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South Texas College of Law Houston
Field, Ted L.

Ted Field, Patent Law, Fall 2011

· Types of IP Protection?

o Dr. Pepper

§ Dr.Pepper – trademark

· TM

o Word, name, symbol, device

o IDs and distinguishes good from those sold by others

o Indicates source of goods (even if source is unknown)

o Consumer protection device – allows consumers to know the quality

§ Allows them to purchase something that they know of the quality

o Lasts forever as long as you use it and defend it

§ The formula of the drink – protected by a trade secret

· Definition of a trade secret

o Information used in business that

§ Has commercial value from the fact of its secrecy AND

§ Is the subject of reasonable efforts to maintain its secrecy

o Can last forever if you keep it a secret

o Types of TS misappropriation

§ Theft or illegal acts (eg wiretapping)

§ Breach of confidential relationship (may or may not be contractual)

§ Other improper means

§ **State law cause of action

§ Copyright – the artwork on the bottle – could also be TM

· Copyright

o Protects

§ Original works of authorship

§ Fixed in a tangible medium

§ Of expression

· The whole bottle can be analogous to a sculpture and be protected

· The shape of the bottle if it’s not functioning it can be protected –

§ Why can’t you have patent and trade secret

· You have to disclose it – make it public

· More than one type of patent

o Utility patents

§ Can be on things like bottles

§ Can cover

· Process

· Machine

· Manufacture

· Composition of matter

§ Covers a functional part of the item

o Design patents

§ Doesn’t cover anything functional

· Foundations of IP

o Comes from the Constitution

§ Constitution doesn’t create patent law, just that Congress has power to create it

· Economic rationales of the US patent system


1. Introduction

a. 35 USCA § 101

i. §101 requires that an invention be useful to receive patent protection

ii. A patentable invention must be new

1. If not new, it lacks novelty and is denied patent protection by §102

iii. If the claimed invention is obvious to a person having ordinary skill in the art – it may be denied

1. §103 – judged from view of skilled artisan

b. Requirements for a patent

i. Novelty

ii. Utility

iii. An innovation not be anticipated by the prior art in the field

c. Bonito Boats, Inc. v. Thunder Craft Boats, Inc.

i. States may not offer patent-like protections to intellectual creations that would otherwise remain protected as a matter of fedl law.

ii. Art. 1, §8, cl. 8 of the Constitution gives Congress the power to “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”

1. Two powers in one

a. Copyright and (SCIENCE – all knowledge/Authors/Writings)

b. Patent (ARTS – similar to technology/Inventors/Discoveries)

2. Exclusive right – means a monopoly

a. Allows you to exclude others from encroaching

b. Doesn’t give an affirmative right – just a right to exclude others

3. Limited times – becomes public knowledge

a. Don’t want monopoly to last forever

b. Congress decides limited times

i. Now – 20 yrs from filing

ii. Before – 17yrs from issuance of patent

c. Copyright – life of creator + 70yrs

iii. Protection is offered to “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” (35 USC § 101)

1. Protection is also available to any “new, original, and ornamental design for an article of manufacture” (35 USC §174)

iv. A design must present an aesthetically pleasing appearance not dictated by function alone and must satisfy the other criteria of patentability

v. Novelty requirement provides (35 USC §102(a))

1. A person shall be entitled to a patent unless

a. The invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

b. The invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one yr prior to the date of application for patent in the US

vi. Pennock v. Dialogue – “If an inventor suffers the thing he invented to go into public use, or to be publicly sold for use, his voluntary act or acquiescence in the public sale and use is an abandonment of his right”

vii. The applicant whose invention satisfies the requirements of novelty, nonobviousness, and utility, and who is willing to reveal to the public the substance of his discovery and the “best mode of carrying out his invention” (35 USC §112) is granted “the right to exclude others from making, using, or selling the invention thru-out the US” for a period of 20 yrs (25 USC §154)

viii. Ultimate goal of the patent system is to bring new designs and technologies into the public domain thru disclosure

d. Origins of the Patent System

i. Venetian Republic – March 19, 1474

1. First true patent statute

2. Required

a. Invention be new

b. Useful

c. Reduced to practice

d. 10yr term

ii. Statute of Monopolies

1. Designed to proscribe monopolistic grants

2. Authorized issuance of letters patent

e. In re Bergy

i. The purpose of granting patent rights to inventors for their discoveries is to promote progress in the useful arts or technological arts, rather than in science or knowledge in general.

ii. Art. 1 § 8, cl. 8 and 18 – two grants of power

1. To establish a copyright system

2. To establish a patent system

f. The 1790 and 1793 Acts

i. Patent Act of 1790 created a board known as “Commissioners for the Promotion of the Useful Arts” to determine whether the invention or discovery was sufficiently useful and impt to deserve a patent

g. The 1836 and 1870 Acts

i. Patent Act of 1836 created a Patent Office that provided for the filing and formal examination of patent applications

h. The Paris Convention

i. Paris Convention for the Protection of Industrial Property – formed in 1884

1. 163 nat

ike plant variety protection

1. Plant Variety Protection Act (PVPA)

a. Allows the US to comply with the International Convention for the Protection of New Varieties of Plants

b. Provides for the issuance of plant variety protection certificates

c. Pertains to sexually reproduced plants

d. Fungi and bacteria = not eligible

e. Plant must be clearly distinguishable from known varieties and stable

f. Exception:

i. The “use and reproduction of a protected variety for plant breeding or other bona fide research shall not constitute an infringement” (7 USC §2544)

g. Grants farmers the right to plant new crops of seeds descended from protected seeds that were legitimately purchased

2. Plant variety protection certificates are administered by the Dept of Agriculture

a. Plant must be

i. New

ii. Distinct

iii. Uniform

iv. Stable

b. Term = 20yrs , 25yrs for trees and vines

k. Other Forms of Intellectual Property

i. Trademarks

1. Lanham Act

a. Defines a trademark as “any word, name, symbol, or device, or any combination thereof used to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown” (15 USC §1127)

2. Determination of whether a mark qualifies for trademark protection depends upon its classification as

a. Generic

b. Descriptive

c. Suggestive

d. Arbitrary

3. Marks which are ordinarily and naturally used to characterize a product – referred to as descriptive marks – may also not be protected unless they have acquired a level of distinctiveness called “secondary meaning”

4. Suggestive marks – those that do more than describe – are inherently distinctive and subject to protection

5. Trademark protection can never extent to the functional features of a product

6. Trademark infringement occurs when another person markets goods bearing a mark sufficiently similar to the trademark that a likelihood of confusion exists as to the source of the goods

a. Factors that inform the likelihood of confusion

i. Similarity of appearance of the marks

ii. Strength of the TM

iii. Consumer sophistication

iv. Competition btwn the goods

v. Similarity of sales and distribution channels

vi. Intent of the D

vii. Existence of actual consumer confusion

7. Allows ownership to result from public use rather than registration – TMS may be registered when they are employed in interstate commerce