Securing, Enforcing, and Avoiding Infringement Of

SECURING, ENFORCING, AND AVOIDING INFRINGEMENT OF U.S., INTERNATIONAL, AND FOREIGN PATENTS, TRADEMARKS, AND COPYRIGHTS; SECURING TRADE SECRETS; AND AVOIDING UNFAIRUNFAIR COMPETITIONCOMPETITION This paper contains general information about patents, trademarks, copyrights, trade secrets, and unfair competition, and is intended to make the reader aware of issues in intellectual property law. Because there are exceptions to many, if not all, of the rules mentioned in this paper, and because laws and rules change frequently, the reader should discuss his particular situation with a patent attorney before making any decision regarding his intellectual property rights and responsibilities. Charles C. Garvey, Jr., Patent Attorney** Gregory C. Smith, Patent Attorney* Seth M. Nehrbass, Patent Attorney Brett A. North, Patent Attorney Vanessa M. D'Souza, Patent Attorney Julia M. FitzPatrick, Patent Attorney** Mackenzie D. Rodríguez, Patent Attorney Julie Rabalais Chauvin, Patent Attorney Mark N. Melasky, Patent Attorney GARVEY, SMITH, NEHRBASS & NORTH, L.L.C. PATENT ATTORNEYS Three Lakeway Center, Suite 3290 3838 North Causeway Boulevard Metairie, LA 70002; U.S.A. Tel.: 504-835-2000; Fax: 504-835-2070 e-mail: [email protected] www.neworleanspatents.com

Northshore Office: No. 7 Boston Commons 832 East Boston Street Covington, Louisiana 70433, U.S.A. Tel: (985) 635-6892; Fax: (985) 635-6972

*Northshore office **Northshore office also +not licensed in Louisiana US patent law has recently changed. Please check with us about first-inventor-to-file changes and the importance of filing patent applications early. © 1998-2016 GARVEY, SMITH, NEHRBASS & NORTH, L.L.C. PATENT ATTORNEYS PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS CAVEAT: This paper contains general information about patents, trademarks, copyrights, and trade secrets, and is intended to make the reader aware of issues in intellectual property law. Because there are exceptions to many, if not all, of the rules mentioned in this paper, the reader should discuss his or her particular situation with a patent attorney before making any decision regarding his or her intellectual property rights 5 and responsibilities. CONTENTS: Patents ...... 2 1. Deadline for Filing a U.S. Patent Application ...... 2 2. Utility patents ...... 3 10 (a) Ownership, Assignment, and Licensing ...... 3 (b) Disclosure to the Patent Attorney ...... 4 (c) Patentability Search and requirements for patentability ...... 4 (d) Patent Application...... 7 (e) Duty of Disclosure...... 9 15 (f) Publication of Applications and Provisional Rights ...... 9 (g) Claims ...... 10 (h) Reissue Patents (Broadening Claims) ...... 11 (i) Patent Prosecution...... 11 (j) Patent Issue ...... 12 20 (k) Small Entities and Micro Entities ...... 12 (l) Patent Maintenance Fees...... 12 (m) Representation of Inventors...... 13 (n) Patent Enforcement ...... 13 (1) Marking...... 13 25 (2) Infringement and Infringers ...... 13 (3) Exception to Infringement ...... 14 (4) Remedies...... 14 (5) Time Limit for Bringing Suit ...... 14 (6) False Marking...... 14 30 (7) Avoiding Infringement ...... 14 (o) Foreign Patents ...... 15 (1) Filing Deadline ...... 15 (2) PCT Patent Applications...... 15 (3) Publication of Applications and Provisional Rights...... 16 35 (4) Request for Examination...... 16 (5) Costs of Obtaining Foreign Patents, including Annuities ...... 16 (6) Patentable Subject Matter and Obviousness Determinations...... 17 (7) Oppositions ...... 17 (8) Revalidation Patents ...... 17 40 (9) Marking...... 17 (p) Provisional Patent Applications...... 17 (q) Invention Marketing Companies...... 18 (r) Freedom-to-operate search ...... 19 3. Design patents...... 20 45 4. Plant patents ...... 20 Trademarks ...... 20 Copyrights ...... 26 Trade Secrets...... 28 Unfair Competition ...... 30

