summary of PATENT, TRADEMARK, COPYRIGHT, TRADE DRESS & TRADE SECRET MATTERS

Transcription

1 summary of PATENT, TRADEMARK, COPYRIGHT, TRADE DRESS & TRADE SECRET MATTERS Charles S. Sara, Esq. Intellectual Property Department Copyright 2011 All Rights Reserved Two East Mifflin Street, Suite 600 Madison, WI p: e:

2 TABLE OF CONTENTS INTRODUCTION... 1 PATENTS... 2 Reasons for Obtaining a Patent... 2 Definition of a Patent... 2 Term of a Patent... 2 Patentable Subject Matter... 3 Inventorship... 3 Obtaining a Patent... 3 Records of Invention... 4 Loss of Rights... 4 Confidential Disclosure Agreement... 4 Patent Search... 4 To Get Started... 5 Patent Application... 6 Filing in the PTO... 6 Provisional Patent Applications... 6 Prosecution in the PTO... 8 Issuance of Patent... 8 Small Entity Status... 8 Other Points to Consider... 8 Foreign Patents... 9 TRADEMARKS Definition Functions of a Trademark Selection of a Trademark Trademark Search Eligibility for Federal Registration Advantages of a Federal Trademark Registration Points to Consider Term of a Trademark Intent to Use Applications TRADE DRESS Definition Trade Dress Protection Requirements for Valid Trade Dress Trademark Protection for your Trade Dress i

3 COPYRIGHTS Definition Copyrightable Subject Matter Subject Matter Not Copyrightable Ownership and Use Issues Rights Conferred on Copyright Owner Copyright Notice Collective Works Obtaining a Copyright Federal Registration Duration of Copyright TRADE SECRETS Definition Purpose Of A Trade Secret Knowing If You Have A Trade Secret Is It A Trade Secret? Is it Information? Does The Information Have "Economic Value"? Are Reasonable Efforts Being Used To Maintain Secrecy? Trade Secrets Protection Plan Handling Unsolicited Submissions Of Trade Secrets Confidential Disclosure Agreement ii

4 INTRODUCTION Intellectual property rights are often the cornerstone of a successful business. Properly protecting these rights can significantly improve your business worth. Likewise, their loss or misuse can be devastating. Intellectual property exists in a variety of forms including: Patents the right to exclude others from making, using, selling, or offering to sell an invention for a limited time. Trademarks any word, name, or symbol which is adopted and used by a merchant or service provider to identify its goods or services and distinguish them from those manufactured or used by others. Copyrights the right to prevent others from copying the form of expression used by the creator of certain types of work. Trade Secrets information known to you or your company but not known to others, which gives you a commercial competitive advantage over them. 1

5 PATENTS Reasons for Obtaining a Patent Patent protection is often the best means of protecting the assets of a business. Obtaining a patent, or in some cases even applying for a patent, can be advantageous, especially in competitive industries. This is particularly true when a considerable investment is made to provide the tooling and necessary expertise to manufacture an article. In this case, patents provide a deterrent to prevent competitors from cashing in on the fruits of your labors. For a limited time, the patent owner should be able to reap some benefit from the invention. In sum, patents may guarantee a profit by limiting the competition. Patents are also useful to a business for their bargaining potential. Like other forms of property, patents can be bought, sold, leased (licensed), and given away. Each of these avenues gives the patent owner greater flexibility in developing a business. Definition of a Patent A patent is a document which fully discloses an invention and establishes the rights of an inventor. The patent gives the owner the right to exclude others from making, using, selling, or offering to sell the invention for a limited time (see next paragraph). Term of a Patent Patent protection begins when the patent issues. However, the term of protection of a U.S. patent is 20 years from the filing date of the patent application. Because the patent prosecution time (the time required for the U.S. Patent and Trademark Office (PTO) to examine the patent) varies depending on the application, different patent applications will now have different terms of protection. Therefore, the longer the PTO needs to examine the patent, the shorter its term. 2

6 Patentable Subject Matter The invention must be a process, a machine, an article of manufacture, or a composition of matter. Inventorship U.S. patents are granted only to the true inventor. The correct listing of inventors is very important for the patent application. Patents have been invalidated for failure to name the proper inventors. Inventorship occurs when the inventor is the first to conceive the invention. "Conception" is defined as the formation in the mind(s) of the inventor(s) of a definite and permanent idea of the complete and operative invention. One cannot become an inventor by suggesting a desired end or result, without suggesting a way to accomplish that result. One also cannot become an inventor by merely following the instructions of the person or persons who conceived the solution. If two inventors independently invent the same invention, the U.S. patent will be granted to the person who was the first to conceive the invention, so long as the inventor is reasonably diligent in reducing the invention to practice and does not suppress, i.e., hide, the invention. This is true even if the second inventor was the first to reduce the invention to practice or file a patent application. A joint invention occurs when two or more persons, working together, each contributes to the "conception" of the solution to a problem that constitutes the invention. Obtaining a Patent Obtaining a patent involves following an established procedure prescribed by the United States Patent and Trademark Office (PTO). In order to understand this procedure, it is important to be aware of the requirements that must be satisfied. The most important requirement is that the invention must be new and unobvious. In other words, the invention cannot have been disclosed in the prior art (issued patents, journal articles, etc.), and it would not have been obvious to 3

