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


Intellectual Property

Fall 2010

Intellectual Property

Four major economic justifications for the patent laws (From 1966 Report of the President’s Commission on the Patent System):

1. a patent system provides an incentive to invent by offering the possibility of reward to the inventor and to those who support him. The prospect encourages the expenditure of time and private risk capital in research and development efforts.

2. Complementary to the first, a patent system stimulates the investment of additional capital needed for the further development and marketing of the invention. In return, the patent owner is given the right, for a limited period. To exclude others from making, using, or selling the invented product or process

3. By affording protection, a patent system encourages early public disclosure of technological information, some of which might otherwise by kept secret. Early disclosure reduces the likelihood of duplication of effort by others and provides a basis for further advancecs in the technology involved

4. A patent system promotes the beneficial exchange of products, services, and technological information across national boundaries by providing protection for industrial property of foreign nationals/.

Principal modes of intellectual property – trade secrets, patent, copyright, trademark/trade dress, and related state law doctrines.

Trade Secrets

Trade Secret laws are state law doctrines that protect against the misappropriation of certain confidential information. More akin to tort and contract law than to patent or copyrights. The basic purpose behind protecting trade secrets is to prevent “theft” of information by unfair or commercially unreasonable means. Trade secret law is a form of private intellectual property law under which creators establish contractual limitations or build legal “fences” that afford protection from misappropriation.

The definition of subject matter eligible for protection is quite broad: business or technical information of any sort.

To benefit from trade secret protection, the information must be secret. Only relative and not absolute secrecy is required. The owner of a trade secret must take reasonable steps to keep the information secret. Once a trade secret is disclosed, protection is lost.

Courts will find misappropriation of trade secrets in two situations:

1. where the secrets were obtained by theft or other improper means, or,

2. Where they were used or disclosed by the defendant in violation of a confidential relationship

Trade secret laws do not protect against independent discovery or invention. Also do not prevent competitors from “reverse engineering” a legally obtained product in order to determine the secrets contained inside.


Patent law offers the possibility of a limited period of exclusive rights to encourage research and development aimed at discovering new processes, machines, and compositions of matter, and improvements thereof. After the term of the patent expires, the innovation becomes part of the public domain, freely available to all.

To obtain a utility patent, an inventor must submit an application to the Patent and Trademark Office (PTO) that meets five requirements/;

1. Patentable subject matter

2. Usefulness

3. Novelty

4. Non-obviousness

5. And disclosure sufficient to enable others skilled in the art to make and use the invention

Threshold for usefulness is low; novelty and non-obvious standards are substantial.

If the PTO grants the patent, then inventor obtains exclusive rights to make, use, and sell innovation for a term of up to 20 years.

Infringement will be found where the accused device, composition, or process embodies all the elements of a valid patent claim

Design patents have a term of 14

of goods or services.

Not all marks are protectable. To receive trademark protection, an identifying mark need not be new or previously unused, but it must represent to consumers the source of the good or service identified. It cannot be merely a description of the good itself or a generic term for the class of goods or services offered.

The identifying mark may not be a functional element of the product itself but must serve a purely identifying purpose.

Trademarks do not expire on any particular date but continue in force until they are “abandoned” by their owner or become unprotectable.

Infringement turns on whether consumers are likely to be confused as to the origin of the goods or services

Chapter 3 – Patent Law

First mention of patents in Aristotle’s Politics

First real patent system arose in Venice in fifteenth century

Patent from Latin patere (to be open)

First patent in Massachusetts in 1641

First US patent statute was passed in 1790 – first patent to Samuel Hopkins of Pittsford Vermont for a process of making potash from wood ashes

In 1863, a new system, with formal system examiners and professional examiners was substituted form of the 1793 Act pro forma registration system which had itself been substituted from the 1790 procedure involving three high-level government officials (including Jefferson as Secretary of State

Patents must be more than more than novel – must contain an “inventive leap”, or what is now called nonobviousness.