Intellectual Property Updates for the General Practitioner Crissa Seymour Cook

Transcription

1 Intellectual Property Updates for the General Practitioner Crissa Seymour Cook May 17-18, 2018 University of Kansas School of Law

2 Intellectual Property Updates for the General Practitioner Presented by Crissa Seymour Cook Adjunct Professor University of Kansas School of Law Recent Developments in the Law May 17, 2018 Intellectual Property Intellectual property refers to creations of the mind: inventions; literary and artistic works; and symbols, names and images used in commerce. Methods of protection: Contracts Patents Trade Secrets Trademarks Copyrights 1

3 Types of Protection Patents Inventions: *Processes/Methods *Machines/Devices Trade Secrets Confidential information that has economic value: *Formulas *Customer lists *Manufacturing processes Types of Protection Trademarks Source indicators business asset used in commerce Copyrights Expressions of Ideas: *Writings *Music *Art Works Contracts: confidentiality, employee, etc. 2

4 Intellectual Property Attracts Investment Increases exit valuation (IPO, M&A) Deters copying Chills competition License revenue Cross license opportunities Protects branding/marketing efforts. Patents 3

5 Patenting Considerations What has been invented and what is the stage of development? When and how was it invented? Who invented it? Who is going to own it? Commercialize it? Patents: What? What is the invention? Composition, process, device, apparatus, software program, system, etc. How far along is the development? Idea Sketches 3 D Model Working Prototype Scaled up manufacturing Commercially viable embodiment 4

6 Types of patents Utility patent protects functional features of invention. 20 year term from filing Compositions, devices, techniques, processes, new combinations, software, new uses of an old thing Types of patents Design patent protects the ornamental design Filed before May 13, 2015: 14 years from date of grant Filed on/after May 13, 2015: 15 years from date of grant 5

7 Patenting Considerations Can I get a patent? Do I need a patent? How do I get a patent? What are the costs and timing involved? Patenting Considerations How do I know if my invention is patentable? Conduct a patent search (google.com/patents) Talk to a patent attorney Hire a patent search firm 6

8 Patenting Considerations Common mistake: many inventors assume that just because they cannot find a product containing their invention for sale in a store or available online, their invention must be novel. Many (most) inventions never become products, yet there may be evidence of them somewhere in the prior art. Patent Searching can be critical first step Patents: When? Patent application must be filed before any public disclosure of the invention, once it is ready for patenting. U.S. has a 1 year grace period for the inventor s own disclosures Foreign countries do NOT have a grace period Public disclosure even a single non confidential discussion can count as a public disclosure Useofconfidentiality agreements early in process is key 7

9 Patents: Who? First inventor to file system. Patent awarded to first inventor to file a patent application for the claimed invention. Patents: Inventorship Inventorship is a term of art having a defined legal meaning in patent law it is a question of law. Not everyone who contributes to the invention qualifies as an inventor. Inventorship can be sole or joint 8

10 Inventorship & Ownership In the U.S., patent rights initially vest in people. Who will own the invention? The individual? The company? Only people can be inventors and title originally vests in the inventor(s). Companies and organizations must obtain a formal assignment to obtain title to the invention. Agreements IP Provisions When drafting agreements relating to employment, confidentiality, partnership, research, manufacturing, etc., need to be cognizant of IP provisions and the proper approach to establishing a clear chain of title. 9

11 Agreements IP Provisions Inventions and patents are assets can be sold, licensed, transferred, inherited, etc. and generate value Initial agreements between partners must account for all of the intellectual property before there is anything to fight about Founders agreements should include express provisions assigning intellectual property to the company. Agreements IP Provisions Ownership Control of the IP, subject to any encumbrances Can be joint or sole ownership License The right to use the IP (typically granted by contract) Exclusive License Licensor agrees to not provide licenses to any third party. Non Exclusive License Licensor reserves the right to provide licenses to third parties, or reserves the right to practice the invention itself. 10

12 Agreements IP Provisions IntheU.S.,mere employment is NOT sufficient to vest title to an employee s invention in the employer. Stanford v. Roche 563 U.S. 776 (2011) Employment agreements should include express provisions clearly addressing ownership of employee created IP. The same approach should be taken for independent contractors, etc. Employment Agreements Broadly define inventions in the employment agreement to include those things developed pursuant not only to the employee s job description, but also inventions developed that relate in any way to the employer s business or other interests. 11

13 Employment Agreements Employment agreements should always have a present assignment of inventions. A formal assignment should also be executed and recorded once a patent application has actually been prepared to provide notice to third parties. Record within 3 months, otherwise can run into a BFP situation. Employment Agreements State specific requirements: Several states, including Kansas (KSA ) have labor laws addressing the assignment of inventions. Cannot purport to pre assign an employee s inventions to the company under certain circumstances such assignments are void and unlawful 12