For US patent applications with an effective filing date after March 15, 2013: § 102. Conditions 10 for patentability; novelty (a) Novelty; prior art. A person shall be entitled to a patent unless-- (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or 15 (2) the claimed invention was described in a patent issued under section 151 [35 USCS § 151], or in an application for patent published or deemed published under section 122(b) [35 USCS § 122(b)], in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. 20 (b) Exceptions. (1) Disclosures made 1 year or less before the effective filing date of the claimed invention. A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if-- (A) the disclosure was made by the inventor or joint inventor or by another who 25 obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 30 (2) Disclosures appearing in applications and patents. A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if-- (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; (B) the subject matter disclosed had, before such subject matter was effectively filed 35 under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an 40 obligation of assignment to the same person. (c) Common ownership under joint research agreements. Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if--

20 35 U.S.C. § 103. Conditions for patentability; nonobvious subject matter A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 [35 USC § 102], if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a 25 person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. Under 35 U.S.C. Section 102, certain activity, public use, sale, offer of sale or publication can prevent a patent from being obtained. With the changes to 35 U.S.C. Section 102, for US patent applications with an effective filing date after March 15, 2013, any such activities will bar a patent if 30 they have been done prior to the effective filing date of the invention, with a limited exception for disclosures which can be traced directly or indirectly to the inventor within a year before the effective filing date. Even if obtained, the patent can be declared invalid later by a court of law because of prior use, sale, offer of sale, or publication. Thus, inventors should file their patent application as soon as possible and certainly within one year of any activity that might arguably be a bar under 35 U.S.C. § 102 35 including, for example, sales, offers of sale, quotations, invoices, receipts, drawings or blueprints distributed to others, sales releases, newspaper articles, bids, displays or shows such as trade shows, demonstrations, test marketing, advertising, or the like. These examples are illustrative. If in doubt, consult a patent attorney. A patentability search is designed to obtain copies of the most pertinent patents available. The 40 preliminary patentability search is only about 80% percent accurate for several reasons. Some prior publications are not properly classified in the U.S. Patent and Trademark Office; some publications that contain relevant information are not a part of the records of the Patent and Trademark Office. Not all pending United States patent applications are publicly available. Therefore, there is always the