7 combine already developed inventions or their disclosures to end up with the invention. Records of Invention The inventor should make careful records of the invention, including sketches, drawings, and written descriptions. At least two witnesses who understand the invention should sign and date the disclosure papers as early as possible. All records should be carefully guarded. Loss of Rights U.S. patent rights may be lost by a sale, an offer for sale, or a public disclosure of the invention more than one year before the patent application is filed. Foreign patent rights may be lost if any of the above activities takes place at any time before the U.S. patent application is filed. Confidential Disclosure Agreement Confidential Disclosure (or Non Disclosure) Agreements are intended as a first line of defense to protects rights to intellectual property. Basically, the Agreement states that the discloser will be willing to make available to the recipient designated in the Agreement all information which will be useful for evaluating the invention. The Agreement provides that any information furnished will be held in confidence. This does not include information which is considered to be in the public domain at the time of the disclosure, or any information that would be in the possession of the recipients. The Agreement is to continue in full force until it is terminated by either party. That is, at any time, the discloser may write to the recipient and terminate the Agreement and request the recipients to return the disclosure information. Returning the disclosure information should not relieve the recipient of the responsibility to keep the information in confidence. Patent Search 4

8 To determine if an invention is new and unobvious, a search should be conducted in the PTO to locate all patents and articles which are similar to the subject invention. Although not infallible, the search is a good and relatively inexpensive way to determine the prospects of obtaining a patent on the invention. If we find that the invention is old, we will recommend that a patent application not be filed because such an application would be rejected by the PTO. On the other hand, if we do not find sufficiently similar references in our search, we would recommend that a patent application be filed on the invention. Our opinion is based on a search conducted of all relevant prior art in the PTO. However, the search records may be incomplete, and as many as 20% of the patents in a particular category have been found to be missing. Thus, important references which may anticipate the novel features of the invention may not be found in a search of the PTO records. Such relevant references that are missing from the public records may be found when the official search is conducted. In our experience, however, this situation is uncommon, and there is usually a good likelihood of obtaining a patent if, after we have examined the prior art, we recommend filing a patent application. To Get Started In order to get started, we need to have at least a general idea of the invention and the inventor's concept of its novelty. We suggest the following: 1. Provide a write up of the most preferred form of your invention, preferably in Word, describing it so completely that a person of ordinary skill in your field would be able to make and use the invention. Supply the make and model numbers of any key components of your invention, along with the name of their manufacturers and the city, state, and country where they are located. Include any drawings that would be necessary or helpful for fully understanding how to make and use your invention. 2. Provide brief descriptions of alternate forms of your invention, that is, of changes and modifications that can be made to your invention to 5

9 enhance its utility or salability (even if these changes do not appear to be particularly cost effective at present). 3. Let us know of any similar inventions out on the market today. This can be done by referring us to magazine articles, advertisements, etc. Patent Application A patent application is a detailed disclosure of the invention showing precisely how its structure or process produces the desired advantages over the prior art. Once the application is prepared, the inventor reviews it to see that it conforms to his/her impression of the scope and detail of the invention. When satisfied, the inventor must execute a declaration establishing that he/she is the true inventor. Filing in the PTO Once the application is executed, it is filed. If the inventor qualifies under "Small Entity Status," all of the government fees are reduced by one half. Provisional Patent Applications A provisional patent application differs from a regular "utility" patent application in several respects, and is somewhat similar to a Disclosure Document. It does not issue as a patent and cannot convey any patent rights, though it provides certain priority benefits to those who later file "regular" patent applications. To file a provisional application in the PTO, the applicant need only provide a written description of the invention, any drawings that are necessary to understand the invention, and a fee which is substantially lower than that for a regular application. No claims or declaration are necessary. A provisional patent application will not provide you with any patent rights. Rather, it reserves your priority of inventorship for one year, provided you file a "nonprovisional" utility patent application before that year expires. It is this later utility application which can issue as a patent and provide you with patent rights. The provisional application becomes abandoned unless a regular application is filed within one year from the filing of the provisional application. During this 6