14 Employment Agreements KSA (paraphrased): (a) Cannot require an employee to pre assign an invention for which no equipment, supplies, facilities or trade secret information of the employer was used and which was developed entirely on the employeeʹs own time, unless: (1) The invention relates to the business of the employer or to the employerʹs actual or demonstrably anticipated research or development; or (2) the invention results from actual work performed by the employee for the employer. Practice Pointers Many of these issues are not encountered during prosecution of the patent application. They are only raised during litigation when you try to assert the patent against someone this is the key time when ownership and priority rights matter most! 13

15 Hot Topic CRISPR Technology Invented by both the Broad Institute (jointly with MIT and Harvard) and UC Berkeley. Broad Institute obtained first European patent on technology. Patent found invalid January 17, 2018 because of an invalid transfer of rights from the inventors to the Institute. Hot Topic Broad s European patent claimed priority to earlier filings (US provisional applications). Broad did not secure assignments relating to the provisional applications until after the international application was filed. Assignments in Europe have no retroactive effect therefore, the assignment was invalid making the priority claim invalid The patent needed the priority claim to remain valid over subsequent disclosures ( prior art ). 14

16 Hot Topic Sovereign Immunity and IP Enforcement Nutshell: State entities must consent to litigation in federal court or waive their 11 th Amendment protection. Similar protections afforded to Tribes. Impact on enforcement or defense against patents owned by State or Tribal entities? Hot Topic Recent cases have arisen related to patents owned by State Universities Covidien v. U. of Florida Research Foundation (Jan. 25, 2017) NeoChord Inc. v. U. of Md., Baltimore (May 23, 2017) Reactive Surface Ltd. v. Toyota Motor Corp. (July 13, 2017) Ericsson Inc. v. U. of Minnesota (Dec. 19, 2017) Similar issue arisen in Mylan Pharm. v. Allergan (patents assigned to Saint Regis Mohawk Tribe) 15

17 Hot Topic Alleged infringers have tried to challenge patent validity in front of the USPTO using a post grant challenge. Defense has been one of immunity Upshot: Unless the University instituted suit first and invoked federal jurisdiction (thereby waiving sovereign immunity), cannot be brought into court or into quasi litigation in front of the patent office. Hot Topic Patent is essentially immune to challenge until immunity is waived. Waiver considerations: Invoked federal jurisdiction by bringing an action? Express waiver of immunity in license agreement or other contract? Is the University an indispensable party? Coownership, exclusive vs. non exclusive license Important issues to consider in contracts executed with possible state entities. 16

18 Other Pitfalls Work for hire This language is sometimes used erroneously in employment agreements with respect to inventions. It is specific to copyright and does not apply to patent law. There is, however, a hired to invent type doctrine, as well as a shop rights doctrine that may help a company successfully argue ownership, even where no specific employment provisions are present. Other Pitfalls Hired to invent does not apply to general employee job descriptions. It must be a specific task and the facts must make it unmistakably clear the person was hired to achieve a specific result. Shop rights does not give the company patent type rights. It s traditionally viewed as simply a license to practice the invention. 17

19 Trade Secrets. Agreements: Confidential Information HOT TOPIC Defend Trade Secrets Act (DTSA) Signed into law May 11, 2016 Creates new federal civil cause of action for misappropriation of trade secrets Parallels the Uniform Trade Secrets Act Does not displace or preempt state law claims 3 year statute of limitations runs from when misappropriation discovered or should have been discovered 18

20 Agreements: Confidential Information Defend Trade Secrets Act (DTSA) DTSA creates official whistleblower immunity and a requirement that employers notify their employees (and consultants or contractors) of the existence of this immunity. Failure to comply impacts damages that may be available Provision required in all agreements or amendments entered into on or after May 12, 2016 Agreements: Confidential Information Defend Trade Secrets Act (DTSA) Notice of Immunity Requirement (1) IMMUNITY. An individual shall not be held criminally or civilly liable under any Federal or State trade secret law for the disclosure of a trade secret that (A) is made (i) in confidence to a Federal, State, or local government official, either directly or indirectly, or to an attorney; and (ii) solely for the purpose of reporting or investigating a suspected violation of law; or (B) is made in a complaint or other document filed in a lawsuit or other proceeding, if such filing is made under seal. 19

21 Agreements: Confidential Information Defend Trade Secrets Act (DTSA) Notice Requirement Employers are required to provide notice of this immunity in any contract or agreement with an employee that governs the use of a trade secret or other confidential information Nondisclosure agreements Employment agreements Independent contractor agreements Any contract entered into or updated after May 11, TRADEMARKS B R A N D Your Brand Name Here 20

22 Trademarks Assets of a Business Both as property and as goodwill family of marks slogans designs/icons product configuration Marked item must be used in commerce Must be tied to specific goods or services i.e., Dove chocolate vs. Dove soap Trademarks TM symbol should be used with all trademarks whenever possible. TM may be used for any mark in commerce. Registration symbol ( ) should always be used for registered trademarks. Removes defense of innocent infringement 21

