Internet Legal Resource Guide 			<http://www.ilrg.com/>
ILRG Law School Course Outlines Archive 	<http://outlines.ilrg.com/>
LawRunner:  A Legal Research Tool 		<http://www.lawrunner.com/>

Author:  	David Washenfelder <dxw14690@Bayou.UH.EDU>
School:		University of Houston School of Law
Course:		Intellectual Property Survey
Year:		Fall, 1996
Professor:	Hewitt
Book:		Patent Law; Francis & Collins, 4th ed.

I.	COPYRIGHT

A.     The Copyright Act of 1976
1.	Work is protected as soon as it’s fixed in a tangible medium
2.	 Protection lasts for 50 yrs after death of author/s
3.	Exclusive rights include (§501):
a.     reproduction
b.     distribution
c.     derivative works
d.     public display/performance
4.	Original expressions of ideas are pat’able, ideas alone are not
a.     original - originating from the author
b.     examples listed in Act (not determinative)
i.     literary works
ii.    musical works
iii.   audio-visual works
iv.   dramatic works
v.    choreographic works
vi.    graphic works
vii.   sound recordings
5.	Notice is not required for first time
a.	Berne Convention of ’88 eliminated notice
i.	made notice permissive instead of mandatory
ii.	registration still prerequisite for infringement suit on 	works made in US, but not those made outside US
A.	if registered, you have a prima facia case and 	can’t get SJ against you on the merits of case
B.	if not registered before infringement you lose 	rights to atty fees and statutory damages
b.	If something looks copyrightable, check w/ 	copyright office before you infringe
c.	Use “P” instead of “C” on sound recordings to 	avoid confusion of what is copyrighted
d.	Notice never required on public performance or 	display as this is not publication, ex.  “I had a 	dream” speech
6.	Ownership
a.	a person who creates a work under contract labor 	still owns the copyrights, unless contracted away
b.	if a person is hired to invent, he has a CL 	obligation to transfer rights to employer
c.	Work for Hire Statute 17 USCA § 101 applies when
i.	author is employee in scope of employment -  	follow 	CL rule
ii.	work is specially commissioned or ordered, a 	written agreement exists, and work is in one of 	these nine categories:
1.	contribution to collective work
2.	parts of motion pictures or audio-visual aids
3.	translations
4.	supplementary works
5.	compilations
6.	instructional texts
7.	answers for a test
8.	atlases
7.	Preemption 
a.	state laws that do not cover copyrightable subject 	matter are not preempted, ex. works not fixed in 	tangible medium
b.	state laws are preempted which…
i.	grant rights equivalent to those in new Act
ii.	extend to works covered by new Act

B.     Subject Matter of Copyright
1.     Originality
a.	only requires that work came from author, does         	not require originality
i.     creative work must come from author
ii.    factual work must have original labor from author
b.   “artistic merits” are not considered     
c.   reproductions are copyrightable
i.	copyist must demonstrate he has contributed 	something to the final reproduction
ii.	variation must be more than trivial
d.	“modicum of creative work” must be shown for a 	work based on facts to be copyrightable
2.	Copyrightable works
a.	original works of authorship fixed in a tangible 	medium, now known or later developed
b.	not bound by examples, defined by case law
c.	utilitarian v. non-utilitarian
i.	separable non-utilitarian part of work is 	copyrightable (Mazer v. Stein - lamp bases)
ii.	if inseparable, copyright is not completely denied
iii.	blueprints - 
A.	copyrightable, but actual building is 	probably not
B.	now, if architect goes into house, draws plans, 	and builds it, he has infringed
iv.	utilitarian objects are what patents are for
d.	idea v. expression
i.	ideas are not copyrightable
ii.	Baker v. Selden - accounting method not 	copyrightable, but book about it is
e.	availability of other protection may be considered 	in determining copyrightability
f.	intangible expressions are not copyrightable 	unless fixed in tangible medium, ie. recorded
g.	computer programs copyrightable under § 117 of 	1976 Act
i.	in consideration of Art. I §8 of constitution ”to foster 	the progress of science & useful arts”; authors 	benefit is secondary
ii.	Act defines computer programs as:  a set of 	statements or instructions to be used directly or 	indirectly in a computer in order to bring about a 	certain result
iii.	abstraction-filtration-comparison test used for 	substantial similarity:  break it down to constituent 		structural parts, examine for incorporated ideas, 	expression incidental to those ideas, and elements 	taken from the public domain, the court sifts out all 	un-protectable ideas to get kernels of expression, 	then compare to infringing program (decides what 	is creative and what isn’t)
abstraction - mixture of ideas
filtration - examine the levels of abstraction for idea or efficiency, this defines the scope of the copyright; if reduced to commands merger doctrine invoked
comparison
iv.	2 things insured by this test
A.	programmers receive appropriate protection 	for innovative utilitarian works containing 	expression
B.	non-protectable technical expression remains 	in the public domain for others to use freely as 	building blocks in their own work
v.	as effectiveness of software copyright increases, 	patentability decreases
3.	Semiconductor Chip Protection Act
a.	hybrid of patent and copyright law
b.	protects computer chips (primarily from 	photographic process)
c.	protection begins upon registration or commercial 	exploitation, whichever occurs first
registration requires masks, documentation, and photos to identify
d.	requires originality
e.	excludes ideas, procedure, process, system, 	method of operation, concept, principle, 	discoveries, and designs that are staple, common, 	or familiar to the industry
f.	must be registered w/in 2 yrs of commercial	 	exploitation
i.	protection lasts for 10 years
ii.	notice not required but offers procedural protections 	“mask work”, M, or M circled used 
iii.	must‘ve been first commercially exploited in US, or
iv.	on date of exploitation or registration, owner has ties 	w/ US or no ties at all, but protection can be 	extended to others anyway
g.	this act is an anomaly of sorts because the 	technology changed by the time it was enacted
h.	reverse engineering - §906 of SCPA gives rights to 	reproduce for teaching, analyzing, logic plan, or 	organization, even if used in new mask work
i.	Brooktree v. Advanced Micro Devices
i.	this is the only relevant case under the SCPA
ii. 	set out remedies (same as copyright)
4.	Cases
a.	Feist v. Rural
i.	facts - telephone white pages
ii.	rule - authors can’t copyright ideas or facts
iii.	rule - compilations of facts are copyrightable, must 	have modicum of originality in arrangement
iv.	2 elements to establish infringement of factual work
A.	ownership of valid copyright
B.	copying of elements of work that are original
b.	Mitchell Bros. v. Cinema Adult Theater
i.	facts - infringement of obscene film
ii.	rule - the obscenity of a creative work is not a 	defense to copyright infringement
c.	Alfred Bell v. Catalda
i.	facts - infringement of mezzotint reproductions
ii.	rule - a creative work need not be of original subject 	matter to be copyrightable
d.	Mazer v. Stein
i.	facts - lamp statues
ii.	rule - artistic articles embedded in manufactured 	articles may be protected by copyright (or TM) even 	though they may also be protectable by patent