10 year, the applicant may perform product testing, seek financial backing, etc., before deciding whether to file a regular application. If the regular application is filed within the one year period, it effectively obtains the provisional application's filing date. This earlier filing date is helpful if the applicant's priority of invention is later challenged. When a patent issues on the regular application, the 1 year period during which the provisional application was pending does not count against its patent term. Applicants can file the same or very similar provisional applications in staggered fashion over the course of a year or more. By following this procedure, an applicant could delay the filing of a regular application for whatever reason (e.g., product development) while always being able to potentially claim up to one year of priority when a regular application is eventually filed. If you want to obtain foreign rights to your invention, any foreign utility patent applications should also be filed within one year of the provisional patent application filing date in order to receive the full benefit of the provisional application. Please contact me if you would like to receive information regarding foreign patent protection. It is important not to delay preparation of foreign utility applications until the last moment. Foreign utility applications take time to prepare, and they often must be filed by foreign agents who are nationals of the countries wherein the filings are made. These foreign agents often impose substantial surcharges for their services if they do not have at least 1 2 months to file the application(s). Therefore, we strongly suggest that you begin considering your foreign options early so that any foreign utility applications can be filed well before the one year date. The PTO allows a regular patent application to be converted to a provisional application provided that the request to convert is made within 1 year of its filing date. This may initially seem undesirable because the filing fee for a provisional application is lower than that of a regular application. However, this procedure may in some cases buy an applicant up to a year of additional time if the results of initial examination are adverse, and the applicant wishes to revise and refile a regular application without losing his/her priority rights. 7

11 Prosecution in the PTO After the application is filed, the PTO conducts its own search of the prior art and often requires us to make legal arguments distinguishing the invention from the references found by the PTO. Slow responses to PTO correspondence will reduce the life of your patent. Although the PTO typically allows 3 months to respond to official correspondence (called an Office Action) without penalty, we can respond sooner with your prompt answers to our requests for information. Issuance of Patent If the PTO decides that the application should be granted, another government fee (an issue fee) is charged. Finally, to keep the patent in force after the patent has issued, maintenance fees must be paid after 32 years, 72 years and 112 years. Small Entity Status To qualify for small entity status, you must be an independent inventor, a small business concern or a non profit organization. For filing in the United States, a small business concern is a company whose number of employees, including those of its affiliates, does not exceed 500 persons. The definition of a small business concern varies for other countries. Other Points to Consider If someone makes, uses or sells the patented invention without the patent owner's permission, the patent owner must bear the cost of suing the infringer of the patent in court, which may be expensive and time consuming. In addition, in such a lawsuit, the validity of the patent may be attacked and the court may declare the patent to be invalid for a variety of reasons. If you suspect that your patent is being infringed, you do not have to wait until an actual sale of the infringing article has occurred to sue. An offer to sell is now within the definition of infringement. 8

12 These risks are included here not for the purpose of discouraging anyone from applying for a patent, but rather to make the inventor aware that there is no guarantee that the financial investment made in applying for a patent will result in a substantial return. Even with all these uncertainties, over 100,000 patent applications are filed every year. Foreign Patents It is important to know that an application for patent in the United States, when it matures into a patent, provides protection for the invention throughout the United States and its territories only. If protection of the invention is desired in any countries outside the United States, it will be necessary to file additional applications covering each country or group of countries in which the protection is desired. The foreign applications should be filed within one (1) year from the date upon which the U.S. application was filed. This one year period is very important, since international treaties provide certain valuable advantages which are lost if the foreign applications are filed even one day after the one year period has expired. 9

13 TRADEMARKS Definition A trademark is defined as any word, name, symbol, or device or any combination of these which is adopted and used by a manufacturer or merchant to identify its goods or services, and distinguish them from those manufactured or sold by others. A service mark identifies the sale or advertisement of services. Functions of a Trademark The functions of a trademark are to: 1) indicate the origin of the goods or services; and 2) to guarantee the quality of the goods bearing the mark. Selection of a Trademark The mark should be: 1) arbitrary and unique; 2) short and simple; and 3) catchy. The mark should not be: 1) the same or similar to a previously existing mark; 2) descriptive or misdescriptive of the goods; 3) geographically descriptive; or 4) a surname. Trademark Search After the mark has been selected, a search should be conducted in the trademark records to see if any similar marks are being used. The search takes into account all phonetically similar marks of similar goods and services. The search report will let the client know whether the chosen mark is available for use. Eligibility for Federal Registration The mark must be in use in interstate commerce at the time the application is filed or there must be a bona fide intent to use the mark. Once the mark has been cleared for use, it should be developed and used on the goods or services. 10

