Patents
Congress has been given the power by the Constitution to “promote the Progress of Science and the useful Arts” by securing for inventors, for a limited time, the “exclusive Right to their . . . Discoveries.” This social contract requires a full disclosure of the invention in exchange for the limited patent right. The patentee gets the reward of a quasi-monopoly and in exchange the public receives the benefit of later being able to practice something previously unknown — the invention.
A patent is a set of exclusive rights granted by a sovereign state to an inventor or assignee for a limited period of time in exchange for detailed public disclosure of an invention. An invention is a solution to a specific technological problem and is a product or a process. We assist our clients in obtaining patents, maintain and grow portfolios through effective patent prosecution. We have drafted and prosecuted hundreds of patent applications that span a wide range of technologies.
Trademarks
Trademarks, trade names, service marks, and trade dress help consumers select goods and services by identifying the source of those goods or services and by providing quality assurance. Trademarks (and service marks) promote fair competition by enabling providers of goods and services to build goodwill with the general public and to connect, in the mind of the consumer, particular goods or services with the provider’s brand. Trademarks can be words, names, slogans, symbols, sounds, designs, product shapes, or colors as long as they distinguish the owner’s product or service.
Licenses
Within the context of intellectual property, a license provides permission to act in a manner that would otherwise infringe upon the rights of others. A patent owner may grant another party an exclusive or nonexclusive right to make, use, or sell a patented invention in exchange for a payment of royalties or other consideration. Sometimes, the consideration is permission to practice under patents owned by the other party, known as cross-licensing. A patent license is often accompanied by the right to utilize trade secrets or “know how” owned by the licensor. A trademark license enables the licensee, under suitable supervision, to market and sell products under a particular trademark. Copyright licenses provide permission to copy and/or distribute copyrighted writings, audio or video recordings, software, or other original works of art.
Copyright
The law that protects an author’s Works is based on the United States Constitution: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors … the exclusive Right to their respective Writings ….;” United States Constitution, Art. 1, Sec. 8, Cl. 8.
The Copyright Act now reaches architectural design, software, the graphic arts, motion pictures, and sound recordings. As of January 1, 1978, all works of authorship fixed in a tangible medium of expression and within the subject matter of copyright were deemed to fall within the exclusive jurisdiction of the Copyright Act regardless of whether the work was created before or after that date and whether published or unpublished. The owner of a copyright has the exclusive right to reproduce, distribute, perform, display, license, and to prepare derivative works based on the copyrighted work. The exclusive rights of the copyright owner are subject to limitation by the doctrine of “fair use.” Fair use of a copyrighted work for purposes such as criticism, comment, news reporting, teaching, scholarship, or research is not copyright infringement. To determine whether or not a particular use qualifies as fair use, courts apply a multi-factor balancing test.
Trade Secrets
To qualify as a trade secret, the more strict patent standards of novelty, non-obviousness and utility are not required. But rather, the product, process or other information constituting the trade secret must provide a competitive advantage comprising present or future economic value to the owner. Additionally, trade secret owners must take such precautions to maintain secrecy that are appropriate under the facts and circumstances.
Traditionally, trade secrets were enforced at common law. Since 1979, nearly every state has codified these common law remedies by enacting trade secret statutes under the Uniform Trade Secrets Act. Trade secrets and know-how are important elements of intellectual property portfolios that may in fact be even more significant than patent coverage.
Agreement Preparation and Negotiation
Agreements are used to define the rights and obligations of parties engaged in the development, pursuit or use of technology. Such agreements can include Non-disclosure/Confidentiality Agreements, Joint Development Agreements, Assignments, License Agreements, Technology Transfer Agreements and Joint Venture/Collaboration Agreements. Carefully preparing the terms of such agreements can yield significant benefits should rights ever need to be enforced.