© 1998-2016 GARVEY, SMITH, NEHRBASS & NORTH, L.L.C., PATENT ATTORNEYS - (504) 835-2000; fax (504) 835-2070, GSNN.US PERMISSION IS HEREBY GRANTED TO MAKE UNALTERED COPIES OF THIS PAPER, PROVIDED THIS COPYRIGHT NOTICE APPEAR THEREON. -24- PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS A federal anti-dilution statute prevents commercial use of a famous mark by another, even in association with unrelated goods or services. 15 U.S.C. Section 1125(c). 14. Avoiding Infringement In general, one commits trademark infringement when one uses a copy or a confusingly similar 5 variation of a trademark belonging to another in a manner which is likely to cause confusion as to the source of the goods on which the copy or confusingly similar variation is used. There are several factors which courts consider in determining what is "likelihood of confusion". A few are the similarity of the goods involved, the trade channels, and the fame (or lack thereof) of the allegedly infringed trademark. One charged with trademark infringement should consult immediately with an attorney 10 experienced in trademark matters and obtain a written, well reasoned opinion that there is no infringement. If a competent attorney experienced in trademark matters is not able to provide a written, well reasoned opinion that there is no infringement, then the charged activity should be discontinued. Sands, Taylor & Wood Co. v. The Quaker Oats Co., 978 F.2d 947, ___ , 24 U.S.P.Q.2d 1001, 1013-14 (7th Cir. 1992). 15 14. International and Foreign Trademark Registrations There is a deadline of six months from the date of filing an application to register a trademark in the U.S. Patent and Trademark Office to file trademark registrations in foreign countries claiming priority of the U.S. filing date. However, if priority is not claimed, the application can be filed at any time. 20 Trademark laws vary from country to country; most allow applications to be filed without proof of prior use; many allow registration without proof of use. The potential harm to businesses planning to do business overseas is that they may find that their trademark is already registered in a foreign country by someone who learned of the business's plans to do business in that country. The business may then be forced to negotiate with the holder of the registration on its mark or use a different mark in that 25 country. It is thus prudent to file trademark registration applications in foreign countries of interest prior to announcing plans to do business in those countries. In some countries, use is not enough to establish priority in that country - the first entity to apply to register the mark gets the registration. It is possible to file a single registration application which covers several countries. For example, 15 European countries recently implemented a program whereby a trademark registration 30 covering all 15 countries in up to three international classes can be obtained by filing a single application. The countries currently are Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, the Netherlands, Portugal, Spain, Sweden, and the UK. The cost for filing the application is on the order of $3,000, not much more than filing in a single foreign country. A single trademark application can be filed in the U.S. and is effective in over 70 countries 35 which are members of the Madrid Union. Typically, actual use must be made (and sometimes proof of use must be submitted to the trademark office) within five years after the mark is first registered. As in the U.S., trademark registrations in most foreign countries must be renewed every ten years. State Trademark Registrations 40 One can usually register marks used in a particular state, whether or not they are registerable on the principal or supplemental register of the United States Patent and Trademark Office, with the Secretary of State of that state. This gives the registrant some limited advantages (in Louisiana see La. Rev. Stat. §§ 51:211 - 51:300). © 1998-2016 GARVEY, SMITH, NEHRBASS & NORTH, L.L.C., PATENT ATTORNEYS - (504) 835-2000; fax (504) 835-2070, GSNN.US PERMISSION IS HEREBY GRANTED TO MAKE UNALTERED COPIES OF THIS PAPER, PROVIDED THIS COPYRIGHT NOTICE APPEAR THEREON. -25- PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS C. COPYRIGHTS 1. Scope of Protection A copyright owner has the exclusive right to do and to authorize the following: to reproduce the copyrighted work in copies or phonorecords, to sell or lease the work, to prepare 5 derivative works based upon the work, to perform the work publicly, and to display the work publicly. 17 U.S.C. § 106. A U.S. author's copyright is recognized and respected by the eighty-one members of the Berne Convention for the Protection of Literary and Artistic Works, without the need for registration in each country. Berne Convention, Art. 5(2). 2. Works Protected by Copyright 10 "Copyright protection subsists in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories: (1) literary works; 15 (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; 20 (7) sound recordings; and (8) architectural works." 17 U.S.C. § 102(a). 3. Notice, Registration, and Enforcement Due to recent changes in copyright laws, copyright protection is now virtually automatic, without the need to place a copyright notice on or to register the work. 17 U.S.C. §§ 302, 401(a), 25 407(a). However, there are certain advantages to placing the notice on the work and registering the work with the Library of Congress. For example, infringers cannot claim innocent infringement if the notice is prominently displayed on all published copies of the work. 17 U.S.C. § 401(d). If the work is registered within three months of first publication or prior to commencement of infringement by others of the copyright (whichever last occurs), the copyright owner can collect statutory damages and attorney 30 fees, even if no actual damages can be proved. 17 U.S.C. §§ 412, 504, 505. The notice of copyright in a work should include the copyright symbol (©), the word "copyright", or the abbreviation "copr.", followed by the year of first publication and the name of the owner of the copyright. 17 U.S.C. § 401. A copyright in a work must be registered before a suit for infringement of the work can be filed. 35 17 U.S.C. § 411. Suit for copyright infringement must be filed within 3 years of the infringement. 17 U.S.C. § 507. Anyone who violates the exclusive rights of a copyright owner is an infringer. 17 U.S.C. § 501. Remedies for infringement include an injunction against future infringement, 17 U.S.C. § 503, impoundment and disposition of infringing articles, 17 U.S.C. § 503, and the copyright owner's choice 40 of either actual damages and additional profits of an infringer or statutory damages. 17 U.S.C. § 504. While treble damages are not available, unlike in the case of trademark and patent infringement lawsuits, statutory damages are flexible enough to accomplish the same result in most cases. See 17 U.S.C. § 504(c). Further, as in the case of trademark infringement, willful copyright infringement is a © 1998-2016 GARVEY, SMITH, NEHRBASS & NORTH, L.L.C., PATENT ATTORNEYS - (504) 835-2000; fax (504) 835-2070, GSNN.US PERMISSION IS HEREBY GRANTED TO MAKE UNALTERED COPIES OF THIS PAPER, PROVIDED THIS COPYRIGHT NOTICE APPEAR THEREON. -26- PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS criminal offense. 17 U.S.C. § 506; 18 U.S.C. § 2319. It is considered "fair use" (see 17 U.S.C. § 107), not copyright infringement, to tape a program or movie broadcast on television, as long as it is being taped only for "time shifting" (viewing at a later time) and not for "librarying" (adding to a collection to be viewed over and over). See Sony Corporation v. Universal City Studios, 464 U.S. 417 (1984). 5 Any efforts to enforce intellectual property rights (whether by letter, a lawsuit, or threating telephone calls) can result in a lawsuit challenging the validity of the intellectual property rights. 4. Copyright Duration and Renewal For works created after 1977 (or created before but neither registered nor published), the term of a copyright is the life of the last-surviving author plus 70 years (or in the case of an anonymous work, 10 pseudonymous work, or a "work made for hire" (see 17 U.S.C. § 101), the term is 75 years from the year of first publication) and no renewal of the copyright is necessary or permitted. 17 U.S.C. § 302. In general, for works created and copyrighted prior to 1978, the term is 28 years from the date the copyright was originally secured; if the copyright has never been renewed, then it can be renewed within one year prior to the expiration date of the original copyright term or it will be renewed 15 automatically; the renewal term is 47 years. 17 U.S.C. § 304. If the renewal is requested in an application, then the copyright owner of the renewal term may be different from the person who would own the renewal term if it is renewed automatically (e.g., an heir of the author may be entitled to the renewal term if he makes a written application for renewal; otherwise, the owner of record (perhaps an assignee of the author) would be entitled to the renewal term if the copyright is renewed automatically). 20 5. Transfer of Copyright - Work-for-Hire Caveat When one sells a work of art or literary work, for example, one transfers ownership only of the particular copy sold - the copyright remains the property of the artist or author unless expressly agreed otherwise. 