14 Advantages of a Federal Trademark Registration Some of the advantages of federal registration are as follows: 1) establishes exclusive rights to the mark; 2) provides a cause of action in the federal courts for a trademark infringement; and 3) provides potentially infinite protection of the mark so long as goods are sold under the mark. Points to Consider 1. If the mark is being used and if it is an important part of the business, seek federal registration. 2. If anyone else is using (infringing) the mark, act immediately to stop that use. It is very important to stop unauthorized use of the mark immediately and to prevent the use of the mark in a generic sense. Marks, such as cellophane, aspirin, and escalator, were lost because of this. 3. The mark must remain in active use, or it is subject to cancellation. 4. Make the mark distinctive: quotation marks, capital letter, italics, etc. 5. Never use the mark as a noun. Always combine the mark with the generic name of the product, i.e., SCOTCH J brand tape. 6. Do not vary the use of the mark, i.e., different spellings, display. 7. Use the trademark notice: Registered mark: 1) Registered in U.S. Patent and Trademark Office; 2) Reg. U.S. Pat. and Tm. Off.; or 3) the encircled R: 7 Unregistered mark: 1) Trademark of ABC Company (or Service Mark of ABC Company) 2) Superscript TM or SM: PHOTO USA SM or SCOTCH TM 11

15 Term of a Trademark The term of the trademark registration is 10 years. Similarly, the renewal term is for 10 year periods. There is no limit to the number of renewal terms. Intent to Use Applications Applications may be filed based on actual use of a mark in interstate commerce as well as applications based on a bona fide intent to use a mark in interstate commerce. Actual use of the mark will not be required prior to the filing of the application. However, actual use will be required prior to issuance of the registration. Although you can expect increased costs with the intent to use procedure, the cost should be outweighed by the benefits to your business. This procedure is intended to reduce the uncertainty that is faced when investing substantial time and money in developing a product and bringing it to market without any assurances that a trademark registration will be secured. An application can be filed before such a significant investment is made, provided the applicant, in fact, intends to use the mark. Filing an application (whether a use based or intent based application) constitutes constructive use of the mark as of the filing date of the application, and confers a nationwide right of priority subject to three specific exceptions. In other words, the filing date of an application for registration on the Principal Register is equivalent to a nationwide date of first use. The nationwide right of priority is fixed as of the date of the filing of the application, rather than the later date of issuance of the registration as under current law. This constructive use provision could be of substantial benefit to a trademark applicant who has shipped its product to only a limited market area. The provision would give the applicant a nationwide right of priority subject to limited exceptions, despite the fact that the applicant had actually only shipped its products to one or two states. 12

16 TRADE DRESS Definition The term "trade dress" refers to a product's overall image, including its size, shape, color, graphics, packaging, and label. The protection of trade dress is encompassed within the Lanham Act (federal trademark law) because under the definition of "trademark", a registrable trademark may include a "device". You do not need to register your trade dress as a trademark in order to protect it from copying, though federal trademark registration has certain definite advantages (which will be discussed below). Trade Dress Protection Trade dress protection is limited in scope. It only prevents competitors from specific types of copying. First, it prohibits copying where a competitor imitates your product and makes it available to customers in such a manner that they think it is your product, or makes them unsure as to whether it is your product. Trade dress protection also prohibits a competitor from selling a product which is so similar to yours that customers instead might think that the product belongs to the competitor and that you are the copier. In short, and to use the language of trademark law, trade dress protection only allows you to prevent others from selling products which are so similar to yours that consumers would be confused as to the source of such products, even if they do not know who or what the source is. The function of the law is to prevent copiers from counterfeiting or "palming off" copied products as those of someone else. Note that the result is that trade dress protection mainly protects the "identity" of the product. If a competitor devises a product which functions like yours and even looks very much like yours, the competitor is free to do so as long as customers do not confuse it with your product. 13

17 In addition, trade dress protection is expressly prevented from protecting the "primarily functional" features of products, that is, those features which are "utilitarian" and reasonably necessary to the effective use and competitive sale of products. This is one disadvantage of trade dress protection as compared to patent protection, which protects the functional or utilitarian features of an invention. Requirements for Valid Trade Dress If your trade dress is infringed, there are certain hurdles that must be overcome in order to halt the infringement. These hurdles effectively amount to requirements for having protectable trade dress. Initially, you must be able to prove that you use and own the trade dress. This is generally not a problem unless someone contends that they were using the same trade dress first. Second and more importantly, you must be able to show that your product is either "inherently distinctive" or that it has acquired "secondary meaning". These terms mean that your product must have a unique enough appearance or "identity" that those who see it would understand that the product comes from one source, even if they do not know the source is you. To elaborate, "inherently distinctive" trade dress has a unique appearance which is so different from the trade dress of similar products that consumers would instantly realize that your product comes from a single unique source. For your trade dress to have "secondary meaning", it generally means that the trade dress of your product, while not inherently distinctive, is widely known to customers as signifying a distinctive brand of product that comes from a single source. The main difference between "inherent distinctiveness" and "secondary meaning" is that inherent distinctiveness generally simply exists without any effort on your part as soon as you put the product on the market, whereas secondary meaning is established by advertising and marketing efforts. 14