C.	Infringement & Fair Use
1.	P must prove 2 elements to establish infringement
a.	ownership of valid copyright
b.	copying of copyrighted work
2.	Copyright infringement is a tort, all D’s jointly & severably liable
3.	Infringer - anyone who violates any exclusive rights of §501, or 	who imports records into US w/o permission from owner
4.	Infringement need not be intentional
5.	Vicarious liability exists for club owners etc.
a.	must have control over infringer
b.	must financially benefit from infringing act
6.	Judicially developed test for infringement - whether the 	accused work:
a.	was copied from copyrighted work; and
b.	is so substantially similar that it invades an 	exclusive right
c.	(if copying can’t be proved, it can be inferred)
7.	Joint ownership - each person has the right to use & license, 	but must report to other owners
8.	Doctrine of Fair Use
a.	states that you can use works or excerpts from 	works for educational purposes, reviews, 	comment, criticism, etc.
b.	factors to consider in fair use
i.	purpose & character of use
ii.	nature of copyrighted work
iii.	amount of work copied
iv.	effect on potential market
c.	non-published status is also a factor to consider
9.	Cases
a.	Sid & Marty Kroft v. McDonald’s
i.	facts - H.R. Puff-n-stuff
ii.	rule - to establish copyright infringement, P must 	establish:
A.	ownership of copyrighted work
B.	circumstantial evidence of access to work
C.	substantial similarity in both idea & 	expression 
b.	Harper & Row v. National Entertainment
i.	facts - Pres. Ford’s memoirs ripped off
ii	rule - the unauthorized use of a public figures 	manuscript gives rise to a copyright violation
c.	Fisher v. Dees
i.	facts - D recorded a parody of P’s song
ii.	rule - the copying of a song for parody may 	constitute a fair use
A.	before 1976 Act, parody was treated as any 	other infringement
B.	now it is decided like other fair uses, on a 	case-by-case basis
iii.	conjure up test - whether D used more than was 	necessary to conjure up an image of the original 	work
iv.	note: could a parody harm demand for an original?
v. 	note: ask to use, if they say no, use it anyway
d.	Computer Assoc. v. Altai
i.	facts - D used code from P’s program (ADAPTER)
ii.	idea v. expression in regards to software also 	includes the idea of functionality & proficiency
e.	Computer Assoc. v. Altai (TX Sup Ct)
i.	rule - statute of limitations will not be tolled due to 	undiscoverability of infringement 
ii.	note:  this case invites lawsuit b/c business must 	assume their transferred employees are infringing
f.	Maxtone-Graham v. Burtchaell
i.	facts - D quoted P’s book in book on abortion
ii.	this case set out the 4 factors to consider in fair use
g.	Luke Skywalker v. Acuff-Rose Music
i.	facts - sampling case
ii.	rule - in considering fair use as a defense for a 	parody, one must take into account that:
A.	parody needs to conjure up original work
B.	conjuring up must reasonably be for critical 	effect, not for market substitute
C.	although commercial, parodies do not suffer 	from a presumption of market harm to original
iii.	Kennedy uses a simplified test, parody qualifies as 	fair use…
A.	whether for profit or not
B.	only if it draws from original in humorous or 	ironic fashion
C.	if it targets the first, humor alone insufficient
h.	Gates Rubber v. Brando Chem
i.	abstraction-filtration-comparison test used
ii.	court didn’t believe test was applied properly
iii.	not enough copyrightable material
A.	constants - can’t
B.	menus - unclear
C.	data flow - (remanded)
D.	engineering, calculation, & design - unclear

