinctive name, character, and use.
  7. Manufacture: the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.
  8. Composition of matter:all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids.
  9. EX: Diamond v. Chakrabarty: π’s genetically-engineered micro-organism is patentable subject matter – not nature’s handiwork, but his own joining of two separate plasmids to create one organism (Cf: Funk – combo of two things that stay separate)
  1. Patent ineligible: laws of nature, physical phenomena, mathematical formulas or algorithms, and abstract ideas are not patentable.
  2. Laws of Nature
  3. Mayo: method for measuring metabolites in bloodstream to determine how your body processes a drug and how much drug is needed for effective treatment is a “law of nature” and not patentable subject matter
  4. AMP v. Myriad: Isolated DNA segments are naturally occurring = not patentable
  1. Abstract Ideas
  2. Alice Corp.
  3. Hold: abstract idea of intermediated settlement as performed by a generic comp. was not patentable and generic method claims failed to transform the abstract idea
  4. Steps of Analysis: A court must first identify -
  5. The abstract idea represented in the claim, and then
  6. Determine whether the balance of the claim adds “significantly more” (Routine, conventional, post-solution activities don’t count)
  7. Distinguish between patents that claim the building blocks of human ingenuity and those that integrate the building blocks into something more, thereby transforming them into a patent-eligible invention
  8. ** Many software patents threatened by this decision
  9. Bilski: ineligible -- “[h]edging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.”
  10. Flook: ineligible -- A computerized method for using a mathematical formula to adjust alarm limits for certain operating conditions (e.g., temperature and pressure) that could signal inefficiency or danger in a catalytic conversion process
  11. Diehr: eligible --computer-implemented process for curing rubber was patent eligible b/c it used a thermocouple to record temperature measurements inside the rubber mold, which is an improvement to an existing technological process that the industry had not been able to do
  1. Misc. Cases
  2. JEM Ag Supply v. Pioneer: sexually reproduced plants may be subject of a utility patent, even though they may also be protected through a certificate of plant variety protection
  1. Standards of Patentability – Substantive Patent Requirements
  2. Steps of Analysis
  3. Determine whether the pre-AIA provisions or post-AIA previsions apply.
  4. If pre-AIA 
  5. Determine who was the “first-to-invent” and when
  6. Compare this date to the relevant statutory requirements
  7. If post-AIA 
  8. Determine who was the “first-to-file” and when
  9. Compare this date to the relevant statutory requirements
  10. Conclude who is entitled to the patent
  1. Determining What Standards to Apply
  2. If application was filed before March 16, 2013  old version of § 102 & § 103 apply
  3. Old sections assess novelty and obviousness at the time of invention first-to-invent
  4. Invention: conception + reduction to practice
  5. Conception: when the inventor formulates a definite, complete idea of the operative invention, so that all that remains is the physical realization of it
  6. Reduction to practice: (a) actual = building a physical prototype and ascertaining that it works; or (b) constructive = filing patent application
  7. Exception: First to reduce invention to practice is presumed to be the inventor, but first to conceive may rebut presumption if he/she was reasonably diligent in reducing it to practice (2011 Exam – 3 weeks between conception and reduction is reasonable).
  8. If no date is given, the inventor is presumed to have reduced the invention to practice on the date of filing.
  9. If application was filed on or after March 16, 2013  new sections apply
  10. New sections assess novelty and obviousness at the time of application first-to-file
  11. Effective filing date: defined as the actual filing date
  1. Utility: § 101 - “Whoever invents or discovers any new and useful process..”
  2. Well-Established Utility:
  3. If a person having ordinary skill in the art (PHOSITA) would immediately appreciate why the invention is useful based on the characteristics of the invention; AND
  4. The utility is specific, substantial, and credible.
  5. Brenner v. Manson: a process is not patentable unless we know the use of the product it creates
  6. Process of creating steroid not patentable until we know what steroid is good for
  7. Unless and until a process is refined and developed to the point where there is specific benefit derived to the public, there is insufficient justification for permitting an applicant to engross what may prove to be a broad field
  1. Novelty & Statutory Bar: § 102
  2. Steps of Analysis
  3. Determine filing date
  4. If filed before 3/16/13  use pre-AIA rules
  5. If filed after 3/16/13  use revised-AIA rules
  6. Go through each sub-section to determine whether invention qualifies as novel
  1. Novelty:Lack of novelty (“anticipation”) exists if there is a single prior art disclosure which contains all elements of the claim arranged in the same manner must compare claims to every section of prior art, cannot combine claims (NetMoney)
  2. NetMoneyIn,Inc.: The IKP reference setting forth standard of how payments may be accomplished “efficiently, reliably, and securely” did not disclose all the limitations recited in ∆’s claim  error to find anticipation by combining different parts of the separate protocols in the IKP reference.
  3. Courts may recognize “inherent anticipation,” where the reference does not expressly disclose all the elements of the later invention, but the non-express elements are nonetheless necessarily present in the thing described/ disclosed in the reference
  1. Pre-AIA: applications filed BEFOREMarch 16, 2013
  2. (a) Patent denied if prior to invention by applicant, the invention was:
  3. “Known” in the US
  4. Invention was fully disclosed – sufficient to enable a PHOSITA to practice the invention; AND
  5. Accessible to the public (opposite of secrecy).
  6. “Used” by others in the US
  7. Invention was actually reduced to practice; AND
  8. Was accessible to the public (i.e., absence of affirmative steps to conceal)
  9. The subject of a patent anywhere in the world, OR
  10. Patents become part of prior art on the date of issuance, if minimally accessible to the public
  11. Was revealed in a “printed publication” anywhere in the world
  12. Publication must be fixed in a tangible medium AND made accessible to the public
  13. (e): Patent denied if invention disclosed in a U.S. patent application pending on the date of invention and later either published or granted.
  14. (f): Patent denied if applicant did not invent the invention
  15. (g): Patent denied if prior to A’s invention, another person made the invention in the U.S., or another person establishes in an interference that he made invention abroad prior to the applicant’s invention, if the invention not abandoned, suppressed, or concealed.
  1. Statutory Bar Provisions
  2. (b): Patent denied if > 1 year before date of filing, the invention was in public use or on sale in the U.S., or was patented or described in a printed publication anywhere in the world.
  3. Focuses on the activities of anyone (including the applicant) > 1 year before the date of filing
  4. Public use: Use by the inventor for commercial purposes, but not for private enjoyment.