18 Trademark Protection for your Trade Dress As noted above, trademark protection for your trade dress is a possibility you may want to consider. You can obtain several advantages by registering the trade dress as a trademark rather than leaving it unregistered. First, registered trade dress is presumptively "valid" unless an infringer proves otherwise. This is to be contrasted with unregistered trade dress, wherein you would be required to prove that the trade dress is "valid" by showing that you owned the trade dress and used it in interstate commerce. While this may sound like a simple matter, sometimes such proof is difficult to demonstrate and expensive to present. Second, after your trade dress has been registered for five years, you can apply for "incontestable status". In that case, an infringer is barred from even trying to allege that your trade dress is not a valid trademark. Also, with an incontestable mark, you would need not to prove inherent distinctiveness or secondary meaning in order to prove infringement. Since this is generally the most contested matter (and the most expensive to prove) in infringement suits, incontestable status provides a potent tool against infringement. 15

19 COPYRIGHTS Copyright protection is available for original works of authorship fixed in any tangible medium of expression which can be perceived, reproduced or otherwise communicated. That means paintings, books, catalogs, computer programs and training manuals. It is important to note that it is not the idea that is protected, it is the expression of the idea that is protected. Definition A copyright is the right to prevent others from copying the "form of expression" used by the creator of certain types of works. Copyrightable Subject Matter Copyrightable material must be original and must bear at least a minimum of creativity. The copyright does not protect the idea, but the exact expression of that idea. Therefore, an author can receive copyright protection for the way he/she expresses an idea on paper. This does not, however, extend to the idea itself. The copyright statute provides protection for a broad range of materials, including: A. Literary works, such as books and pamphlets; B. Musical works, including the accompanying words; C. Dramatic works, including any accompanying music; D. Pantomimes and choreographic works; E. Pictorial, graphic and sculptural works; F. Motion pictures and other audiovisual works; G. Sound recordings; and H. Computer programs, including mask works. 16

20 Subject Matter Not Copyrightable Copyrights do not extend to ideas, procedures, processes, concepts, principles, or any material which has entered the public domain (copyrights have expired). Ownership and Use Issues Copyright ownership is a very key issue since the copyright protection arises the moment the work is fixed in a tangible medium of expression. This gives the owner the right to exclude others from making or distributing copies of the work and from creating derivative works based upon the work. A. Sole and Joint Authors Generally, ownership of copyright vests initially with the author of the work. Two or more authors contributing to a work are considered coowners of the work, and each author individually owns an undivided share of the copyrights associated with that work. As such, if one of the owners' contributions would be considered as a "work made for hire" (See Section H below), then no further permission is required from the other owner to copy and distribute the work. As a practical matter, however, it would be best to obtain permission from all authors of a joint work which does not fall under the "work made for hire" doctrine prior to using the work. The more cautious approach is particularly warranted for the situation in which only one author grants permission to use the copyrighted work, but does so against the will of the other authors. Such a situation is fertile ground for potential litigation, which may include a challenge to the characterization of the work as a joint work. To be characterized as a joint work: (1) each of two or more authors must contribute to the work; (2) each author must intend the work to be a joint work; (3) each author's contribution to the joint work must be itself copyrightable; and (4) the individual contributions to the work must be merged into inseparable or interdependent parts of the whole. 17

21 B. Employer and Consultant The exception to joint authorship/ownership is works created by employees within the scope of their employment. In this case the employer is the owner of the copyright. The flip side of this is that if a person is not an employee, the hiring party does not own the copyright. This arises usually in instances where a moonlighter or independent contractor prepares a work (software, book, article) based on very specific input from a company. Upon completion, the work that gives the company its competitive edge is being marketed by the moonlighter to other companies, and it is then that the hiring company realizes that it does not own the software. Note: make sure you know your rights and who the owner is. C. "Work Made for Hire" A work is considered to be "made for hire" if the work is prepared by an employee within the scope of his or her employment. In this situation, the employer is considered to be the author and hence to own the copyrights in "works made for hire", unless agreed to otherwise in writing. Works specially ordered or commissioned for use as a contribution to a collective work (see below) are "works made for hire" only if expressly agreed to by a written instrument, such as a consulting agreement. Typical examples of works made for hire include: 1. a contribution to a collective work; 2. a part of a motion picture or other audio visual work; 3. a translation; 4. a supplementary work (i.e. introduction to a work); 5. a compilation; 6. an instructional text; 7. a test; 8. answer material for a test; or 9. an atlas. 18

