# Presentation: 640376

## Intellectual Property & Export Controls

**Presented by**
**Madelynne Farber, Sandia**
**Vincent Branton, Pacific Northwest**
**Murray Baxter, Savannah River**
**May 26, 2005**

## An Intellectual Property Primer

**Just enough to make you dangerous**
**May 26, 2005**
**Madelynne J. Farber**
**Patent & Licensing Attorney,**
**Sandia National Laboratories**

- Sandia is a multiprogram laboratory operated by Sandia Corporation, a Lockheed Martin Company,for the United States Department of Energy’s National Nuclear Security Administration under contract DE-AC04-94AL85000.

## Constitutional Basis(Patents & Copyrights)

**U.S. Constitution, Art. 1, ****§ 8, cl. 8**
**	****	****The Congress shall have the power...**
**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.**

## Most usage at the “Labs”
Patents
Patent Act (35 USC)
Copyrights
Copyright Act (17 USC)
Trademarks/Service Marks
Lanham Act (15 USC 1051, et seq.)

Others
Trade Secrets (like the Coke formula!)
Trade Dress (like the Campbell’s soup label!)
Maskworks (like semiconductor layers!)

**Patents**
**Patent Act (35 USC)**
**Copyrights**
**Copyright Act (17 USC)**
**Trademarks/Service Marks**
**Lanham Act (15 USC 1051, et seq.)**
**Others**
**Trade Secrets (like the Coke formula!)**
**Trade Dress (like the Campbell’s soup label!)**
**Maskworks (like semiconductor layers!)**

**Types of IP***

**Notes:**
Trade Secrets protected under state law.  But in most states that do have trade secret protection, they use the Uniform Trade Secrets Act
Trade Dress protected under Lanham Act
Maskworks protected by Copyright Act

OWNERSHIP is different than inventorship or authorship.  Inventors and authors must fit the definitions (discussed later).  One who is neither an inventor nor an author can OWN the IP rights by virtue of a contractual arrangement (employment, contract, assignment).

## Patents

**Protects “applied ideas”**
**Rights**
**Make (have made)**
**Use**
**Sell**

## Getting a Patent

**Requirements to Patent**
**Novel**
**Useful**
**Non-obvious**
**What’s patentable?:**
**Products (machines, THINGS!)**
**Processes (ways to make or do something, including chemical processes)**
**MADE BY HUMANS – not naturally occurring (such as algorithms & plants)**
**Inventors**
**Whomever had a share in the ideas forming an invention**
**Only implementing is not inventing**

**Notes:**
The date of invention is assumed to be the filing date, so if these occur before the filing date, then proof will have to be provided that invention occurred before any of these things occurred.

## Getting a Patent (cont.)

**Statutory Bars **
**Occurs > 1 year before filing**
**Prior patent by anyone, printed publication, public use, sale**
**Anticipation events occur at any time before invention*****
**prior patent by anyone, printed publication, **_***knowledge***_** or unabandoned, unsuppressed, unconcealed invention by others, **_***use by others***_**, or description in another’s previously filed and eventually granted application**
**DISCLOSURE has been broadened!**

## Patent Infringement

**Anyone who, without permission, makes, uses, or sells a patented invention is a *****direct***** infringer.**
**If a person actively encourages another to make, use, or sell the patented invention without permission, the person doing the encouraging is an *****indirect***** infringer.**
***Contributory***** infringement can be committed by knowingly selling or supplying an item for which the only (or predominant) use is in connection with a patent invention.**

**Notes:**
A patent owner is required to “mark” a product invention so as to put others on notice that it is patented.

“Direct” infringement can be committed innocently.
	A first person produces a product, it does not have the patent notice.  A second person copies the first person’s product.  The second person has infringed the patent and the patent owner has a legal right to a remedy for the infringement committed by the second person.  Yes, the first person has also infringed and the patent owner has a legal right to a remedy from the first person, too.

“Good faith” or “ignorance” is not a defense for direct infringement, but is for contributory.

## Copyrights

**Protects “expressions of ideas”**
** ****Rights**
**Reproduce**
**Make derivative works**
**Distribute**
**Perform publicly**
**Display publicly**

## Getting a Copyright

**“****Born” with copyright (once in fixed media)**
**Marking (aka, “asserting”) provides notice**
**Authors**
**Whomever actually wrote/drew/painted/coded/*****CREATED***** the work**
**Assertion**
**GOCO Labs/DOE**
**US Government employees @ work – no copyright allowed**
**GOCO lab employees @ work – copyright allowed**
**Copyright © YEAR *****copyright holder***
**Registration**
**Library of Congress**
**Must be registered before a claim of infringement**

## Copyright Infringement

**Anyone who exercises copyright rights without permission of the copyright holder has committed copyright infringement.**
**Innocent infringement is still infringement**
**Unconscious*** infringement is still infringement**
**Just because it isn’t marked (©), doesn’t mean it isn’t protected**
**FAIR USE IS A DEFENSE, NOT AN EXCUSE TO INFRINGE!!!**

**Notes:**
Actual copying (entirely)
Substantial copying
Access to a copyrighted work

“Unconscious” – access to another’s work and used it without realizing it.  “SUBconscious” is probably what the court meant.  (George Harrison did this with “My Sweet Lord” and the Chiffons’ “He’s So Fine.”

## Trademarks

**Provides an association between a product/good and a provider (service mark is between a service and a provider)**
**Prevent mistake, deception and confusion with regard to the origin of the product/good**
**Protects both sellers and purchasers**

## Getting a Trademark

**Common Law (based on unfair competition)**
**Notification with TM**
**Have ownership rights and protection against infringement**
**“****Good faith” defense frequently prevails**
**Registered w/USPTO (process similar to patenting)**
**Notification with ®**
**Have ownership rights and protection against infringement PLUS overcome “good faith” claims, easier access to federal courts, incontestability, attorneys fees, and treble damages**

## Trademark Infringement

**Decisive factors**
**Similarity of marks**
**Similarity of goods (services for service marks)**
**Character & similarity of market conditions***
**Persuasive factors**
**Relative strength of the mark***
**Intent of alleged infringer**
**Nature of the mark***
**Existence of actual confusion**
**Again, FAIR USE IS A DEFENSE, NOT AN EXCUSE TO INFRINGE!!!**

**Notes:**
Different marketing schemes, different markets

Fanciful mark (nature of mark) may receive more protection than a common phrase.  Who would just “happen upon” the same fanciful mark as another?

## Questions?