Introduction to Intellectual Property

TYPES OF PROTECTION

Once created, intellectual property is transferable via the ordinary law of contracts and personal property.

FEDERAL versus STATE

Patents and copyrights are federal.

In the U.S. Constitution, the States gave Congress the power

Trademarks are creatures of federal, State, and common law.

Trade secrets are creatures of state and common law. In late 1996, Congress passed a criminal statute dealing with international industrial espionage.

 

PATENTS

There are three types of patents:

To obtain a patent you must disclose your invention in your application. The society makes a trade with you: in exchange for you disclosing your invention the government grants you a legal monopoly on your idea for a limited term. Your patent application must disclose your idea so clearly that a person of ordinary skill:

• is enabled to practice the invention, and

• is shown the best way to practice the invention.

TO OBTAIN A PATENT

REVERSE ENGINEERING does not strip the patent owner of any rights. Recall disclosure in application. Contra, trade secrets.

 

COPYRIGHT

TRADE MARKS

Exclusive right to use on a specific MARK on a product or service to
IDENTIFY a SOURCE: e.g., manufacturer or seller by AFFIXING the mark.

Federal protection is national. Whereas, State protection is limited to area in the State where the mark has been used. A prior federal registration of a mark PREEMPTS subsequent State trademark rights. BUT prior State use or registration is not preempted by subsequent federal registration.

Trademarks are for products; while Service Marks are for services.

Marks are to aid the consumer, rather than serve the interests of business.

Under the Lanham Act, federal registration with the Patent and Trademark Office (PTO) establishes priority and scope of protection: more than one source may have the right to use a mark. Marks are not permitted which create a
LIKELIHOOD OF CONFUSION as to the source.

Marks are valid as long as they are used.

PROTECTABLE MARKS:

The source, not the name of the item (e.g., Frisbee, thermos, aspirin)

TRADE SECRETS

Trade secret law is found in each State's common and statutory law. In late 1996, Congress adopted a federal criminal statute on international industrial espionage.

 

There is a wide variation by State.

Over 40 States, have adopted the Uniform Trade Secrets Act (UTSA).

 

The elements of the UTSA definition of "trade secret" are:

Trade secrets can offer protection that patents and copyrights cannot.

 

Subject matter nearly unlimited.

 

Trade secrets need not be exclusive.

 

Protection against improper taking:

REVERSE ENGINEERING is a proper taking. Contra, patents.

 

[NOTE: the bulk of this material comes from the Harvard Negotiation Project.]

NEGOTIATION IS THE ART OF REACHING AN AGREEMENT.

Mutual understanding is a necessary precondition to reaching an agreement.

Preparation is the best path to mutual understanding. Preparation includes much more than analysis of each party's interests. Preparation includes analysis, perception, prioritization, anticipation, and development of objective criteria as well as options for mutual gain.

Analysis: often is the simplest part. Your analysis should identify the relevant legal and business issues.

Perception: means that you "walk a mile in my shoes."
My view of the relevant issues will not be the same as your view because the issues will "pinch" me at different points than the issues pinch you. The emotional component of my perception must not be overlooked.

Prioritization: is an understanding of the relative value of each issue. Know yours and know theirs. Value is time sensitive: "One who gives quickly gives twice."

Anticipation: is necessary to hear opportunity knocking and is necessary to avoid poisoning the well. You will most certainly miss a golden opportunity or you will react caustically to statement born of frustration unless you anticipate both your reactions and your opponent's reactions to the topics and the sequencing of topics. Kindness at a critical juncture establishes the trust upon which the agreement is built.

Objective Criteria: are the building blocks of the agreement. (e.g., My patent is worth millions.) or on persons (e.g., You stole my idea!), focus on the parties' interests and the criteria for analysis and outcome.

Options for Mutual Gain: are the cement of the agreement.
Build your opponent a golden bridge to retreat across. When you both have a problem, a solution is not a zero sum game. Be creative. This is the most difficult task.

A negotiator should identify the topics of discussion as well as the sequence of discussions. Specific attention should be given to what the negotiator is
willing to trade (and for what!) in order to obtain the desired outcomes. You should clearly identify your BATNA (Best Alternative To a Negotiated Agreement) and under what conditions you would resort to your BATNA.

Everyone has a preferred negotiation style. Each style can be either
ideal or worthless, depending upon the style of the person on the other side of the table and the duration of the relationship. Hard, or aggressive, negotiators prefer to understate both their willingness to settle and their probable end point. Hard negotiators approach the negotiation as a test of wills in a zero sum game. Hard negotiators tend to excel against hard negotiators in all contexts; and against soft negotiators in one-time negotiations. Hard negotiators tend to fail against soft negotiators who become insulted and resort to BATNA; and in ongoing relationships. Soft, or reasonable, negotiators prefer to correctly state both their willingness to settle and their probable end point (thus leaving little room for future movement). Soft negotiators approach negotiation as a path to agreement. Soft negotiators tend to excel against other soft negotiators and in ongoing relationships; but soft negotiators tend to do poorly against hard negotiators, especially in one-time negotiations.

 

NEGOTIATION PREPARATION FORM

This assignment must be typed on one sheet of white paper, but you may use both sides, each with four one-inch margins. Often the form is easiest to use and read if printed in landscape. Each side of the page shall have a single line header within the margin. The header shall start with your name and then list the role you are playing, followed by the date submitted. The font must be 12. You may single or double space. You may rearrange the items in this form to suit your preferences, but each of the headings below must be used in your form. (So that the instructor can compare student's efforts.) Failure to comply with the SYLLABUS' TYPING REQUIREMENTS will cost you at least 5% of your assignment grade.

RELATIONSHIP ISSUES: (describe the positions [e.g., jobs] and emotional context [e.g., old friends] of the parties' transaction.)

APPROACHES: (how will you initially treat the other person and what are your planned reactions to their anticipated approaches. also, specifically, how will you surface the issues important to your planned outcome.)

INTERESTS: Ours: (what are you ultimate objectives [ends] as opposed to the negotiated means towards those ends. what are your underlying concerns which must be satisfied for the negotiation to be a success, rather than a Pyrrhic Victory.)

INTERESTS: Theirs: (what are your estimates of their interests. one task of the APPROACHES is to discover if your estimates are accurate.)

OPTIONS: (what are some win-win solutions to your negotiation problem. be creative. build a golden bridge for the other party's retreat. OPTIONS should directly feed off of both parties' INTERESTS as well as the negotiation problem.)

OBJECTIVE CRITERIA: (these criteria should be measuring sticks upon which both parties can readily agree [e.g., Blue Book as one measure of market value for used cars.] and which can be used to measure the inputs and/or outputs of the negotiated transaction and/or INTERESTS.)

BATNA: Ours: (since you never should accept an agreement below your BATNA, you need to know before you sit down when you will walk away from the negotiating table. the higher your BATNA the stronger your negotiating position. what can you do without their cooperation?)

BATNA: Theirs: (what is your estimate of their BATNA. be specific. one task of the APPROACHES is to discover if your estimate is accurate.)

OFFERS: Aspiration: (if you do not ask for it, they are unlikely to give it. ask high, but reasonably, given what you already know about the negotiation.)

OFFERS: Target: (prior to the negotiation --based on your estimates of their INTERESTS, the OBJECTIVE CRITERIA, and their BATNA-- where do you think the negotiations will end up.)

OFFERS: Bottom Line: (this is higher than your BATNA and requires the other party's cooperation. partial agreements instead of global agreements may serve as your Bottom Line.)