Summary of Intellectual Property Rights
United States
a)
Patent
rights are constitutionally based.
“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.”
U.S. Constitution, Article 1, Section 8, Clause 8
b)
The
emphasis is on technology. Fundamental
principles, such as the law of gravity, are not patentable. Nor are abstract algorithms, mathematical
principles or formulae. Patents are the
only form of intellectual property whose coverage depends on the precise legal
description of the protected subject matter in a government grant.
c)
Patent
protection may be obtained for inventions
or discoveries that are machines, manufactures, compositions of matter or
processes – including software, plants and animals (patents less available in
other countries); and improvements or new uses of old inventions (patent only
covers new portion).
d)
Utility, novel and
nonobvious. Invention must not be anticipated by a prior
art and must not have been obvious in light of prior art to one having ordinary
skill in the art
e)
Applications must be filed within 1 year after first publication anywhere in
world or after first being on sale or in public use in the US. You must disclose the invention and the
“best mode” of implementing the invention.
The application is not available to public. In the case of more than one application for same patent, in the
US the patent will belong to the first to conceive of the invention. In other countries, the first to file will
prevail.
f)
Exclusive Rights to make,
use, offer to sell, sell and import into the US the invention covered by the
patent or products made by a patented process.
g)
Term
used to be 17 years from date of
issuance. With US adoption of GATT, term is 20 years from application
date. When the term expires, the public
is free to use the invention.
a)
Uniform
Trade Secret Act: if a person knows
something that others do not and takes steps to prevent others learning about
it, that person will have sole use of that knowledge unless another person
independently develops it.
b)
To
obtain an injunction or damages in court, you must show: 1)
the trade secret is valuable (provides a competitive advantage), 2) reasonable
efforts were taken to maintain secrecy, and 3) the trade secret was learned,
used or disclosed improperly.
c)
Term
can be perpetual, if trade secret remains secret.
a)
Copyrights comprise the other constitutionally based field of intellectual
property.
b)
Protects only the expression
in a work, NOT the underlying ideas, facts, processes, or systems. (The subject matter of
copyright protection is “original works of authorship fixed in any tangible
medium of expression”). Protected works
include, for example, books, magazine articles, speeches, music, motion
pictures, other audiovisual works, computer programs, computer databases,
sculpture, and other works of fine art.
Copyright has little to do with the manner in which these works are fixed
in a tangible medium, but it covers their recorded expression, regardless of
the medium in which they are fixed.
c)
Anyone can express the same idea
provided they do so in a manner that is sufficiently different from the
copyrighted work
d)
Term is life of author plus 50
years, or for company’s (i.e. Work Made for Hire), the term is the shorter of
75 years from year of first publication or 100 years from creation. This does not apply to pre-1978 works.
e)
Registration is not required for
copyright protection, but it provides certain advantages if you end up in court
enforcing your ownership rights in the work
f)
Copyright notices are no longer required
since US joined the Berne Copyright Convention in 1988, but they are
recommended to protect the owner’s rights.
g)
Works Made for Hire clauses – this means that the
entity or person who hired you to create a work is treated as the author. Works made by employees are automatically
“works made for hire” (different than patent or trade secret rights). Works made by consultants or independent
contractors are only “works made for hire” if they fit into certain categories
and there is a written agreement that says so.
Otherwise, a written assignment must be made to the commissioning party
(i.e. company).
a)
Protection
of semiconductor chip designs under the Chip Act is similar to copyright
protection, but it also borrows principles from patent law. The subject matter of this protection is the
intangible information content in a 3-dimensional blueprint for a semiconductor
chip (e.g. a mask work). The
information in that blueprint is protected regardless of how it is recorded,
whether on paper, in a database, or in the chip itself. Like copyright protection, the Chip Act
protection does not cover ideas, principles, or processes embodied in the chip
design, which must be protected, if at all, by patent or trade secrecy. Chip
protection is different than copyright protection in that it does not cover
recorded expression contained in a chip, except to the extent that that
recorded expression is embodied in the physical configuration or layout of the
circuit elements of the chip itself. Applies to mask works fixed in a final or intermediate form of semiconductor chip
product
b)
Statutory definition is: “series
of related images however fixed or encoded (even if stored in memory media)
representing the three-dimensional pattern of layers of a semiconductor chip
product”
c)
Only the layout of the mask
work is protected, not the idea or the circuit (which must be protected by patent, if at
all)
d)
Mask Work must be original, and owner has exclusive
rights to reproduce, import and distribute chips embodying the mask work
e)
Term of protection is 10
years from
earlier of registration or first commercial exploitation (or 2 years if not
timely registered)
f)
Reverse engineering is
permissible
g)
Notices of ownership are not required, but
required to prevent innocent infringers.
You
just graduated from UT. You accepted an
engineering position with Company who is in the microelectronics industry. As part of your job you will be assisting in
developing a new version and features for Product X and developing an entirely
new product line not based on or derived from any existing Company
product. In your spare time, you like
to experiment in your garage and write books.
In fact, you have come up with some pretty cool stuff that you think
might be patentable.
When
you arrived at work your first day, you signed a Proprietary Information and
Inventions Agreement in which you agreed, among other things, to 1) assign to
Company all right, title and interest (including all intellectual property
rights) relating to all inventions, works of authorship, mask works, designs,
know-how and ideas made or conceived by you during your employment with
Company, 2) to not use Company’s proprietary and confidential information
except within the scope of your employment with Company, and 3) to not disclose
Company’s proprietary and confidential information to third parties.
As
part of your job you develop a new feature for the Product X and you write the
users’ instructions for the new feature.
Who owns the new feature and the user instructions?
Since
starting your job, you have spent virtually every weekend in your garage with
your best friend developing a new manufacturing technique. You believe it would greatly enhance the
manufacturing efficiencies of many products including the Company’s new product
line. Who owns the new manufacturing
technique?
Would
it matter if on occasion you ran some tests in the lab at work since the
equipment there was much better than your equipment at home? Or, if you also got some ideas from some
co-workers over lunch on how to solve a few glitches?
Who
owns the cool stuff you developed prior to starting your job? What happens if you use any of your
“pre-job” cool ideas in your job?
After
a year in your job, you decide to write a book in your spare time on the
history of microelectronics. Who owns
it?