17 U.S.C. § 202. Businesses commissioning art for catalogs or brochures should be careful in the wording of the contract for the commission -the purchase of the art for one catalog does not 25 automatically mean that the art can be used in subsequent catalogs. See 17 U.S.C. §§ 101, 201; Community for Creative Non-Violence v. Reid, 109 S. Ct. 2166, 10 U.S.P.Q.2d 1985 (1988). One should get all subcontractors working on a potentially copyrightable project (such as a brochure, catalog, video, etc.) to sign an agreement to assign all copyrights to him; otherwise, he may not be able to later reproduce the work. 30 6. Rescission of Agreement Regarding Renewal Copyrights It may be possible to rescind an assignment or license of a renewal copyright if the assignment or license was made prior to 1978 (see 17 U.S.C. § 304). 7. Mechanics of Obtaining a Copyright Registration The process for obtaining a copyright registration on a work is relatively simple, and persons 35 with more time than money may wish to consider registering their copyrights themselves. The most conservative route, however, when the work is potentially valuable or there are multiple works to be registered (in some circumstances, several unpublished works can be registered with a single application - see page 9 of Circular 1: Copyright Basics available from the Copyright Office), is to have an experienced attorney register the work. Sometimes even an experienced attorney will run into problems 40 when attempting to register a copyright in a work. Simply applying for a copyright registration is no guarantee that a registration will issue, though in the great majority of cases, one does. For information about copyrights authors may wish to contact: Copyright Office, Library of Congress, Washington, D.C. 20559, Tel.: (202) 707-3000, web site: http://lcweb.loc.gov/copyright/. © 1998-2016 GARVEY, SMITH, NEHRBASS & NORTH, L.L.C., PATENT ATTORNEYS - (504) 835-2000; fax (504) 835-2070, GSNN.US PERMISSION IS HEREBY GRANTED TO MAKE UNALTERED COPIES OF THIS PAPER, PROVIDED THIS COPYRIGHT NOTICE APPEAR THEREON. -27- PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS 8. Avoiding Infringement In general, copyright infringement occurs when one, without the permission of the copyright holder, reproduces the copyrighted work in copies or phonorecords, sells or leases the work, prepares derivative works based upon the work (such as a movie based on a book, or a sculpture based on a 5 photograph), performs the work publicly, or displays the work publicly. 17 U.S.C. § 501. In copyright law, "copy" does not mean the same thing as "exact duplicate". Rather, the "copy" in copyright merely means that the original work was viewed or observed by the infringer, and the infringer made another work which took copyrightable expression from the original work. What is considered to be "copyrightable expression" is not always easy to determine. See, for example, the reproductions of 10 wallpaper and poster attached at the end of this paper. There was held to be no copyright infringement in the case of the wallpaper, but in the case of the poster (arguably more different looking), the court found that there was copyright infringement. Copying of a newsletter for internal use in a company or in a law office can be copyright infringement. Pasha Publications Inc. v. Enmark Gas Corp., 22 U.S.P.Q.2d 1076 (N.D. Tex. 1992). 15 Copying of an article in a journal for internal use in an oil company is copyright infringement. American Geophysical Union v. Texaco Inc., 60 F.3d 913, 35 U.S.P.Q.2d 1513 (2d Cir. 1995). One charged with copyright infringement should consult immediately with an attorney experienced in copyright matters and obtain a written, well reasoned opinion that there is no infringement. If a competent attorney experienced in copyright matters is not able to provide a written, 20 well reasoned opinion that there is no infringement, then the charged activity should be discontinued. D. TRADE SECRETS 1. Definition "Trade secret" means confidential information, including a formula, pattern, compilation, program, device, method, technique, or process, that derives independent economic value, actual or 25 potential, from not being generally known to and not being readily ascertainable by proper means by other persons who can obtain economic value from its disclosure or use. Examples of trade secrets include customer lists, formulas for chemicals, the design of apparatus to perform a method, and the fact that a particular company is conducting research in a particular area. To be considered a trade secret, the information must be the subject of reasonable (but not necessarily fool-proof) efforts to maintain its 30 secrecy. Reasonable efforts to maintain secrecy have been held to include efforts that are "reasonable under the circumstances," and include advising employees of the existence of trade secrets, limiting access to trade secrets on a "need to know" basis, and controlling plant access. Importantly, courts have held that public disclosure of information through display, trade journal publications , advertising, or 35 other carelessness can preclude protection. 2. Scope of Protection Trade secrets are protected by statute in some states (in Louisiana, for example, the legislature has adopted the Uniform Trade Secrets Act, codified at La. Rev. Stat. §§ 51:1431-39; Tennessee Statute 39-14-138 defines trade secrets) and by case law in others. About forty states have adopted the 40 Uniform Trade Secrets Act. Other states have common law to protect trade secrets. For example, Texas has developed its own law of trade secrets. According to the official comments to the Uniform Trade Secrets Act, proper means of learning a trade secret include: © 1998-2016 GARVEY, SMITH, NEHRBASS & NORTH, L.L.C., PATENT ATTORNEYS - (504) 835-2000; fax (504) 835-2070, GSNN.US PERMISSION IS HEREBY GRANTED TO MAKE UNALTERED COPIES OF THIS PAPER, PROVIDED THIS COPYRIGHT NOTICE APPEAR THEREON. -28- PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS (1) Discovery by independent invention; (2) Discovery by "reverse engineering", that is, by starting with the known product and working backward to find the method by which it was developed. The acquisition of the known product must of course, also be by a fair and honest means, such 5 as purchase of the item on the open market for reverse engineering to be lawful; (3) Discovery under a license from the owner of the trade secret; (4) Observation of the item in public use or on public display; (5) Obtaining the trade secret from published literature. Improper means could include otherwise lawful conduct which is improper under 10 the circumstances; e.g., an airplane overflight used as aerial reconnaissance to determine the competitor's plant layout during construction of the plant. E.I. du Pont de Nemours & Co., Inc. v. Christopher, 431 F.2d 1012 (CA5, 1970), cert. den. 400 U.S. 1024 (1970). Because the trade secret can be destroyed through public knowledge, the unauthorized disclosure of a trade secret is also a misappropriation. 15 Comment (a) to § 1 of the Uniform Trade Secrets Act. Improper means of learning a trade secret include theft, bribery, misrepresentation, breach, or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means. Uniform Trade Secrets Act, § 1(1). The Uniform Trade Secrets Act provides for injunctive relief to prevent use of an improperly discovered trade secret. The Act also provides for damages for actual loss 20 suffered by the secret holder. Further, the trade secret holder may also recover for unjust enrichment of the person misappropriating the trade secret. Uniform Trade Secrets Act, §§ 2 and 3. The best way to protect a trade secret is to keep it secret. The fewer people who know of the secret, the less chance there will be that it will be improperly discovered by others. When disclosing a trade secret to another, one should always get the other person to sign an agreement to keep the trade 25 secret confidential. Also, one should make sure that the person receiving the trade secret knows what information is considered to be a trade secret. A good way to do this is to make all disclosures in writing and to mark each writing "Confidential". Trade secret protection can be useful when one wishes to protect information which is not patentable or copyrightable. An invention, such as a method of manufacturing, which may not be 30 patentable because it may be considered to be obvious in view of the prior art may nonetheless be protected if it can be kept a trade secret. Likewise, a customer list, which could not be patented because it is not an invention or copyrightable because there is not enough original authorship to warrant copyright protection, can be protected by keeping it a trade secret. Thus, trade secret protection fills in some of the gaps left by other types of intellectual property law. 35 Another advantage of trade secret protection is that as long as the material is maintained in secrecy, there is no limit on the length of the protection. Hence, while patent protection will expire in a set time, a trade secret can be potentially be held in perpetuity. The formula for Coca-Cola® brand soft drink, perhaps the most famous (and valuable) trade secret in the world today, is a classic example of a successful trade secret. Had the formula been disclosed in a patent, the protection would have expired 40 by now. However, as a trade secret, the formula of Coke® brand soft drink will be protected for as long as it has value and is held in secrecy. 3. Avoiding Violations of Trade Secret Laws

