Intellectual PropertyPatents & Trademarks

TC 310June 19, 2008

Patent Background

Patent Clause is in Constitution Power of Congress Needs statute to have effect

Protects products, processes Allows a temporary monopoly

Make, use, sell Incentive to innovate

Process

Patent Statutes create Patent Office Application necessary

Provisional Formal

Patent Office examines New Useful Nonobvious

Novelty (newness)

Something brand new Make use of prior knowledge

Cite literature Inevitableness

Conflicts over Priority Conception Reduction to practice Due diligence

Utility

Must have some use of value Novelty/ curiosity fails test Something can be novel, no utility Specific Utility Substantial utility

Research process no Effective drug, not on people, yes

Nonobviousness

Similar to novelty BUT, now we deal with inevitable Fail this test if

Others could do it easily Indicated as possible

Still use old inventions Add synergy is key

Abusing Patents

Double Patents Break up invention Several patent protections Terminal Disclaimer used instead

Only 1 Patent Ever Allowed per invention No extensions

Infringement

Two-step process Examine patent Apply description to object

Do not need to be identical, just similar Can apply to sub-parts of patent Ignorance not a defense

Patent holder must make infringer aware

Telecom Patents

Laws of Nature not patentable Includes algorithms

Processes using laws of natures are What is patentable?

Software Video game hardware Infrastructure devices Online processes (facebook example)

Trademarks

Unlike Patents, Trademarks are purely statutory Problems with federalism Lanham Act of 1946 Cover only Interstate matters

Serves to identify producer, market producer

Rules for Trademarks

Must be in use before protected Can expire

Federal registry of trademarks This is optional

Distinctiveness Marks must be sufficienty different

Loss of Protection

Abandonment Discontinue use, no intent to resume

3 years Not changing to remain distinctive

Excused abandonment Discontinued, but want to resume Economic situations Burden is on users

Infringement

Confusion is the standard Similarity

Sound, connotation, appearance, goods, “trade channels”

Conditions of sale Impulse v Considered

Actual confusion Amount of time, similarity of goods

Telecom Trademarks

Importance in Telecom Use of AT&T name by Cingular Services very similar, name matters

Use of URLs Want trademark to match URL Willing to pay?