22 D. Assignment The rights to works which are not made for hire, and which are therefore not owned by the employer, may be acquired by the employer. Any part of or all of the copyrights may be transferred by the copyright owner to the employer by assignment (note: assignments should be recorded in the U.S. Copyright Office). The assignments serve to effectuate such a transfer, and should be specific with respect to which copyrights are being transferred. E. Permission to Use the Copyrighted Material In the absence of an express transfer, a general permission to use a contribution in a publication is statutorily presumed to confer only the right to reproduce and distribute the contributed work as part of that particular collective work, a revision thereof, or a later collective work in the same series. F. Works in the Public Domain Permission is not required from the author of a contributed work where the work is in the public domain. A work may be in the public domain for several reasons. First, works of the United States government are not vested with copyright in the United States. To qualify, a work must have been prepared by an officer or employee of the federal government as part of the author's official duties. There is a fair amount of uncertainty in regard to whether works prepared under federal contract or grants are considered government works. Second, a work may entire the public domain due to a lapse in copyright by virtue of expiration, termination or, for works created prior to March 1, 1989, publication with a lack of formalities. The duration of copyright protection is discussed in detail below. Finally, works created prior to March 1, 1989, may enter the public domain due to a lack of formalities. For works created after January 1, 1978 but before March 1, 1989, notice requirements existed, but had some exceptions as outlined below. For works created prior to January 1, 1978, general publication without proper notice may have caused the work to enter the public domain. 19

23 Rights Conferred on Copyright Owner The copyright is a personal property right and, as such, is subject to various state laws and regulations that govern the ownership, inheritance, or transfer of personal property as well as terms of contacts or conduct of business. Transfers of copyright are normally made by contract. Any or all of the exclusive right is not valid unless the transfer is in writing and signed by the owner of the rights conveyed (or the owner's duly authorized agent). Transfer of a right on a nonexclusive basis does not require a written agreement. The copyright may also be conveyed by operation of law and may be bequeathed by will or passed as personal property by the applicable laws of intestate succession. Copyright Notice A. When Required For copyrightable works first published after March 1, 1989, notice is not required to obtain protection. For works created after January 1, 1978, but prior to March 1, 1989, notice is generally required, except where no more than a relatively small number of works were publicly distributed without notice, or where the work was registered within 5 years of publication accompanied by reasonable efforts to add notice to publicly distributed copies. For works prior to January 1, 1978, strict notice requirements existed. Although not currently required, it is highly recommended that any copyrightable work include some form of notice. Notice serves as a deterrent effect to ward off potential infringers, and may also be important with respect to some aspects of enforcement. 20

24 B. Types of Notices Generally, such notice is as simple as prominently including: (1) the word "Copyright" or symbol 8; (2) the name of the author; and (3) the year of creation. For example, the following is appropriate: Copyright XYZ Company 2006 All Rights Reserved A more detailed form of copyright protection is as follows: Copyright (8) 2006 XYZ Company. All rights reserved. No part of this document may be reproduced, stored in a retrieval system, or transmitted, in any form or by any means, electronic, mechanical, photocopying, recording or otherwise, without the prior written permission of XYZ Company. The notice should be placed on the inside cover page, in a manner which would give reasonable notice to the public of the claim of copyright. For works that are unpublished trade secrets, an appropriate notice would be something like the following: Copyright XYZ Company 2006 This work is a confidential, unpublished work created in It is a trade secret which is the property of XYZ Company. All use, disclosure or reproduction not specifically authorized by XYZ Company is prohibited. All rights reserved. Collective Works Publications, which include contributions from other authors, where the contributions constitute separate and independent works, are considered to be "collective works" for copyright law purposes. The copyright in the collective work as a whole is distinct from the copyright in each separate contribution. The copyright in the collective work would vest with the owner upon creation of the publication as a collective work. A single notice applicable to the collective work as a whole also operates as notice for each of the separate contributions to the collective work. Hence, an individual separate copyright notice is not required for each contribution used in publication. 21