D.	Remedies
1.	Injunctive Relief (§502a)
a.	courts more willing to apply in copyright
b.	if “reasonable to prevent or restrain infringement” 
2.	Damages & Profits
a.	types
i.	damages
ii.	profits
iii.	statutory damages
b.	no double damages under § 504 of 1976 Act
i.	old 1909 Act allowed for damages & profits
ii.	§504a allows for actual damages + profits that are 	“additional” to those damages
iii.	§504b makes it clear that profits are to be added 	only if not accounted for in actual damages
c.	if P has trouble proving damages he should go for 	profit for a more appropriate award
d.	D has burden of proving expenses to reduce profit
e.	D has burden of proving apportionment to show 	that profit was not a result of infringement (§405b)
3.	Statutory Damages
a.	P’s discretion to choose over actual
b.	min=$250
c.	max=$10K
d.	innocent & good faith can have it  reduced to $100
e.	willful can have as much as $50K

II.	TRADEMARKS

A.	General
1.	Originated in European guilds
2. 	Only exists in relation to other goods
3.	Original intent was to prevent “palming off”
4.	Business causes of action still coverable by state law due to IC
5.	State TMs are pretty weak, Fed TMs are more powerful
6.	Today we operate under the 1946 Lanham Act
7.	Goals of TM are to:
a.	protect public - preventing mistake, deception, 	and confusion w/ regard to origin
b.	protect sellers - good will
c.	indicate origin
d.	guarantee quality
e.	serve as marketing and advertising device

B.	Common Law Protection
1.	TM rights acquired solely through priority of use
a.	commercial use
b.	priority occurred w/in geographical area 
2.	Good faith of parties could defeat unfair competition claim
a.	no knowledge
b.	different geographical area or different product
3.	Trade names protectable but must show recognition
4.	Right to use your own name protectable - disclaimers work in 	close cases
5.	Cases
a.	Hanover Star v. Metcalf
i.	facts - D used same TM as P in different area
ii.	rule - TM protection afforded only in area in which 	product is marketed
b.	Job’s Daughter’s v. LindenBurg
i.	facts - D used P’s insignia in necklace
ii.	rule - for use of TM to be infringement it must tend 	to confuse the buyer as to the maker of the product

C.	The Lanham Act of 1946
1.	Federal regulation of TM
2.	TM must still be used before it can be protected
3.	Allows for service marks
4.	§ 43(a) of the Lanham Act
a.	federal unfair competition statute
b.	creates federal cause of action
c.	allows cause of action for unregistered TM
d.	no geographic or product scope limitations
i.	protects TM from use by any other person
ii.	this lead to “deadwood” provisions
e.	intent is not required
f.	elements of a cause of action
i.	false or misleading statements or representations
ii.	deception, confusion, mistake, or their likelihood
iii.	materiality of deception confusion, or mistake
iv.	introduction of product or service into IC
v.	injury to P or likelihood
5.	Additional rights conferred by Lanham Act
a.	prima facia evidence of ownership, validity, & 	exclusive rights to use
b.	constructive notice nationwide 
c.	constructive use nationwide 
d.	protection against importation of infringing goods
e.	incontestability - after 5 yrs continuous use a registrant 	can achieve incontestable status, eliminating other’s 	abilities to attack the registrant’s right to use and exclude 	others from using the mark because of descriptiveness or 	prior use

D.	Federal Registration
1.	Benefits of federal registration
a.	allows registrant to overcome any claims by later 	users of good faith
i.	gives constructive notice to all later users
ii.	gives rights in areas where the registrant is not 	using the mark
b.	can use federal courts w/o other basis of juris
c.	gives rights beyond CL, ex. incontestability
2.	§ 1052 of Lanham Act - no TM by which one’s goods can be 	distinguished from another shall be refused unless…
a.	consists of immoral, deceptive, or scandalous 	matter, or false connections with persons, 	institutions or national symbols
b.	consists of insignia of the US
c.	consists of the name, portrait, or signature of a 	living person, except by written consent, or of a 	deceased president for the life of his widow
d.	resembles a previously registered mark likely to 	cause confusion, mistake, or to deceive
e.	mark is merely descriptive, or misdescriptive of 	goods or geographic location, or is primarily a 	surname
3.	2 types of applications
a.	actual use application
b.	intent to use application
i.	allowed here now b/c allowed in other countries’
ii.	must be a bona fide intent to use
iii.	application turns into real thing w/ statement of 	commercial use
iv.	6 month grace period which can be extended to 24
4.	Supplemental registration - requires 5 years of continuous use
5.	App examiners are lawyers who use databases, they will reject 	if the mark is confusingly similar to others
6.	After approval, it is published in Official Gazette of the Office
a.	publication issued weekly
b.	mark only published once
c.	30 day grace period for complaints