23 Trademark Protection Trademark Rights Acquired Through Use of the Mark in Commerce Common law rights Can use the symbol Limited to geographic region in which mark is used Enforcement through state common law usually via unfair competition statute Trademark Protection Federal protection/registration Benefits Others will find Mark in conducting a search Rights to use the mark throughout the United States except as against prior users in their areas of use, regardless of owner registrant s actual area of use; After five years exclusive and continuous used mark and its registration are incontestable*; and Constructive notice nationwide of the trademark ownerʹs claim 22

24 Trademark Protection Federal protection Benefits (continued) Evidence of ownership of the trademark Jurisdiction of federal courts may be invoked Registration can be used as a basis for obtaining registration in foreign countries Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods Domain Name rights Ability to receive special rights with regard to domain names Picking a good trademark General goal is that the mark be distinctive and indicate the source of the goods or services General goal is to prevent consumer confusion and dilution of rights of existing trademark holders. 23

25 Picking a good trademark Cannot be merely Descriptive: Merely identifies a characteristic of the article or service it marks, or is a surname. Must acquire distinctiveness (aka secondary meaning) to receive federal registration. [McDonald s] Shown through long term use, advertising expenditures, sales revenue, testimonials, etc. Cannot be Generic: Never entitled to trademark protection, i.e. laptop computer, smartphone. Famous marks must ward against genericide [GOOGLE, ESCALATOR, BAND AID, YO YO] Trademark Procedure What if you ve picked out a great trademark, but aren t yet actually using it? An intent to use application may be filed with the USPTO to reserve the mark without first making use of the mark Proof of actual use is required before the registration will be issued 24

26 Federal Trademark Protection Duration How long does a federally registered TM last? Potentially forever if: (a)continuous use exists; (b)mark does not become a generic description of the product; (c) maintenance between 5 th & 6 th year of registration; (d) renewals are filed every 10 years; (e)all licensing of the mark is done with quality control; and (f) there is no acquiescence to infringement. Trademark Hot Topic Registration of disparaging marks (e.g., Redskins) USPTO denied registration to The Slants (Asian American band Matal v. Tam) Federal Circuit, affirmed by Supreme Court: Section 2(a) s prohibition on disparaging registrations is unconstitutional. 25

27 Trademark Hot Topic Registration and Branding of Cannabis Cannabis is legal in several U.S. states Remains illegal at Federal Level Remains illegal in many U.S. states Registrations are denied for core products Workaround: Goods and Services category: merchandise, apparel, vaporizers, containers, food, candy, etc. containing CBD, a (legal hemp extract). COPYRIGHT 26

28 Copyrights Copyrights exist upon creation; benefits of federal registration Anything that contains creative expression, i.e. advertisement, software, website, movies, songs May immediately use the copyright notice, i.e HOVEY WILLIAMS LLP REQUIREMENTS FOR COPYRIGHT PROTECTION Work of original creative authorship Fixed in a tangible form of expression from which it can be perceived, reproduced, or otherwise communicated, directly or with aid of a device 27

29 Copyright Protection Unregistered Copyright Author owns immediately Registered Copyright Author or owner may register copyright to avail itself of statutory rights Ability to sue for infringement Statutory Damages (Requires Timely Registration) Up to $30,000/infringing work Up to $150,000 for willful infringement of work Attorneys fees/legal expenses Why Register? Proof of ownership If you don t register within five years of creating the work, the court doesn t have to recognize the registration you do file as self evident proof. Access to courts Statutory damages Must register within 3 months of publication or before infringement Otherwise, only an award of actual damages and profits is available to the copyright owner. 28

30 Ownership Author is the presumptive owner Transfer of Work Work for hire Employer/Employee relationship; OR Work for Hire Agreement that falls within statutorily enumerated categories Commissioning Party is considered the author Assignment (in writing) Subject to termination WORKS MADE FOR HIRE (17 USC 101) Works made by an employee within the course of employment; OR Works specially ordered pursuant to a signed written work for hire agreement AND if the works are in eligible categories 29

31 WORKS FOR HIRE CATEGORIES (17 USC 101) contribution to a collective work part of a motion picture or other audiovisual work a translation a supplementary work a compilation an instructional text a test or answer material for a test an atlas WORKS MADE FOR HIRE In drafting contracts that include assignment clauses, do not make the mistake of calling a creation a work for hire. Best practice: Provide for a present assignment of the material to be created. ( does hereby assign and NOT promises to assign ) Pitfall: Do not assume that paying someone to create content is the same as a work for hire (it s usually NOT) 30

32 Hot Topic Animal selfies (Monkey Selfies) (9 th Cir.) April 23, 2018 decision Monkey snapped selfies of himself with an unattended camera PETA sought copyright control over the photos, on behalf of the monkey Court ruled in favor of photographer whose camera was used to take the photos Only humans can pursue copyright infringement claims PETA and photographer settled in % of future revenue from photo must be donated to charities protecting crested macaques Any Questions? Crissa A. Seymour Cook Hovey Williams LLP

33 Thank You! Hovey Williams LLP 84 Corporate Woods Mastin Blvd., Suite 1000 Overland Park, KS