PATENT & TAX ADVANTAGE

Overview of Intellectual Property

By Curt Harrington



Patents, trademarks, copyrights and trade secrets all represent NEGATIVE rights. The negative rights are the right to prevent others from doing something in the particular area. Patents give the holder the right to prevent others from making, using and selling the claimed invention. A copyright enables the holder to prevent others from making copies or performing the copyrighted work. A trademark enables the holder to prevent others from using the same or a similar trademark for identifying the goods and services of the holder. A trade secret gives the holder of the trade secret, who takes reasonable steps to protect the trade secret, the ability to prevent others who wrongfully obtain the secret from using it.

Remember that positive rights, such as the right to manufacture, the right to adopt a name, the right to copy a literary work and the right to use a trade secret are never absolute. Usually these rights can affirmatively exist only to the extent that the holder of one or more of the negative rights grants you "permission" with regard to their intellectual property protected item. There may still be a myriad of other rights holders waiting in the wings to assert their intellectual property rights with regard to the item being manufactured, etc. For example, two patents can properly cover the same item. In the usual case, the patents will be of different scope, but the manufacture of the item will still require a license from both patent holders.

The following, in semi-outline form, is a short introduction of the categories of intellectual property and the aspects which may be protected.

Overview of Intellectual Property

Copyrights

What may be protected - literary works - musical works and accompanying words - audiovisual works, including motion pictures - sculptural works - pictorial, graphic and architectural works - sound recordings - pantomimes and audiovisual works

The power of copyright is especially effective in preventing the rote copying of a work. A work is a fixed (complete) form of authorship. By complete, it must have all of the component parts which make up the work. A computer program which does not run and has no utility is a good example of an incomplete project that is not a work.

Direct copying is the easiest form of activity to prevent. However, the test in copyright is one of substantial similarity. The specifics of such a test is a question of fact to be decided by a jury.

Rights in the copyright owner

These rights can be retained or licensed as the copyright owner sees fit. From these rights, the license agreement is crafted. License agreements can be as broad and open as any contract and can require a licensee to pay money or perform other duties in exchange for the license. The ability to exclusively perform the work is especially important for playwrights who receive royalties not only from the publication of their plays but also from the performance of their plays.

Problem areas

Works which do not rise to a minimum level are said to be non-original. Data works like columns of raw information may be so lacking in authorship as to be unregisterable. Designs which include only basic geometric forms may also be held to be non-original. Each case represents its own problem areas, but generally the more complex the work is, the more likely it is to be held to have the minimum amount of authorship.

Works made for hire can cause problems where one pays to have a work performed, but neglects to clearly specify who the owner of the work will be. If you contact an author, or designer, make sure that you contract for the work to be done, and insure that the resulting ownership is set forth explicitly.

 

Trademarks

Definition: Any word, name, symbol, device, or any combination thereof which is used in connection with goods or services to help consumers identify those goods and services as different from the goods and services of a competitor.

Filing for a DBA or permission to do business in the state vs. state and federal trademarks. In California, a DBA can be filed in the same county for several businesses using the same name. The filing is required so that a potential plaintiff will know who to sue. At least in California, the holder of the DBA has no significant rights except versus another entity if both are simultaneously applying for a state trademark.

Trademarks (goods) vs. Service marks (advertising)

There are two basic mechanisms for naming a business which have nothing to do with trademarks. The county DBA "doing business as" and state corporate filing is to insure that there will be a responsible entity doing business, and that the responsible entity is distinguishable from other entities. In other words, to be sure that no two entities, either locally or statewide have the same name.

Trademark rights accrue to goods and services based upon the theory that successful name recognition will follow increasing quality and excellence. Rights in a name begin with the use of the name. For this reason, later users can be foreclosed from using a name. The scope of the rights in a name depend upon how it is used. For example, the name "Exxon" is generally thought to be a coined mark, such that it would not be available for use, even for non-petroleum goods and services. Other marks may be much narrower, such that the use of a mark in one area will not prevent the use of the mark in other goods and service areas.

You "show" your use of the mark through specimens which reflect how the mark is used with the goods. The best way may be to impress the mark directly upon the goods. Tags and labels applied to the goods are another proper way to use the trademark. However, a use which is too greatly removed from a direct association with the goods may fail as a proper use.

Service marks are a different story. Since there are no "goods" upon which to affix a service, an advertisement is about the only way to show a connection between the service mark and the services to be associated with the service mark. Aside from the differences in which the use is shown, the application and examination procedure is about the same.

The steps in getting a federally registered trademark are generally:

As you can see, from the first use and filing followed by registration, incontestability can be achieved in about 6 1/2 years. Many things can stop the process, including a rejection by the Examiner, an opposition filed by another who believes he will be damaged by your registration, a petition to cancel the registration from others, and worst of all, forgetting about the trademark and allowing it to lapse by failure to file the Section 8 affidavit.

Trade Secrets

Definition:Information, including a formula, pattern, compilation, program, device, method, technique or process, that: (1)Derives independent economic value, actual or potential, from not being generally known to the public or to other persons who can obtain economic value from its disclosure or use; and (2)Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.Improper means, includes theft, bribery, misrepresentation, breach or inducement of breach of a duty to maintain secrecy, or espionage through electronic or other means. Reverse engineering or independent derivation alone shall not be considered improper means.

It is illegal to acquire a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means.

There is a companion definition in the penal code which makes trade secret theft a felony.

The key to protecting a trade secret is not only in keeping it secret, but the systematic steps and procedures you take to keep it secret. You could conceivably hide something in your drawer with the result that no one discovers it, however evidence of the locking of doors the assignment of keys and the segregation of personnel based on a need to know will be dispositive in determining whether you have acted to keep secret your valuable trade secret.

This area of law cuts a fine distinction between control of persons and their ability to use the knowledge gained from an employer, and a persons right to use their skills and knowledge, apart from the specifics of the trade secret, in a specialized area. This is carefully weighed by the courts, especially where the secret is related to the specialized area of knowledge.

Patents

Patentable Subject Matter

A.Machines, processes, compositions of matter; manufacture

B.Software and computer processes (after the State Street Bank case, software is a per se patentable category) The standards are continually expanding.

Processes and apparatus for practicing the process, and compositions of matter and processes involving compositions of matter are the two main areas of utility patents. A new, unexpected use for an old, known compound can still qualify for a patent. Most apparatus and process steps using the apparatus are somewhat intertwined, with new uses for old machines being rare.

Software Patents

As the role of computers, and the algorithms they manipulate, continues to expand, the impact of the traditional rule prohibiting the patenting of an algorithm, used in the past to reject computer based inventions, has become less onerous.

The guidelines for determining which inventions are patentable and which are not patentable have been continuously evolving. Current allowed cases deal with the minutae of how a computer processes information. This is cutting edge and always a stretch into new territory, since the patent office allowable output will always vary from Examiner to Examiner.  Since the State Street Bank Case,  followed by acquiescence of the courts and PTO, generally all types of software and business methods are patentable.  It still helps to characterize transactional inventions as an engineering system, and computer inventions as (A) algorithmic inventions which are mathematically open ended, such as fourier transforms and just about anything related to signal processing; and (B) software patents wherein the computer is configured as an independent machine which has real world inputs (temperature, pressure, sensing a signal, etc).

As a rule of thumb, the closer you get to software which will be used in your home computer without further modification, the more creative you must be in attempting to patent it, and more importantly the more creative you have to be in showing its newness and non-obviousness.  In some cases, particularly simple data manipulations, the invention may not be patentable primarily by reason of obviousness.



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