E. UNFAIR COMPETITION 10 1. Definition "Unfair competition" includes acts proscribed by 15 U.S.C. Sections 1-36 (Sherman Act, Wilson Tariff Act, Clayton Antitrust Act, and Robinson-Patman Act), 41-58 (Federal Trade Commission Act), 1125 (Section 43 of the Lanham Act), and 1451-1461 (Fair Packaging and Labeling Act), and those proscribed by La. Rev. Stat. Sections 51:331-337, 350, 361-371, 411-413 (Unfair Trade Law), 421-427 15 (Unfair Sales Law), 461, 461.1, and 51:1401-1418 (the Louisiana Unfair Trade Practices and Consumer Protection Act ("LUTPA"), Louisiana's version of the Unfair Trade Practices and Consumer Protection Law, sometimes informally known as the "baby FTC act"), and similar laws. Proscribed acts include false advertising (15 U.S.C. Section 1125(a) and (b)), dilution of a famous trademark (15 U.S.C. Section 1125(c)), conspiracy to restrain trade (15 U.S.C. Section 1) and 20 unfair methods of competition and unfair or deceptive acts or practices in the conduct of any trade or commerce (15 U.S.C. Section 45 and La. Rev. Stat. Section 51:1405). In general, mere negligence is not enough to support an unfair competition claim (488 So. 2d 202, infra) Under LUTPA (which is akin to the Federal Trade Commission Act, but with an intrastate, rather than interstate, bent), "unfair methods of competition and unfair or deceptive acts or practices in the 25 conduct of any trade or commerce are ... unlawful." Courts in Louisiana have held that conduct is "unfair" when it involves fraud, misrepresentation, deception, breach of fiduciary duty, "offends public policy," is immoral, unethical, oppressive, unscrupulous, substantially injurious to consumers or business competitors. A threat of unfounded trade secret litigation brought in bad faith can be a violation of Section 1 30 of the Sherman Act (15 U.S.C. Section 1). CVD, Inc. v. Raytheon, 769 F.2d 842, 227 U.S.P.Q. 7 (1st Cir. 1985). In general, requiring a licensee to agree to buy unpatented goods in order to be able to license a patent is prohibited by antitrust laws. 15 U.S.C. Section 1. Violations of Unfair Competition Laws Remedies for unfair competition include recovery of actual damages, attorney fees and costs. If 35 the court finds the unfair or deceptive method, act or practice was knowingly used, the court may award three times the actual damages sustained. F. MISCELLANEOUS INSURANCE COVERAGE FOR INTELLECTUAL PROPERTY LAWSUITS In some cases, a business's commercial general liability insurance policy will provide a defense 40 and pay damages in intellectual property litigation. The coverage is usually under the "advertising injury" clause of the policy. Recently, due to the addition of an offer of sale of a patented product to acts constituting patent infringement, the policy, in appropriate cases, will cover patent infringement

