Business Law and EthicsIntellectual Property

• Patent Eligibility (35 U.S.C. § 101):

  • Defines what constitutes patentable subject matter, including processes, machines, manufactures, and compositions of matter.
  • Example: A novel pharmaceutical compound can be patented, enabling the inventor to control its production and sale.

  Actionable Step: Conduct a thorough patentability analysis before filing a patent application to ensure your invention meets the criteria set forth in § 101.

• Novelty and Loss of Right to Patent (35 U.S.C. § 102):

  • An invention must be new and not previously disclosed to qualify for a patent.
  • Example: If an inventor publicly demonstrates their invention at a trade show, they must file a patent application within one year, or the invention becomes part of the public domain.

  Actionable Step: Keep detailed records of all disclosures and ensure timely filing of a patent application to preserve the right to patent.

• Non-Obviousness (35 U.S.C. § 103):

  • An invention must not be obvious to someone skilled in the relevant field.
  • Example: Incremental improvements to known technologies, such as minor modifications to household appliances, are often deemed non-patentable due to obviousness.

  Actionable Step: Obtain a thorough prior art search and legal opinion on non-obviousness before drafting and filing a patent application.

• Trademark Registration (15 U.S.C. § 1051):

  • Describes the process for registering a trademark with the U.S. Patent and Trademark Office (USPTO).
  • Example: A company registering a new brand name for a line of skincare products to ensure that no other entity can legally use the same name.

  Actionable Step: Perform a comprehensive trademark search and file an application with the USPTO, providing all required information and supporting documents.

• Likelihood of Confusion (15 U.S.C. § 1125(a)):

  • Prohibits the use of any mark that is likely to cause confusion with a registered trademark.
  • Example: If an existing company uses “GlowSkincare” and another company attempts to register “GloSkincare,” the USPTO may refuse the registration to prevent consumer confusion.

  Actionable Step: Evaluate potential conflicts by assessing the similarity of your proposed trademark with existing ones and consider both visual and phonetic similarities.

• Dilution (15 U.S.C. § 1125(c)):

  • Protects famous trademarks from uses that diminish their distinctiveness, even in the absence of consumer confusion.
  • Example: The use of the term “Google” for an entirely different product might dilute the unique recognition of the Google brand.

  Actionable Step: Assess the fame and strength of your trademark to prepare for possible dilution claims and ensure that your use of a well-known mark does not infringe upon another’s rights.

• Originality and Fixation (17 U.S.C. § 102(a)):

  • Copyright protection applies to original works fixed in a tangible medium.
  • Example: A song written and recorded by an artist is automatically protected by copyright.

  Actionable Step: Document and fix any creative work in a tangible form (i.e., written, recorded) and consider registering it with the U.S. Copyright Office for additional legal protection.

• Exclusive Rights (17 U.S.C. § 106):

  • Provides copyright holders with exclusive rights to reproduce, distribute, and publicly perform their works.
  • Example: An author has the exclusive right to authorize the reproduction and sale of their book.

  Actionable Step: Monetize intellectual property by licensing the rights to various parties, ensuring that all agreements emphasize the scope and duration of the uses authorized.

• Fair Use (17 U.S.C. § 107):

  • Recognizes certain uses of copyrighted works for purposes such as criticism, commentary, and research, which do not constitute infringement.
  • Example: A teacher showing brief clips of a movie in class for educational purposes may qualify as fair use.

  Actionable Step: Perform a fair use analysis checking the purpose, nature, amount, and effect of the use on the market to determine if your use qualifies as fair use.

• Definition and Requirements (18 U.S.C. § 1839(3)):

  • A trade secret is information that derives economic value from not being generally known and is subject to reasonable measures to maintain its secrecy.
  • Example: The formula for a popular carbonated beverage, kept confidential to maintain its unique taste and market advantage.

  Actionable Step: Implement robust confidentiality agreements, restrict access to sensitive information, and maintain reasonable security measures to protect trade secrets.

• Misappropriation (18 U.S.C. § 1836(b)):

  • Describes improper acquisition, disclosure, or use of trade secrets.
  • Example: An employee who takes proprietary software code from a company and uses it at a competing business is guilty of misappropriation.

  Actionable Step: Proactively educate employees on confidentiality obligations, conduct exit interviews to ensure proprietary information is returned, and pursue legal action if misappropriation is suspected.

• Design Patents (35 U.S.C. § 171):

  • Protects the ornamental design of a functional item for 15 years from issuance.
  • Example: The unique shape and appearance of a popular chair designed by an acclaimed designer.

  Actionable Step: File a design patent application detailing the visual characteristics of the product, ensuring that the design is new and not obvious.

• Plant Patents (35 U.S.C. § 161):

  • Protects newly invented or discovered asexually reproduced plant varieties.
  • Example: A horticulturist develops a new strain of rose and secures a plant patent to prevent others from reproducing it without permission.

  Actionable Step: File a plant patent application that includes a complete description of the new plant strain and the method of asexual reproduction.

• IP Enforcement and Remedies (Various Statutes):

  • Covers legal actions for infringement and remedies including injunctions, damages, and legal fees.
  • Example: A company successfully sues for damages and an injunction against a competitor that infringes on its patented technology.

  Actionable Step: Consult with legal experts to understand enforcement options, document instances of infringement comprehensively, and pursue legal channels to protect IP rights.

Business Law and EthicsIntellectual Property