E.	Distinctiveness
1.	Distinctiveness requirement is a stated policy of fed registration
a.	§ 1052 states “no TM by which the goods of the 	applicant may be distinguished from the goods of 	others shall be refused registration”
b.	2 themes
i.	allows 1st user to object to 2nd user on basis that 	mark is not distinctive if it resembles the 1st
ii.	policy opposing domination of descriptive terms of 	the marketplace
2.	Categories of distinctiveness
a.	generic marks - describes exactly what the good is;  	receives no protection (aspirin)
b.	descriptive marks -  describes characteristics of the 	product; no protection unless there is a showing of 	distinctiveness (secondary meaning) or you are the 	sole user for 5 years and can prove it; includes 	surnames and geographic names (Tasty Bread)
c.	suggestive marks - almost describes product; fairly 	strong protection; registerable w/o further proof (Milky 	Way)
d.	distinctive/arbitrary - does not describe anything 	about the product; receive strongest protection; 	registerable per se (MacDonald’s)
note:  Learned Hand could not define the line b/n 	suggestive and distinctive
3.	How a descriptive mark acquires secondary meaning to 	become suggestive
a.	term acquires secondary meaning if it signifies to 	purchasing public that the product comes from a 	single producer or source
b.	factors include:
i.	amount & manner of advertising
ii.	length & manner of use
iii.	consumer surveys
iv.	focus is on effectiveness
c.	usually 5 yrs use can testify to secondary meaning
4.	Conflicting ownership
a.	general rule is that ownership is resolved through 	priority of appropriation
i.	senior user - 1st user
ii.	junior user - can protect his area against senior user
	requirements to be junior user:
1.	same mark
2.	different area
3.	good faith (innocent user)
4.	later user
iii.	this distinction is irrelevant to a federally registered 	TM because everyone is presumed to have notice
iv.	federal registration does not affect the rights of an 	existing junior user
b.	prior use
i.	federal bar against registration of a mark resembling 	that of a prior user
ii.	factors:
A.	possibility that prior use has been abandoned
B.	likelihood of (evidence of actual not required)
C.	confusion, mistake, or deceit
D.	as applied to applicants goods not in the 	abstract
iii.	abandonment occurs only if (i) acts of abandonment 	as well as (ii) intent to abandon are present
A.	2 years non-use will raise a presumption of 	abandonment, burden to rebut is on prior user 	to show an intent to resume use
B.	doctrine of excusable nonuse - mitigates 	against long periods of nonuse if prior user 	can show it was only a temporary withdrawal

F.	Subject Matter
1.	4 types of protectable marks:
a.	trademark - (i) any words, symbols, or combination 	thereof (ii) used on goods or their containers (iii) in actual 	commerce (iii) capable of distinguishing goods of 1 source 	from goods of another
b.	service mark - (i) any words, symbols, or combination 	thereof (ii) used in connection with actual rendering of 	services (iii) in commerce (iv) capable of distinguishing 	services of 1 supplier from those of another
c.	collective marks - a mark adopted pursuant to an 	agreement among a number of producers containing 	quality control standards; each member may use the mark 	along w/ his own (ex. real cheese)
d.	certification marks - mark placed by the mark owner on 		goods of others to certify something about those goods (ex. 	movie ratings & kosher symbols)
2.	Words & Slogans - generally ok, but excessive length can work 	against its trademarkability, may still be copyrightable though 
3.	Non-verbal Marks - ok as long as they are associated with the 	product and source
a.	number or alphanumeric - ok as long as its distinctive 	and not descriptive
b.	color or pattern - difficult to register, but possible if it is 	distinctive rather than functional or merely ornamental
c.	sounds & fragrances - have been registered, same 	limitations as above
4.	Functional Bar
a.	a device that is solely functional can’t be registered
b.	a  product feature is functional if it is essential to 	the use or purpose of the article of if it affects the 	cost or quality
5.	Cases
a.	Abercrombie v. Hunting World
i.	facts - “Safari” case
ii.	rule - extent of protection given depends on 	distinctiveness of mark
iii.	note: court let portion on TM stand that was not 	generic
b.	Qualitex v. Jacobson
i.	facts - green dry-cleaning presses
ii.	rule - color may be registered as a TM as long as it 	has no functional purpose

