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Like many areas of the law, trademark has a deceptively simple surface that masks a complex and often counterintuitive system. Everyone has a passing familiarity with what a trademark is—we see them every day. But in practice there are several different types of mark, each with their own rules. Understanding the types of mark is an important step in grasping how to evaluate a proposed mark for potential infringement problems, and how to establish it as a protectable and registerable mark. Common features of every type of mark There are several features that are common to every type of mark. No matter what form a mark takes, these features must be present to transform it from its elementary form —as a word, a drawing, a packaging design, and so forth—into…Read More

When a new business is started it often has two primary assets. The first is the talent of the founders themselves and the initial group of employees they have attracted to their work. The second is the business’s initial portfolio of intellectual property—chiefly its trade secrets, patents, and patentable inventions. In the rush to find foundational customers or impress angel investors, startups also need to give early attention to formalizing their IP management. Here are some considerations that often need to be addressed early in a company’s life-cycle: 1. Take stock of what will and will not be in the company’s IP portfolio. Before an asset can be protected it needs to be well defined. Conducting a detailed inventory of a business’s intellectual property may be a quick exercise or…Read More

Licensing a patented technology is one of several ways an innovative business can monetize its intellectual property. Licenses may be relatively narrow, small deals, or they maybe among the most important transactions in a business’s history. Given the potential complexity of patent licenses, there are few one-size-fits-all parameters that will be useful to every business during its negotiation. But here are a few major ideas that are worth bearing in mind before setting out to negotiate a new license. 1. Start with confidentiality. A patent license only should be negotiated under the terms of a confidentiality agreement. An NDA ensures that negotiations can be frank, open, and detailed. It also ensures that the patent owner can freely negotiate with other potential licensees without the risk that its offers and concessions…Read More

Technological innovation doesn’t take place in a vacuum. Innovators routinely draw upon the insights of others as they develop new ideas. Studying an existing technology to figure out how it works is an obvious approach to developing new and better solutions to particular problems. Whether the technology is software, electronic, chemical, or mechanical, intellectual property law avoids dissuading innovators from taking apart the inventions of their competitors. But there are still limits on how the results of a reverse engineering effort can be exploited. Reverse engineering is not illegal per SE Done the right way, reverse engineering is not unlawful. If it was, innovation probably would be stifled to a significant degree. Anyone can buy a product off the shelf and freely study it. That’s why smart design often incorporates…Read More

By definition, trademarks are creatures of commerce. State and federal laws protect trademarks because they serve an important purpose in the marketplace, helping consumers know the source of the goods or services they purchase. This is true whether the product in question circulates among the general public or is only of interest to a narrow group of specialists. Federal trademark applications can be based either on actual use of the mark in commerce or on an intent to use the proposed mark in commerce, but to receive formal registration the applicant must prove that the mark has actually been used in commerce on or in connection with the goods or services included in the application. There are a number of ways a trademark owner can establish commercial use. The definitions…Read More

In the highlycompetitive world of product innovation, monitoring new patent applications is keyto protecting investments and preserving the value of inventions. Doing so allows a business to quickly discover if a competitor’s patent application describes a product that could potentiallyinfringe upon the business’s patents, or that can potentially be opposed as unpatentable for other reasons. Responding to a competitor’s patent application can be done in any of several ways. Negotiate a license. Discovering a potential infringement of intellectual property rights can be viewed as a threat to be stopped or as a potential source of revenue. By licensing a technology to competitors, a business not only adds to its bottom line, it also enhances its control over that piece of technology by establishing a track record of defending the owner’s…Read More

A constant challenge for businesses with important trade secrets is how to simultaneously make commercial use of them while also preserving their legal status. To be protected as a trade secret, a piece of commercially valuable information must be “the subject of efforts that are reasonable under the circumstances to maintain its secrecy.” Cal. Civ. Code § 3426.1(d). Activities directed beyond the confines of the business present various disclosure risks, ranging from unscrupulous commercial partners to outright theft. External threats to trade secrets can be managed in various ways: robust contracts, tight limits on how and with whom information is shared, and so forth. But defending trade secrets also requires careful internal management. A key question for managers of intellectual property is how far to take the policies and procedures…Read More

In the global economy, innovators must stayvigilant against copycats not only in the countries where they work, but also in far-away places. Over the years policymakers and diplomats have crafted a variety of international rules to address this problem. Inventors in America are often faced with questions about how much to invest in overseas patent applications and defense. The limited geographic scope of a U.S. patent Perhaps the first thing to understand about an invention that is patented in the United States is that its patent protections only apply within the boundaries of the United States and its territories. Someone with a valid U.S. patent can prevent others from exploiting an invention—making it, using it, selling it, offering it for sale, or importing it—only within the U.S. This raises some…Read More

A trade secret can be a business’s most valuable intellectual property. It might be a secret recipe for a company’s signature product. Or it might be a key piece of code that helps a business differentiate itself from its competitors. Unlike a patent, which exchanges secrecyfor a period of market exclusivity, a trade secret needs to be kept closely under wraps. Businesses that derive significant value from trade secrets need to take steps to protect them. The legal framework of trade secrets Like almost every state, California has adopted a version of the Uniform Trade Secrets Act (UTSA). Under the UTSA a trade secret is defined as “information, including a formula, pattern, compilation, program, device, method, technique, or process” that has two key, related features. The first is that the…Read More

Prior art can pose significant challenges for innovators trying to patent their inventions. One of the central questions a reviewer at the U.S. Patent and Trademark Office (PTO) asks about an application is whether the invention it describes is new and non-obvious. If the reviewer finds prior art that shows that the invention is in fact obvious or not new, the application will be denied. Ordinarily, information shared under obligations of confidentiality is not public and therefore not prior art. But such information can become, in essence, “semi-public prior art” in cases where the parties to such a confidential arrangement disagree about the patent ability of an invention that makes use of such confidential information. Placing semi-public prior art in context Prior art can come from a wide variety of sources.…Read More