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Intellectual Property
West Virginia University School of Law
Olson, Dale P.


Philosophical Perspectives:
(1) Natural Rights
a. The difference between public and private property rests in an individual’s advancement and manipulation of that property. Once an individual uses a common property in a particular way distinct from its natural use, that property then becomes that of the personal owner and no longer of the public at large.
(2) Utilitarian/Economic Incentive
a. Innovation and Creativity
i. The protections afforded by IP law encourage individuals to make technological advancements that are for the common good, as such inventions may produce a great amount of personal wealth to the individual inventor.
b. Integrity of the Marketplace
i. One bad part of IP protection is the exclusive use of information. If, for example, someone comes up with a cure for AIDS, is it okay that we allow only that person to advance the technology of the cure at the expense of permitting anyone else to do further research on the drug rather than permitting others to use the same drug and to make advancements to ultimately obtain the best possible cure?

Overview of Intellectual Property:
(1) Trade Secret
a. Protect against the misappropriate of certain confidential information (i.e. the secret Coca-Cola formula)
b. The source of trade secret protection is usually found in State laws.
c. Protects against unfair means of competition through theft of trade secrets.
d. To benefit from trade secret protection, the information must remain a secret. However, only relative and not absolute secrecy is required. There is no definite term of protection; they are protected only as long as they remain a secret.
(2) Patent
a. Source of protection comes from the federal Patent Act.
b. After the term of protection expires, the innovation becomes part of the public domain, freely available to all.
c. To obtain a patent, an inventor must submit an application to the Patent and Trademark Office (PTO) that meets five requirements: patentable subject matter; usefulness; novelty/non-obviousness; and enablement of others skilled in the area to make use of the innovation.
d. If the PTO grants the patent, the inventor retains exclusive rights to make, use, and sell the innovation for a term of up to 20 years.
(3) Copyright
a. Source of protection comes from the federal Copyright Act as well as very limited common law.
b. Ideas themselves are not copyrightable – a work must exhibit a modicum of originality and be fixed in a “tangible medium of expression.” Copyright law protects only against the copying of protected expression.
c. A copyright lasts for the life of the author plus 70 years (95 years in the case of entity authors).
(4) Trademark/Trade Dress
a. The purpose is to protect consumers in a world of mass merchandising from unscrupulous sellers attempting to fly under the banner of someone else’s well-known logo or identifying symbol.
b. Refers to the “source identity” of the product.
c. Source of protection comes from the Federal Trademark Act of 1946; also, some states provide laws affording trademark protection.
d. Limitations on trademark protection are “functional features” such as the simple shape of a toaster – which won’t change across different types or brands.
e. Infringement turns on whether consumers are likely to be confused as to the origin of the goods or services. If so, the trademark owner is entitled to an injunction against the confusing use, damages for the past infringement, and in some cases the seizure and destruction of infringing goods.

(1) May be either exclusive or non-exclusive.
(2) Includes royalty payments.
(3) Some companies, such as Playboy (which doesn’t make much from its magazine sales), make all of their money through licensing their logo or brand to other products (i.e. Playboy makes its money through licensing clothing companies, casinos, and other entities to use its famous brand logo to sell their products).
(4) To certify a license, the company granting the license must control the quality of the product to which it grants the license; it’s just good business sense.

(1) Trade Secret
a. Civil suit for: conversion, unjust enrichment, or breach of contract.
b. Damages and injunctive relief are available remedies; also, criminal prosecution for theft.
(2) Patent
a. Damages and injunctive relief and damages, and attorney fees are available remedies.
(3) Copyright
a. Injunction against further infringement, destruction of infringing articles, statutory damages, attorney fees, and criminal prosecution are available remedies.
(4) Trademark/Trade Dress
a. Injunctions, damages, attorney fees, seizure and destruction of infringing goods, and criminal prosecution for trafficking in counterfeit goods or services are all available remedies.


(1) Historical Background
a. The Venetian Patent Act (late 15th Century) includes the following features of patentability: (a) must be a “device”; (b) must be “new and ingenious”; (c) provides a fixed term of ten years; and (d) sets forth a procedure to determine infringement.
b. In 1982 Congress passed the Federal Courts Improvement Act, creating the new Court of Appeals for the Federal Circuit. The Federal Circuit handles several important types of cases, but from the beginning one of its primary functions has been to hear all appeals involving patents.
c. Overall, patents are more likely to be held valid now than in previous decades. Much like the in 1960s, many critics today say that the Patent Office is too generous in granting patents.
(2) Theories of Patent Law
a. Patent law creates incentives to create inventions of perhaps great value to society at large. The point is to encourage inventive creation without any direct bureauc

e requirement is that it does at the very least something and serves some purpose.
c. Brenner v. Manson
i. Until an invention is shown to be useful, the inventor has not supplied the quid pro quo for a patent.
ii. In this case, there was the invention of a chemical compound, but the inventor could not come up with a single purpose for which this compound could be useful. The failure to find a useful purpose for the innovation served as the basis for the court’s denial of the patent.
d. What is “utility” in the pharmaceutical world?
i. Utility for pharmaceutical products can generally be established by animal testing. In fact, in In re: Brana, the Federal Circuit made it clear that human clinical trials are not necessary to prove utility of a drug; that animal testing (in this case, mice were the subjects) was sufficient to show the utility of a drug intended for human consumption.
e. The PTO guidelines require that an asserted utility be, “specific, credible, and substantial.” This requirement excludes “throw-away,” “insubstantial,” or “non-specific” utilities. Inventions whose greatest value has yet to be realized do not meet this requirement.
f. Even if an invention is directed toward a certain function, it must actually perform that function (Newman v. Quigg).
g. The fact that a product can be altered to make it look like another (i.e. cubic zirconium and “pleather”) is in itself a specific benefit sufficient to satisfy the statutory requirement of utility (Lowell v. Lewis); deception does not necessarily render an innovation un-patentable, although the PTO has used this reason as a basis for denying one’s application if the deception of the product is harmful or offensive to consumers.
(3) Enabling the Invention
a. Procedures for obtaining a patent
i. A patent application is referred to as a “prosecution,” and is a very active process. The average prosecution takes approximately 2.77 years. The typical application receives only eighteen total hours of attention.
ii. The basics of an application are: (1) the specification, including a summary of the invention and drawings in most cases; (2) one or more claims, at the end of the specification; (3) an oath declaring the inventors submitting the application actually invented what is described in the specification; and (4) filing fees.