G.	Infringement of Trademark
1.	TM infringement - the unauthorized use of a mark that so 	resembles another’s valid mark as to create likelihood of 	confusion
2.	factors to determine likelihood of confusion:
a.	similarity of marks
b.	similarity of products
c.	strength of P’s mark
d.	degree of care by purchasers
e.	D’s intent in selecting mark
f.	marketing channels used
g.	likelihood of expansion of product lines
h.	evidence of actual confusion
3.	Ways to infringe
a.	palming off - making a product & selling it as 	someone else’s
b.	reverse palming off - D makes P’s product look like it 	was produced by D
c.	confusion of sponsorship - when D makes a 	product so that people think he is licensed to do so
d.	reverse confusion - D makes P look like he is the one 	who is sponsored
e.	dilution - can bring an action in TX for dilution of TM 	regardless whether there is competition b/n the parties 	or confusion b/n goods or services
i.	likelihood of expansion - courts use this to provide 	owner w/ protection for hypothetical uses
ii.	interests protected
A.	right of prior user to enter related field
B.	association w/ inferior goods
C.	freedom from confusion
4.	Defenses
a.	invalidity of TM - if mark is registered, it is assumed to 	be valid; D has burden of proving it’s not valid (generic)
b.	fraud - fraudulent procurement is grounds for canceling 	a registration; available even if inconstestability applies
c.	anti-trust - mark can’t be used to violate anti-trust laws
d.	fair use -  can be used to compare products, or to name 	products that are components of other goods as long as 	there is no confusion as to the manufacturer
e.	abandonment 
f.	prior use
5.	Remedies
a.	injunctive relief - balanced against desire for 	competition
b.	accounting for profits - allowed in addition to 	damages
i.	D musts prove costs
ii.	P does not have to prove his product would have 	been bought
c.	damages - up to 3x demonstrated damages allowed
d.	atty fees - Lanham Act allows “in exceptional cases”
e.	costs 
f.	seizure
g.	exclusion
6.	Cases
a.	Stark Club NY v. Stark Club SF - this case made TM 	history by suing out of state for TM infringement
b.	Frisch’s Restaurant v. Elby’s Big Boy
i.	facts - P sued W Virginia franchise for advertising 	outside of W Virginia
ii.	rule - advertising causing a likelihood of confusion 	as to the source of a product constitutes enjoinable 	unfair competition
iii.	note: this case set out factors of confusion
c.	Sears v. Johnson
i.	facts - “Allstate” ins. v. “All-State” driving school
ii.	rule - a trade name can be infringed by the use of a 	non-identical name for a competing service or TM
d.	Great Scott Food v. Sunderland Wonder
i.	facts - Big ‘G’
ii.	rule - anti-dilution allows one to enjoin another from 	using a similar mark even though no confusion is 	caused, if use would work an adverse affect by 	diluting the distinctiveness of the mark
e.	Amassador East v. Orsatti
i.	facts - “Pump Room” Chicago v. ”Orsatti’s Pump 	Room” in Philadelphia
ii.	rule - restaurants w/ far reaching reps are entitled to 	full protection, not limited by distance, or by the fact 	that the other adds a qualifier to the name
f.	Georator Corps. V. US
i.	facts - tax deduction for costs of resisting TM 	registration cancellation
ii.	rule - costs of registration are capital expenditures 	and so is the costs of resisting cancellation 
iii.	note: can’t expense a L-T property right
iv.	note: set out additional rights conferred by Lanham
g.	Mister Donut of America v. Mister Donut
i.	facts - D had the mark assigned to him
ii.	rule - no TM rights can be transferred apart from the 	business w/ which it is associated
iii.	rule - once a mark has been registered, if registrant 	expands his business to the point where it conflicts 	w/ an unauthorized user and likelihood of confusion 	is established the registrant is entitled to injunctive 	relief under Lanham
iv.	note: D was allowed to continue using in his area, 	but could not expand
h.	Springfield Tire & Marine v. Founders Tire & Marine
i.	facts - used the same picturization in ads
ii.	rule - one person can’t prevent another from using a 	service mark, unless it is likely to cause confusion
i.	Park ‘N Fly v. Park and Fly
i.	facts - P attempts to use incontestability
ii.	rule - action to enjoin infringement of an 	incontestable TM may not be defended on the basis 	that the mark is merely descriptive (would work if 	generic)
j.	Two Pesos v. Taco Cabana
i.	facts - Taco Cabana rocks!
ii.	rule - if trade dress of a restaurant is shown to be 	inherently distinctive, no proof of secondary 	meaning is required under Lanham
iii.	note: if it had to have secondary meaning, people 	could steal it right off the bat
iv.	note: TS violation as to restaurant plans as well

III.	PATENTS

A.	General
1.	Purpose - protects new, non-obvious, and useful inventions 	such as machines, devices, chemical compositions, and 	manufacturing processes.
2.	Application - must include specifications describing and 	precisely claiming the invention; claims are reviewed to 	determine if they meet the legal requirements of patentability; 	must include:
a.	id of inventors
b.	serial #
c.	file date - becomes prior art
3.	US Patent includes these sections:
a.	background - describes the problem to be solved
b.	drawing - if it can be drawn 
c.	claims -
i.	what is patented
ii.	examiner objects to, rejects, or allows the claims
d.	specification - everything but claims, it is basically the 	prior art
B.	Subject matter of patents
1.	Processes - means to ends
a.	must be new, useful, & non-obvious
b.	result of process have to meet these requirements, but it 	would kick ass if it did
c.	can’t be too broad to encompass an idea
i.	can’t patent the idea of making pants, but can 	patent a method for pressing pants
ii.	math formulas generally not patentable unless it is 	used for a specific application
iii.	process is not excluded from patentability b/c it 	involves a math formula
2.	Products - can fall in more than 1 category as long as it fits at 	least 1 (ex. petroleum digesting bacteria are manufactures & 	compositions of matter)
a.	machines
i.	may not be patentable if it incorporates too broad of 	a process, ex. computer that does arithmetic (this 	would monopolize thing already in existence)
ii.	process that incorporates a computer is patentable
b.	manufactures - anything made by a human, must have 	defineable structure that is claimed as its patentable 	characteristic
c.	composition of matter - chemicals, etc.
i.	basic substances composed into  a new, useful & 	non-obvious format 
ii.	essential that new discovery is not natures work
3.	Any new & useful improvement on above
4.	Exceptions (non-patentable)
a.	naturally occurring substances (concentrated of 	purified products are patentable as long as it doesn’t 	occur naturally in that form)
b.	printed matter (must be something about its structure 	hat is inventive, ex. tickets)
c.	business methods
d.	ideas, laws of nature, fundamental truths, mental 	steps, etc.
Note:  a strategy to protect a product is to get a patent on the 	functional portion, then after patent expires, get a TM on the 	non-functional as it may have acquired secondary meaning
5.	Cases
a.	Gottschalk v. Benson
i.	facts - P wanted to patent a method of converting 	binary-coded-decimal numerals into pure binary 	numbers
ii.	rule - a math formula, having no substantial 	practical application except in connection w/ a 	computer, can’t be patented
b.	Diamond v. Diehr
i.	facts - method for curing rubber using a computer
ii.	rule - subject matter otherwise patentable does not 	become unpatentable simply b/c a math formula, 	computer, or computer program is involved

