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Intellectual Property
University of Mississippi School of Law
Myers, Gary




I. Overview

A. Constitutional Provision

a. Art. I, § 8 : The IP Clause

i. “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.”

b. Purposeàcreates some benefit for and hopefully improvement of the public welfare.

B. 3 Justifications

a. Incentive Theory

i. Must give ppl reward for creating/developing new works considering the cost of developing and creating new products.

ii. Inventors have right to make profit after recouping research losses, but we don’t want to give them the perpetual right to exclude competition à where limited time grant comes in.

1. At the end of limited time, generic products can enter the mkt and drive prices down (prescription drugs)

iii. Provides reward for inventors/authors while still providing benefits of inventions/works to the public.

b. Natural Rights Theory

i. Each person is entitled to the fruits of his labor; rather than focusing on benefit to society in having ppl create new products.

ii. Believes in stronger/longer lasting protection (no expiration of patents)àthis is slowly coming to fruition via the widening in scope of IP and adoption of new treaties.

iii. Not much support for this under Const.

c. Disclosure Theory

i. Without incentive, you might be tempted to hide invention.

C. Considerations for every Claim – HOW TO ORGANIZE EXAM ANSWERS

a. Type

i. What type of right is in question?

b. Validity

i. Is there an enforceable right?

ii. Does item in question have right characteristics under TM/patent/copyright to qualify for protection?

c. Ownership

i. How many entities are making use of the TM and who gets the right?

ii. Whose ownership claim is superior? (works for hire, and if you work for a company)

d. Infringement

i. Was the right infringed upon?

ii. Is there a violation of the IP right, what is the scope of the rights that you have and did D infringe upon those exclusive rights

e. Defenses

i. Determine whether infringing party has valid defense to justify their infringement against a valid owner of IP.

ii. Ex: Fair Use

f. Remedies

i. What relief is available to P?

D. Balance throughout all IP areas

a. IP law tries to balance reward/incentive of the creator with public’s interest in gaining access to the info otherwise protected.

b. Inventor gets legal monopoly/exclusive right, but at some point idea falls into public domain.

A. Trade Secrets

1. State law, no federal TS protection.

2. One of principal ways new inventions are protected.

3. Can encompass material that might be within scope of patent or copyright law.

a. Companies make use of trade secret law during prelim stages of product development then eventually get patent protection for the product, or

b. Might claim patent protection for aspects that will be apparent/easily reverse engineered upon sale; and retain TS protection on aspects of the manufacturing process that aren’t readily reverse engineered.

4. Requirements for Establishing Protected Trade Secret:

a. Info derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use.

1. Focuses on the kind of info claimed to be TSàif it gives firm an adv over competitors who don’t have it, will likely qualify as TS.

b.Firm possessing TS info must make RS efforts to maintain its secrecy/confidentiality.

1. Focuses on affirmative steps taken by a co. to protect its trade secrets.

5. Minuteman, Inc. — “Stripper ’76” formula for furniture stripping business

a. 6 factors to determine if info is TS:

1. Extent to which info known outside of the business.

2. Extent to which it’s known by ee’s and others involved in the business.

3. Extent of measures taken to guard the secrecy of the info.

4. Value of the info to P and his competitors.

5. Amt of effort/money expended in developing the info.

6. Case/difficulty with which the info could be properly acquired/duplicated by others.


1. Info not readily ascertainable.

2. Economic value à competitive advantage

3. RS efforts to maintain secrecy

i. These combine to = TS.

6. Ways Infringement Occurs

a. Breach of Confidential Relationship – Lamb-Weston, Inc, Curlicue fry blade case

1. Indiv has obligation, express/implied, to maintain secrecy of the info, and they’ve violated it.

b.Improper Means Used to Obtain TS.

1. DuPont –Ds not duty bound to P; but actions they took were deemed improper means under UTSA.

2. Note: Once a co takes RS secrecy measures, any attempt to overcome them likely deemed improper means.

c. Receiving TS info when you know/should know it was Impermissibly Obtained.

1. Usually indiv person who breaches TS, in order


3. Manufacture (product of)

4. Composition of matter

C. Requirements for Patent Protection:

1. Novelty § 102(a)

a. Invention NOT novel if it’s:

1. Known or used

2. in the US (in general public);

3. Patented or

4. Printed publication (anywhere in the world)

a. If you can find it on internet, likely that you’ll be prevented from patenting invention. More things now fall into this “printed publication” factor.

b.To satisfy novelty requirement, must meet ALL 4.

c. In Re Borst

1. If information is known in a way that’s accessible to the public, then it cannot be patented.

d.Paulik v. Rizkalla

1. First to invent gets patent as long as he didn’t conceal/suppress/was spurred by someone else to resume his work.

2. Note: Most other countries use “first to file” rule.

2. Nonobviousness § 103

a. Must be different enough from what has existed; not just normal progression of technology, but rather an inventive step.

b.Cts differ in evaluation of this factor.

c. Graham v. John Deere Test:

a. Scope and content of prior art

i. State of knowledge/info before invention.

b. Level of ordinary skill in the prior art

i. If invention would be obvious to person having ordinary skill in the art, patent is invalid.

c. Difference btw claimed invention and prior art

i. Compare prior art with claimed invention.

d. Secondary Considerations (‘tiebreakers’ if still unsure after above)

i. Commercial success

ii. Long felt but unsolved needs

iii. Failure of others

d.Federal Circuit’s Nonobviousness Test

1. TSM

a. Teaching

b. Suggestion

c. Motivation

2. Can we look at prior art and find any TSM that would solve this problem?

a. If yes, invention is obvious and patent is invalid.

3. Usefulness

a. Utility

1. Product or process must be refined and developed to the point of deriving a public benefit (a specific utility).

a. Remains unclear if business methods/processes qualify here.