25 Obtaining a Copyright Copyright protection is automatic and exists in a work from the moment the material is first fixed in a tangible medium. Hence, unlike patent law, federal registration is not required to secure protection for a copyrightable work. In order to obtain a copyright, the material must be fixed in a concrete mode of expression. Federal Registration Registration of a copyright with the U.S. Copyright Office is available in order to more fully protect the copyright owner. The federal copyright registration is a legal formality intended to make a public record of the basic facts of the copyright. It is also relatively inexpensive to obtain. There are certain advantages which accompany the registration. Among these advantages are the following: A. Registration establishes a public record of the copyright claimed; B. Registration is required prior to enforcing copyrights through an infringement lawsuit. C. If made before or within five years of publication, registration will establish prima facie evidence in the court of the validity of the copyright and of the facts stated in the certificate; Further, if a work is registered in a timely manner, the copyright owner obtains significant advantages. For example, the owner of a timely registered work is entitled to a presumption of ownership and copyright of the work, and may also be entitled to both statutory damages and attorney's fees in an infringement litigation. To be timely, registration for a work should generally be filed within three months of its first publication. If the work is unpublished, it must be filed prior to the commencement of any infringing activity against which it seeks to enforce the copyright. 22

26 Duration of Copyright Copyright protection for works created after January 1, 1978 generally extends from the date of creation until 50 years after the death of the author. For "works made for hire," the term is the shorter of either 100 years from creation or 75 years from publication. For works created but not copyrighted and not in the public domain before January 1, 1978, then the term is the greater of the life of the author plus 50 years or until December 31, For works created and copyrighted before 1978, but after 1950, protection exists for a first term of 28 years, and if renewed, for a second term of an additional 47 years. For works created and copyrighted before 1950, which were in their second term between September 19, 1962 and January 1, 1978 and were renewed during 1977, the second term is extended such that total copyright term is 75 years from date of first publication. Once the copyright expires, the work enters the public domain. 23

27 TRADE SECRETS Definition A trade secret is important information known to you and your company but not known to others. This gives you a commercial competitive advantage over your competitors. More formally, the U.S. Supreme Court has approved the following definition of a trade secret: A trade secret may consist of any formula, pattern, device, or compilation of information which is used in one's business, and which gives him an opportunity to obtain an advantage over competitors who do not know or use it. It may be a formula for a chemical compound, a process of manufacturing, treating or preserving materials, a pattern for a machine or other device, or a list of customers. This definition requires that trade secret information must (1) be used in one's business, (2) provide a competitive advantage, and (3) be a secret. Of the three requirements, the most important is secrecy. Trade secret law is governed primarily by state law, not federal law. Most states have adopted the Uniform Trade Secrets Act (U.T.S.A.). In Wisconsin, reference is made to the Wisconsin Statutes at section , which provides the trade secret material must be "information, including a formula, pattern, compilation, device, method, technique or process." The law provides civil remedies for misappropriating a trade secret. The remedies include injunctions to prohibit misappropriation or its continuation, monetary damages for loss caused by misappropriation, punitive damages, and attorney's fees. Wisconsin also has criminal statutes prohibiting its theft. 24

28 Purpose of A Trade Secret Trade secret laws exist to protect commercially valuable information (ideas, knowledge, etc.) that provides a business with a competitive advantage. Trade Secret laws are one aspect of "intellectual property" which generally protects intangible assets, and which also includes patents, copyrights and trademarks. Knowing If You Have a Trade Secret To determine whether the information is a trade secret, ask the following questions: A. Is the information known outside your business and, if so, to what extent? B. To what extent is the information known by employees and others involved in your business? C. What measures are being taken to guard the secrecy of the information? D. What value does the information have to your company and to competitors? E. How much money and effort were spent in developing the information? F. How easy would it be to get the information otherwise? If the secret is discoverable by independent research or reverse engineering, it may not be a protestable trade secret. Is it a Trade Secret? Three requirements must be met to qualify as a trade secret: A. The material must be "information." B. The information must have actual or potential "economic value" which is derived from the fact that it is not generally known to competitors nor readily ascertainable by proper means by competitors. C. The possessor of such information must take reasonable efforts to maintain its "secrecy." 25

29 Is it Information? Non limiting examples of information include formulas, patterns, compilations, programs, devices, methods, techniques, processes, corporate marketing programs, strategic plans, financial statements and employment records. Information also includes biological materials, food ingredients and other materials which embody information, customer lists, results of research, whether such results are positive or negative, i. e., knowledge that a particular process or approach will not work. Does The Information Have "Economic Value"? To qualify as a trade secret, the information must have economic value to the possessor and to competitors. The economic value can be potential value, not yet actually realized. Economic value can be a slippery definition. Answering the following questions can help: A. Was any money or effort expended by the possessor in developing the information? B. To what extent is the information known outside of the possessors business? C. How easy (or difficult) would it be to legally acquire or duplicate the information? 1. discovery by independent invention? 2. observation of an item in public use? 3. derivation from published literature? 4. obtaining through licensing agreements? Are Reasonable Efforts Being Used To Maintain Secrecy? The most important criterion for trade secret information is secrecy. The standard of secrecy that must exist to have a trade secret is two pronged: (1) whether the information alleged to be a trade secret is known or available, and (2) whether the trade secret owner takes affirmative steps to safeguard the confidentiality of the information. 26