C.	Standard test for non-obviousness (§ 103)
1.	Survey of the scope & content of prior art
2.	Examination of the difference b/n the invention & prior art
3.	Determination of the level of ordinary skill in the art
4.	Secondary considerations
a.	commercial success
b.	long-felt but unresolved needs
c.	existence of well established prior art
d.	experts express disbelief at discovery 	announcement
e.	later improvements on discovery
f.	contribution to industry
g.	look at invention as a whole
5.	“History of the art” subtest of obviousness
a.	how long art tolerated unmet need
b.	how long work was devoted to the problem
c.	how many researchers investigated the need
d.	whether more than 1 inventor concurrently solved 	the problem
e.	how much invention has replaced prior art
6.	Validity under §103 (obviousness) is a question of law
7.	Cases
a.	Eibel Process v. Minnesota
i.	facts - paper machine & gravity
ii.	rule - the fact that one’s invention to remedy the source of trouble or defect in an existing process or machine involved discovering the theretofore unknown source of trouble or defect is evidence that the remedy was not obvious, involved discovery and invention, and is thus patentable
b.	Graham v. John Deere
i.	facts - D said P’s patent was invalid b/c there was 	no new result in the patented combination
ii.	rule - 3 conditions of patentability are non-	obviousness, novelty, & utility, there is no 	requirement that there be a new result in a 	combination to be patentable 
iii.	rule - the court rejected the “flash of genius” test
c.	Cuno v. Automatic Devices
i.	facts - automobile cigar lighter
ii.	rule - a new application of an old device is 	patentable if the result claimed as new is the same 	in character as the original result, even though the 	new result had not been contemplated before
iii.	rule - established the “flash of genius” test for 	obviousness (later rejected)

D.	Novelty & Statutory Bar (§ 102)
1.	Terms
a.	anticipation -  concerns events that occur prior to 	registration
b.	statutory bar - concerns events occurring 12 months 	prior to patent application
c.	“That which infringes, if later, anticipates, if 	earlier”  Haliburton
2.	Anticipation events
a.	domestic
i.	prior patent
ii.	printed publication (computers, microfilm)
iii.	knowledge (not secret, unless classified)
iv.	unabandoned, unsuppressed, unconcealed 	invention by others (must be diligent)
v.	use by others (reduction to practice, not have to be 	public)
vi.	description in another’s previously filed and 	eventually granted application
b.	foreign (exclusively documentary, must be sufficiently 	available, or at least potentially so, to those 	knowledgeable in the art)
i.	prior patent
ii.	printed publication
c.	test for anticipation (mirrors infringement test)
i.	must be substantially the same
ii.	whether enough has been disclosed to allow a 	person skilled in the art to duplicate
3.	Statutory bar events (12 months prior to patent application, 	designed to award diligence)
a.	domestic
i.	prior patent
ii.	printed publication (degree of publicity considered, 	ex, uncatalogued thesis)
iii.	public use (even if by inventor, test do not count)
iv.	sale (experimental use defends this)
v.	abandonment (or failure to pursue diligently, only 	bars abandoner)
b.	foreign
i.	prior patent
ii.	printed publication
iii.	prior patent app by applicant (but only if patent 	granted prior to domestic application)
4.	Reference to prior art (§ 112)
a.	reference - patent offices citing of prior publications
b.	enabling disclosure - occurs if reference enables a 	person w/ ordinary skill in the art to duplicate the 	invention (multiple references can be used)
c.	date of prior art is filing date
5.	Priority (2 or more inventors)
a.	factors
i.	time of conception - 1st to conceive generally has 	priority
ii.	diligence - triggered just prior to conception by 	junior
iii.	reduction to practice - junior can never challenge 	senior unless he reduces to practice first
A.	making a prototype; or
B.	filing patent application (constructive 	reduction to practice) 
Note:  senior has priority over junior, unless junior reduces to practice first, and senior did not use continuos and due diligence just prior to juniors conception
6.	Cases
a.	Kalman v. Kimberly Clark
i.	facts - filtering heat softened substance
ii.	rule - to establish anticipation of a patent claim 	under §102, it must be shown that every element of 	the claim in issue was found in a single prior art 	reference, or that the claimed invention was 	previously known or embodied in a single prior art 	device (?)
b.	Titanium Metals v. Banner
i.	facts - alloy in Russian article
ii.	rule - a fundamental condition of a patent is that 	what is sought to be patented, as determined by the 	claims, must be new
c.	TP Labs v. Professional Positioners
i.	facts - tooth positioner
ii.	rule - the use of the invention by the inventor 	himself, or by any other person under his direction, 	by way of experiment, has never been regarded as 	public use
d.	City of Elizabeth v. American
i.	facts - paving substance
ii.	rule - the use of the invention by the inventor 	himself, or by any other person under his direction, 	by way of experiment in order to bring the invention 	is not regarded as “in public use”, even though it 	was used in public
e.	UMC v. US
i.	facts - aviation accelerometer
ii.	rule - reduction to practice is not always a 	requirement of the “on sale” bar of §102
note:  can’t get an injuction to keep the US gov’t from 	using a patented product
f.	Egbert v. Lippman
i.	facts - corset steels
ii.	rule - if an inventor gives his invention to another to 	be used w/o restriction or limitation and it is so 	used, this places the invention in public use
g.	US v. Adams
i.	facts - water batteries
ii.	rule - belief in industry that something won’t work is 	evidence of non-obviousness
iii.	rule - can’t enjoin gov’t from using a patent, but can 	get royalties and lost profits
i.	Application of Papesch
i.	facts - anti-inflammatory chemical compound
ii.	rule - patentability of a chemical does not depend 	only on the similarity of its formula to others, but 	also the compounds themselves, as evidenced by  	characteristics

