PROFESSOR CARRIER INTELLECTUAL PROPERTY FALL 2013
PHILOSOPHICAL PERSPECTIVES
· PROPERTY V IP
o Property- tangible possession, has exclusivity, rivalrous (one use rivals another)
o IP- non rivalrous use, can’t exclude, non-exclusive, non-rivalrous
o no ip protection=no incentive for invention/creation
§ addresses public good nature of info
o harms- monopoly, pricing, prevents improvements and followup inventions, less availability, limits on free speech
o want to balance between protection and public good
· PATENT
o 1ST Claim-describes it (pen w/rubberband and string)
o 2nd claim- method (steps for attaching rubber band)
o PTO looks for
§ novelty (new)
§ subject matter
§ non-obvious
§ enablement (others looking at patent could do it)
§ usefulness (utility)
o Exclusive right to make, use, sell for 20 years and enforce it w/injunction and/or damages
§ deals w/public good nature of info (nonexclusive and nonrivalrous)
· COPYRIGHT
o idea vs expression
§ idea is common, the expression is protectable
o defense
§ fair use
o lasts for author’s life plus 70 years
· TRADEMARK
o promotes integrity of the market and stop consumer confusion
§ not to promote creating more logos like patent/copyright
· TRADE SECRET
o has to be secret
o reasonable effort to keep it secret
o taken by misappropriation (unfair/inappropriate conduct)
o was valuable (low bar)
o encourages creation and also punishes bad behavior
· LABOR THEORY
o John Locke
o whatever you mix with your labor with becomes your property
§ PROVISO: must leave ENOUGH and AS GOOD for others
§ spoilage- cant take more than you need that it would spoil
o Applies to IP
§ you create idea, you own it
§ proviso ok b/c not exclusive
· But IP conflicts with proviso bc introduces exclusion and so not enough left for others
o Nozick- what are you adding when multiple add/contribute to it (tomato juice in the ocean example)
o Spoilage- in IP? maybe if you sit on IP and don’t use it when others would or could
o Labor theory- basically you worked hard on something and so you deserve it and deserve to have what you did
· PERSONHOOD THEORY
o Hegel, later Radin
o as a person you define yourself by relationship with the environement
o things of sentimental value vs market value
o how applies to IP
§ taking an idea is non-rivalrous so not much of a loss bc you still possess the idea
o copyright probably closer to personhood than a patent (more of an expression/sentimental/personal)
o labor theory= you’re entitled to what you create bc its fair, personhood= you’re entitled to what you create bc its essential to who you are
· UTILITARIAN THOERY
o look at cost of distribution
o maybe award system could supplement or replace patents, ppl incentivized to make things that work
o want balance btwn incentive and limiting dissemination
o could calibrate protection to how much R and D it took instead of flat term of years
o most important one for the US today
· TRADE SECRET
· ELEMENTS OF TRADE SECRET
o Subject matter must be info meant to be protected AND not generally known to all
· any valuable info if capable of adding economic value
o secret and valuable
· not known AND not knowable
o P must take reasonable precautions under the circumstances to keep it secret
· consistently diligent in protecting info
o D acquired secret wrongfully- MISAPPROPRIATION
· deception, skullduggery, or outright theft
· ii. pre-existing obligation to P not to disclose
· explicitly from contract OR implicitly from implied duty (employee is implied duty) (public policy can defeat)
· iii. Acquisition OR disclosure/use
· Acquisition= objective or subjective
· disclosure/use= improper acquisition deriving from misappropriation, accident/mistake
· TRADE SECRET THEORY
o Utilitarian (encourage good)
· encourage investment in that info
· ii. trade secret as protected property (IP)
o Tort Theory (deter bad)
· contract basis, can arise out of duty explicit in a contract
· ii. punish and prevent illicit behavior, uphold reasonable commercial standards
· SUBJECT MATTER
o =Metallurgical Indus. v Fourtek=
§ *RULE*- Process taken as whole may be a TS in certain industries
· ii. limited disclosure doesn’t ruin it, like for economic purposes
o doesn’t need to be novel like patent, just not generally known or readily ascertainable to the competition in an industry
· not everyday knowledge
o 6 factors to consider under Restatement of Torts
· i. extent info known outside of biz
· ii. extent employees and others involved know
· iii. extent measures taken to guard security
· iv. value of the info to biz and competition
· v. effort or $ in developing the info
· vi. easy or hardness to get the info properly or duplicated
o info “known” or just knowable to not be a TS?
· usually must be actually known to lose protection as TS
o Broad TS scope in this view
· UTSA: not known and not knowable to be a TS
· ii. California and Rohm & Haas cases:
illegal things
o UTSA- only TS if not known and not knowable
§ if its secret but knowable then it is NOT a TS
o reasonable disclosure/limited disclosure ok for TS, some needed practically for biz
o customer list can be a TS but also don’t want to limit a person’s personal network
PATENT
· PATENT REQUIREMENTS
o 1) Subject Matter
§ broad interpretation
§ abstract ideas, physical phenomena, laws of nature NOT patentable
o 2) Novelty
§ no identical prior invention
§ cant be made before, sold more than a year before patent app filed, or otherwise DQ’d by prior use/knowledge
o 3) Utility
§ minimal, only denied if absolutely no practical use
· one exception: pharma bc lab promise may be enough to show utility in treating people
o 4) Nonobviousness
§ “nontriviality”, MOST IMPORTANT, ultimate condition of patentability
§ measures tech accomplishment of inventor
· big enough tech advance over prior art?
o cant be a trivial step forward
o 5) Enablement
§ sufficient description that one ordinarily skilled in the art could make and use it
§ benefit public gets from the patent “bargain”
· PATENT RIGHTS
o Claims
§ define boundaries of prop right the patent gives
§ precise legal definition of the invention
o Independent Claims
§ don’t refer to other claims
o Dependent claim
§ incorporates all limits of claim it depends on
o Open Transition
§ phrase like “comprising”: covers devices that include all elements listed PLUS any additional ones
o Closed Transition
§ phrase like “consisting of”: DOES NOT cover devices with additional elements
o Patent gives right to exclude others from: making, using, selling, offering for sale, or importing claimed invention for a specific term of years
§ lasts for 20 years from when patent app filed (so 20 years minus time spent in application process
§ Negative Right: doesn’t grant affirmative right to do anything, AND patent may be covered by an existing patent
· inventor then barred UNLESS broad patent holder authorizes use
o “blocking patents”
o Presumption that patent is valid