30 If a trade secret is known or available, there is no legally recognizable trade secret. Therefore, to be protectable as a trade secret, the information cannot be known by the public. It cannot be disclosed in a book, magazine, in conversation, or in a patent. Trade Secrets Protection Plan If a company believes it has trade secret information, the law requires taking active measures to protect the information's confidentiality. Access to trade secret information should only be given to individuals needing to know the information to perform their jobs properly. Strict procedures in a few areas are not as important as an overall security plan. One must realistically determine and identify information deserving to be protected as a trade secret. The following steps should be includes in an overall trade secret protection plan: A. Memorialize the company's secrecy policy in writing. Distribute a written statement of your trade secret security policy. The statement should outline the information constituting a trade secret, provide some examples of how trade secrets may be lost, and provide an overview of the company's trade secret policy. The statement should be part of a written employee's agreement, which is signed by the employee. B. Educate employees. Make employees aware of the trade secret status of your company's information. Employees should be periodically reminded of their confidentiality obligation. C. Restrict access to trade secrets. To ensure that trade secret information is treated differently from nonproprietary information, you should physically separate the trade secret information from other information and restrict access to the former. D. Lock gates and cabinets. Institute security measures, which include locking gates and doors to restricted areas and storing trade secret documents in locked files. 27

31 E. Protect trade secret documents. Documents containing trade secret information must be protected aggressively since documents can easily be removed from a restricted area or secretly photocopied. Additionally, trade secret documents should be clearly labeled with a proprietary notice, such as the word "Confidential" or a like warning. Employees must know the meaning of that designation. F. Maintain computer secrecy. Restrict access to trade secret information stored on a computer system so that it is accessible only by means of password codes. Password codes should be changed regularly. G. Restrict office or plant tours. Limit the scope of your tours at your facilities. H. Screen speeches and publications. Avoid all unnecessary disclosure of trade secret information at trade shows and in magazine articles, publications or press releases and in public speeches. I. Dealing with third parties. To maintain secrecy while carrying on normal business relations, you should inform all outside parties of the confidentiality of any trade secret material disclosed and require that these parties sign a written confidentiality agreement before any trade secrets are revealed. Handling Unsolicited Submissions of Trade Secrets Often, individuals will send unsolicited ideas to a company for consideration. The ideas may or may not be protectable as a trade secret. Practically speaking, the solicitor usually does not have the finances or the management skills to commercialize the idea. The solicitor wishes to license or assign (sell outright) the idea to the company. Unless the recipient company takes measures to protect itself, the unsolicited information could be costly. It may be the basis for the institution of litigation for violation of the trade secret. 28

32 Companies should adopt strict guidelines for handling unsolicited submissions. As a practical matter, many companies will not consider unsolicited submissions unless (1) the solicitor has obtained a patent on the subject of the submission (in which case the patented device or method will be the subject of the submission), or (2) the solicitor is willing to sign a waiver of trade secret rights to the idea. To protect itself, a company should adopt at least a two step plan to handle unsolicited submissions: A. Require the solicitor to at least apply for a patent. This sets the limits on which the solicitor can receive protection. In other words, both the company and the solicitor will then know what the solicitor is trying to "sell" to the company. B. Absent a patent, require the solicitor to sign a waiver or release. The waiver absolves the company of all liability for any confidential relationship with the solicitor or the invention. When the patent or waiver is received, the company may examine the material and determine whether it may prove beneficial. Confidential Disclosure Agreement Confidential Disclosure (or Non Disclosure) Agreements are intended as a first line of defense to protect rights to intellectual property. Basically, the Agreement states that the discloser will be willing to make available to the recipient to be designated in the Agreement all information which will be useful for evaluating the invention. The Agreement provides that any information furnished will be held in confidence. This does not include information which is considered to be in the public domain at the time of the disclosure, or any information that would be in the possession of the recipients. The Agreement is to continue in full force until it is terminated by either party. That is, at any time, the discloser may write to the recipient and terminate the Agreement and request the recipients to return the disclosure information. Returning the disclosure information should not relieve the recipient of the responsibility to keep the information in confidence. A confidential agreement may be a stand alone agreement or part of a large contract. 29