EXPORTING U.S. GOODS AND SERVICES 10 Intellectual property laws vary from country to country. Before attempting to export U.S. goods or services, one should consult with a patent attorney experienced in international intellectual property law. The proposed export activities should be discussed with an intellectual property lawyer in the country of destination before substantial preparation is made to export. The exporter should be concerned not only with protecting his goods or services in the country, but also making sure that he 15 does not infringe any intellectual property rights of others in the target country (the United Kingdom, for example, has unusual copyright laws which make illegal activities which are legal in most other countries). FOR MORE INFORMATION Because this paper contains information relative to deadlines that could adversely affect U.S. 20 and/or foreign patent rights, please carefully read it and retain a copy in your records for future reference. You may also wish to read "Marketing Your Invention," a publication available from the American Bar Association, 750 North Lake Shore Drive, Chicago, Illinois 60611. Other information regarding patents and trademarks is available from the U.S. Patent and Trademark Office, Washington, 25 DC 20231, 800-786-9199, http://www.uspto.gov/. The U.S. Patent and Trademark Office, Washington, DC 20231 publishes a pamphlet entitled "Basic Facts about Trademarks" which includes the forms necessary to file a simple federal trademark registration application. The Copyright Office will send an Information Kit to law firms upon request. This kit is about an inch thick and contains all of the current forms and circulars used in the Copyright Office. 30 Inventors interested in starting a business might benefit from consulting with SCORE - Service Corps Of Retired Executives, who can be reached at www.score.org or 800-634-0245 (in the New Orleans area call 504-589-2356). Most legislation regarding patents can be found in title 35 of the United States Code. Regulations regarding patents can be found in Chapter I, parts 1, 5, 10, and 15, Chapter IV, and Chapter 35 V of 37 C.F.R. Most legislation regarding federal registration of trademarks can be found in title 15 of the United States Code, in sections 1051 through 1127. Regulations regarding trademarks can be found in Chapter I, parts 2, 6, 10, and 15 of 37 C.F.R. Information regarding state trademarks can usually be found in the statutes of the particular states. In Louisiana, the state trademark law is codified at La. Rev. 40 Stat. §§ 51:211-51:300. Most legislation regarding copyrights can be found in title 17 of the United States Code. Regulations regarding copyrights can be found in Chapters II and III of 37 C.F.R.