E.	Sources of Prior Art
1.	Printed publications
2.	Testimony & statements of skilled practitioners
3.	Patent applications - non-published until granted, if it is 	abandoned or rejected it never becomes public, therefor:
a.	valid for use in determining novelty even if non-	published b/c § 102 deals w/ anticipation, whether 	invention “existed” before
b.	questionable for use in determining non-obviousness 	b/c question asks whether practitioner could‘ve thought 	the invention was obvious relying on available sources
c.	however, in practice almost all prior art used in 	determining novelty is used in determining obviousness
4.	Constructive anticipation - patent apps w/ earlier app dates will 	bar a patent for lack of novelty even if the earlier app is not 	granted b/c of anticipation (as long as app was not abandoned, 	suppressed, or concealed)
5.	Constructive prior art - patent app may become constructive 	prior art to an already granted patent b/c they do not grant 	patents in the order received, this is not a problem for rejected 	or abandoned patent apps b/c they never become public

F.	Utility (§ 101)
1.	Utility requirement derived from:
a.	constitution - “useful arts”
b.	Patent Act - gives protection only to useful inventions
2.	Illegal or immoral items not patentable under this requirement
3.	Benefit is measured qualitatively, not quantitatively; ex. 	ineffective drug not patentable even if many gullible patients 	use it
4.	Utility must be disclosed in the patent, can’t be presumed
5.	Must be specific & substantial

G.	Assignment & Licensing of Patents
1.	Assignments
a.	assignment - essentially a sale of a patent
i.	recorded in patent office
ii.	future inventions assignable by K
b.	joint ownership allowed - all have full rights w/o 	answer to others (unlike copyright)
c.	accrued causes of action must be assigned w/ 	patent - if not, transferee can’t sue
d.	no warranties on assignment
i.	no implied warranty of validity of patent
ii.	no implied warranty that practice of patent won’t 	infringe another
e.	assignor estoppel - if you assign a patent, you can 	never argue it’s invalidity
2.	Licensing
a.	licensing -  essentially an agreement not to sue
i.	sole license - issued to one other party
ii.	non-exclusive - license to many people
iii.	exclusive - only licensee has rights, licenser won’t 	license to anyone else 
b.	terms
i.	time limits
ii.	territorial limits
iii.	field of use limits - ex. can make cars not trucks
note: licensor should always make license non-	transferable to control ownership
c.	not warrantied in license agreement:
i.	validity of patent
ii.	ownership of patent by licensor
iii.	police for infringement by patentee
iv.	patentee won’t license to someone else
v.	practice won’t infringe other patents
vi.	licensor won’t deal w/ your competitors
vii.	licensee will make the product (is implied in an 	exclusive license)???????
ix.	licensee can sue patent owner to invalidate patent
note: licensee should include a provision for 	infringement suits
d.	licensing don’ts
i.	can’t condition a license on purchase of non-	patentable items, or another patent (this would 	extend the patent beyond its intended scope) 	except if licensee want to license a package of 	patents
ii.	can’t require license that extends beyond patent life
iii.	can’t require licensee not to deal w/ anyone else 	(anti-trust implications)
e.	types of ownership
i.	in entirety
ii.	undivided interest - joint ownership
iii.	territorial assignment

H.	Litigation
1.	Allegations for patent suit - FRCP form 16
a.	jurisdiction
b.	patent ownership
c.	infringement
d.	can allege patent marking (optional)
2.	Jurisdiction - 28 USC 1338
3.	Venue - anywhere there are min contacts (28 USC 1391)
4.	Patent claims - each claim must be addressed, but don’t have 	to address each claim in complaint
5.	Government suppliers are immune from infringement actions 	(only on products supplied for gov’t)
6.	Defendant must allege
a.	any invalidity arguments
b.	non-infringement
c.	exhaustion
e. 	intervening rights (rights can develop during reissue)
note: a license is an affirmative defense
7.	Plaintiff - has burden of proving infringement
8.	Inequitable conduct (equitable estoppel)
a.	doing something so bad in getting patent that courts 	won’t enforce
b.	must prove patentee failed to disclose something 	material to patent office
9.	Latches - can only get damages for last 6 years of infringement
Note:  you don’t go to trial for patent infringement very often, average expense in $1mil for P & $2mil for D

