Select Page

Patent and Trademark Law
University of California, Hastings School of Law
Lefstin, Jeffrey A.

Patents and Trade Secrets with Jeff Leftsin
In order to qualify for patent protection, an invention must be
new (novel – invention is not fully anticipated by a prior patent, publication or other knowledge within the public domain),
useful (invention is operable and provides a tangible benefit), and
must not be obvious to a person having ordinary skill in the art (objective test)
·         Copyright law extends to pornography because copyright law is not concerned with the morality of the subject matter
·         Trademark (in stark contrast to copyright) – In trademark, the Lanham Act denies trademark-ability to scandalous or disparaging things. E.g., the trademark for the Wa. Redskins was revoked b/c the symbol was disparaging to Native Americans.
·         Patent law doesn’t make morality judgments. 
Copyright: The legal right granted to an author, composer, playwright, publisher, or distributor to exclusive publication, production, sale, or distribution of a literary, musical, dramatic, or artistic work.
Patent: A grant made by a government that confers upon the creator of an invention the sole right to make, use, and sell that invention for a set period of time.
In order to get a patent, an inventor must undertake “patent prosecution” at the U.S. Patent and Trademark Office (PTO).
Paris Convention: Administered by the World Intellectual Property Organization (WIPO), countries that sign this patent harmonization treaty agree to treat foreign inventors no worse than domestic inventors so long as the foreign inventors are nationals of Paris Convention signatories. The “Independence Principle” established by the Paris Convention meant that patent enforceability in one nation was not contingent upon the enforceability of the patent in a separate nation.
American Inventors Protection Act (AIPA) of 1999 introduced, inter alia, the following innovations:
·         Infringement defense to first inventors of business methods later patented by another
·         Extension of patent term in the event of processing delays at PTO
·         Mandate for publication of certain pending patent applications
·         Provision of optional inter partes (between two parties) reexamination procedure
European Patent Convention (EPC) establishes a single authority (The European Patent Office or EPO) which permits an inventor to file in one office and get several national patents. The EPC doesn’t displace individual national patent regimes, but exists alongside them as an alternative route for obtaining IP protection.
Luxembourg Community Patent Convention (CPC), if it ever becomes ratified by Europe’s nations, will provi

s decision that the patented invention presents a patentable advance over previous known technology
·         The term of the patent
·         An individual who can be contacted for purposes of licensing or obtaining further technical information
Design Patent (Ornamental Design, patent # preceded by “D” like D123,456)
Design patents can be awarded for “any new, original and ornamental design for an article of manufacture.” The design may be patented only if it is embodied in an article of manufacture (furniture, tools, shoes, etc.). The design must not be dictated by the performance of the article; it must be primarily ornamental or it is ineligible for design patent protection. Design patent protection will not be extended unless an application is filed with the PTO. Design patents are generally subject to all the provisions applicable to utility patents, including originality and novelty. The “non-obvious” standard for a design patent is, “the designer of ordinary capability who designs articles of the type presented in the application.” Term limit is 14 years.