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Intellectual Property
University of South Carolina School of Law
Snow, Ned

Intellectual Property – Ned Snow, Fall 2014

1. Open outline exam. 20% participation.

2. He is going to call on people based on an informal panel method. 2-5 people per day.

3. What are we talking about when we are talking about intellectual property?

a. Federal areas:

i. Patent

1. Invention (product or process)

2. Most profitable IP area of the law to go into (need a background in the sciences).

3. Patent: right to exclude others from making, using or selling invention, with some exceptions. Not a right to make your invention.

4. Lasts 20 years.

5. Must be UNN:

a. Useful

i. Bar is very low

b. Novel

i. First of its type

c. Non-obvious

i. Can’t be an invention on how to turn pages on a book.

6. PTO must issue the patent for you to have property rights in it. You do not have property rights into the object until the patent is issued.

7. Independent creation is not a defense. Property right goes to first applicant. (first to invent it).

ii. Copyright

1. Expression

2. Arises the least frequently in practice.

3. Copyright: exclusive right in expression to copy; prepare derivative works; publically perform or display; publicly distribute.

4. Lasts life plus 70 years—so long. If you are a corporation, 120 years from the date of creation or 95 years from date of publication.

5. There is a grey area between patent and copyright: Example: statue lamp.

6. No registration necessary

7. Must be in a tangible medium: thoughts don’t happen

8. Must be original, minimal degree of creativity.

9. Independent creation is a defense

10. Fair use is a defense:

a. Law allows fair use in certain exceptions:

i. Book/play/movie review: copying lines from the play.

iii. Trademark

1. Marks designating source (marks and symbols)

2. Trademark: the exclusive right to use mark in commerce without consumer confusion designating product or service.

3. Chevy has a trademark in the way that the corvette looks.

4. Trademark lasts as long as it is used.

5. No registration necessary: Trademark is Federal and State. Rules overlap.

6. Must be used in commerce to signify good or service.

7. You can’t get a trademark on the book but you can get a copyright on the book’s title.

8. Must be distinct in the market.

9. Independent creation is not a defense.

b. State regimes:

i. Trade Secret:

1. Formula for Coca-Cola

ii. Misappropriation

1. Interest in hot news.

2. Arises much less frequently today than it has in the past

iii. Right of Publicity

1. Celebrity’s Interest in Likeness & Appearance.

4. Where do these things come from?

a. Copyright & Patent

i. Come from the Constitution:

1. The IP clause

a. The Congress shall have Power…To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their

i. Science is the exclusive domain of copyright law

ii. Useful arts (as opposed to liberal arts, basically Useful arts are modern sciences) is the exclusive domain of patent law.

b. Trademark

i. Does not come from the IP clause

ii. Trademark comes from the commerce clause.

1. Congress shall have the Power To regulate Commerce among the several States.

iii. Trademark is very necessary for the regulation of efficient commerce for the consuming public.

5. Rap version of Roy Orbison is not a copyright infringement: original enough. Allows for policy considerations.

6. Real property rights are inviolable.

7. IP Rights are not: entire purpose is to Promote the Progress of Science.

8. Zyrtec Example: Wal-Zyr infringing on Zyrtec’s trademark? No trademark infringement because it is clear to the consumer that they are not the same brand.

9. Breast Cancer Gene Sequence Example: patent infringement? No Patent for the gene sequence, or the process.

10. Is SNL Superman Sketch a copyright infringement?

a. Parody:

i. We have to look very closely at the new message.

11. January 13, 2013

a. Patent Law—Boring, but worth a ton of money.

i. Application must be written correctly (claims and specification).

ii. Subject matter must be proper.

iii. Must be novel, non-obvious, and useful.

iv. Pre-application activity must not disqualify (publication; offer to sell; use in public)-activity can invalidate the patent

v. Infringement can occur in different ways.

vi. Remedies (injunction and damages) are available.

b. Patents—What is a patent? Patent-short for letters patent

i. The right to exclude others from making, using, or selling your idea. Does not give you a market monopoly.

1. You can have a patent that improves someone else’s invention, but you do not have a right to make the person’s invention that you improved without permission.

ii. Types of patents:

1. Utility—most common patents

2. Plant

3. Design

iii. What must a person do to gain a patent over his invention?

1. File an application with the PTO.

a. Patent office will give reasons for denying application if they choose to do so. Many patents are rejected on the first try.

2. 2 parts that comprise a patent application:

a. Written Description (Specification)—teaches how to use the invention.

ry meaning of a person skilled in the art (term of art also called a PHOSITA). This is the standard.

2. Intrinsic Evidence:

a. Claim language

i. Most important

b. Specification

i. You can rely heavily on the specification to interpret the claim

ii. Crux: how to treat examples in the specification: not dispositive, but just informative.

1. They don’t actually limit, punt to the PHOSITA-how would be interpret the examples?

c. Prosecution history

i. Court does not give as much weight to the prosecution history—but, the court can look and apply prosecution history in certain circumstances.

3. Extrinsic Evidence:

a. Technical dictionaries and treatises

b. Expert testimony

i. Must be careful because extrinsic evidence is not part of the patent.

ii. Too abstract

v. Holding:

1. Baffles includes 90 degree baffles, thus, AWH’s product is an infringement.

2. In claim two—“panel sections disposed at angles”

3. Claim 1 does not do that—so the implication is that baffles are still baffles no matter what the angel is.

January 14, 2014

1. Specification: shall include a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is more important…

a. Narrow patent claims are more likely to be found valid

b. Broad give you greater property rights.

2. “Means” versus specific verbiage (like ventilation holes v. means for ventilation).

3. PHOSITA (person having ordinary skill in the art): perspective from which you analyze the claim.

a. First look at intrinsic evidence of the patent itself.

i. Claims themselves

ii. Specification—can be relied on heavily.

1. Tension in Court’s opinion about examples:

a. If we had said means and in the example we just put holes, does the example set the outer boundaries about what “means” means.

i. Court didn’t give us a bright line test—what would the PHOSITA think?

ii. Examples=embodiments.

1. Inventors don’t want to be limited by the examples.