I.	Patent Infringement (35 USC § 271)
1.	Types of infringement
a.	direct 
i.	violation of 1 of 4 rights
ii.	knowledge not required
iii.	§271g - importing product made by patented 	process
b.	indirect / inducer - encouraging or inducing infringement
c.	contributory
i.	making a non-staple component that only has use 	in the patented product (specially made for the 	product)
ii.	§271f - supplying substantial components in or from 	US that actively induce infringement
ii.	must have a direct infringer
2.	Infringeable rights
a.	making
b.	using
c.	selling
d.	offering for sale
3.	Determining infringement is a 2 step process
a.	determine meaning and scope of claims infringed
b.	compare claims to infringing device
4.	Doctrine of Equivalents - protects the patentee from a device, 	composition, or process which performs substantially the same 	function as the patented thing in substantially the same way to 	achieve the same result (only in US)
a.	equivalents are broader if you don’t have to amend 	the claim to get it through patent office
b.	equivalents narrower if you do
i.	prosecution history estoppel - dominates over 	equivalents
ii.	file wrapper estoppel
iii.	can’t re-broaden later
c.	must have substantial changes to avoid 	equivalents
d.	“insubstantial change” & “interchangeability” are 	measured by person w/ ordinary skill in the art
e.	other countries only have only literal infringement
note: no infringement if product is limited to prior art
5.	Means clauses - means to function (§112) does not limited to 	specifications, any means to do function; if there is a means 	clause, must look to specifications to see if infringing 	application has the same:
a.	function
b.	result
c.	equivalent structure
6.	Cases
a.	Grover v. Linde (seminal case for equivalents)
i.	facts - D substituted equivalent chem for 1 in patent
ii.	rule - doctrine of equivalents is applied to 	mechanical or chemical equivalents in 	compositions or devices
iii.	rule - can’t cheat someone out of their patent by 	making small insubstantial changes b/c claim may 	have equivalent embodiment; equivalent of means, 	function and result
iv.	used function, way, result test
b.	Exhibit Supply v. Ace
i.	facts - pinball machines
ii.	rule - recourse may not be had to the doctrine of 	equivalents to recapture claims which he patentee 	has surrendered by amending his patent claims
c.	Hughes Aircraft v. US
i.	facts - gov’t infringed P’s patent with a product that 	performed the same function w/ the same result
ii.	rule - under doctrine of equivalents, in determining 	equivalents, things equal to the same thing may not 	be equal to each other, and things for most 	purposes different may sometimes be equivalents
d.	Markman v. Westview Instruments
i.	facts - jury applied incorrect legal standard
ii.	rule - determining scope of patent claim is a 	question of law (judge decides), equivalents is a 	question of fact
e.	Hilton - Davis
tried to get rid of jury to decide equivalents, but didn’t
J.	Reissue & Re-examination
1.	Reissue of defective patents (§251)
a.	applicant - does not have to be inventor, just owner
b.	life of patent is not extended
c.	surrender - takes place on reissue of issued patent
d.	identical claims -  have continuation of rights
e.	different claims - question of whether person can 	continue in intervening period
f.	intervening rights develop
2.	Cases on Reissue
a.	Ball v. US
i.	facts - patent infringement suit v. gov’t
ii.	rule - a claim is broadened, in regards to reissue, if 	it is so changed as to bring w/in its scope any 	structure which was not w/in the scope of the 	original claim
iii.	rule - recapture rule bars patentee from acquiring, 	through reissue, claims that are of the same or 	broader scope than those claims that were 	canceled in the in the original application
iv.	note:  can only broaden if w/in 2 yrs of original 	patent
v.	note: can “nudge up” against original patent claims
b.	Seattle Box v. Industrial Crating
i.	facts - oil pipe bundling
ii.	rule - an original patent can’t be infringed once a 	reissue patent has been issued b/c the original 	patent is surrendered
iii.	rule - doctrine of intervening rights provides that 	b/c of reissue activity, an infringer might enjoy a 	personal intervening right to continue what would 	otherwise be infringing activity after reissue (this is 	a rule of equity
3.	Re-examination
a.	purpose is to invalidate a patent (could be cheaper 	than litigating against infringement)
b.	can be filed by anyone (§ 302)
c.	prior art for re-examination (§ 301)
d.	intervening rights issue (§ 307b) (H has never seen one)
e.	patentee upheld 2/3 of the time on re-examination
f.	challenger only gets written reply, patentee gets 	personal contact
4.	Cases for re-examination
a.	In Re Etter
i.	facts - suit against patent office
ii.	rule - 35 USC § 282 is not applicable to claims 	about which a substantial new question of 	patentability is under consideration in a re-	examination proceeding                                      	(no presumption of validity)
	
K. 	GATT on Patents
1.	Changes made
a.	term of patent
i.	20 years after filing date if after June 8, 1995
ii.	if filed before June 8, 1995 then choice of:
A.	17 years from issue date
B.	20 years from filing date
b.	provisional applications now allowed
i.	does not have claims
ii.	disclosure still must meet §112
iii.	1 year to file real app after this
c.	20 year term can be extended if
i.	involved in interference proceeding, or
ii.	successful appellate review
note:  because these take a long time
d.	Amendment of § 104
i.	allows member of WTO to prove priority of 	invention for acts that take place in their country
ii.	b/c their country is first to file, ours is first to invent
iii.	we can’t do it in reverse

IV.	TRADE SECRETS

A.	General
1.	Trade secret - any information which is competitively valuable 	and not generally known by others; it may be slightly leaked, but 	not published, and does not have to be novel ,new, or unique
2.	Purpose of TS law - to protect secret business information 	from unauthorized use or disclosure by one who obtained it 	through improper means or through a confidential relationship
B.	2 distinct principles of TS
1.	Property interest in secret business information
a.	learning the secret improperly is a violation
b.	reverse engineering is not improper, it’s 	encouraged
2.	Duty to respect the confidentiality of information
a.	use of a secret by a 3rd party, learned through 	someone who was supposed to keep it confidential 	is a violation, unless
b.	the 3rd party has paid for the information, or
c.	the 3rd party has detrimentally relied on the use of 	the TS to such an extent that it would be 	inequitable to stop the use