15 © 1998- 2016 GARVEY, SMITH, NEHRBASS & NORTH, L.L.C. Suite 3290, 3838 North Causeway Boulevard, Metairie, LA 70002 Tel.: 504-835-2000; FAX: 504-835-2070 E-MAIL: [email protected]; www.gsnn.us; www.neworleanspatents.com

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P:\Mackenzie\Letters\GSNN2016Paper.wpd

(use additional sheets, if necessary - please call with any questions)

(1) Title of Invention ______

(2A) Inventor Citizenship

Preferred Contact Address (Street, City, State, Zip)

Phone Number ______Fax Number ______

e-mail ______

Potential obligation to assign to employer or another? ______If so, list potential assignee ______

(2B) Co-Inventor Citizenship

(if any)

Preferred Contact Address (Street, City, State, Zip)

Phone Number ______Fax Number ______

e-mail ______

Potential obligation to assign to employer or another? ______If so, list potential assignee ______

(2C) List additional co-inventors (if any) on a separate page

(3) Date the idea first came to mind (e.g., January 13, 1999, around summer 2003, before 15 April 2006, etc.)

(4) With whom and when was the idea first discussed ______

List all others (if possible) with whom the idea was discussed, and date of discussion:

______

(5a) Date on which the idea was first reduced to

writing in whole or in part (attach this written material) ______

(5b) Date on which a drawing of the invention was first made

(attach this drawing) ______PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS (6a) Date first construction of the idea of the invention was started (if at all)

(6b) Date construction complete (if applicable)

(7a) Has this or a similar invention been disclosed in a printed publication or a talk, or has it been sold or offered for sale, or has it been used in public? (any patent applications should be filed before any of these events or any non-confidential disclosure of the invention if foreign patents are desired, - any U.S. patent application should be filed within 12 months of the first of these events)

(7b) If so, provide date and all other details (and contact a patent attorney immediately if any one of these events occurred more than 9 months ago).

(8) Attached to this record of invention should be a complete disclosure of the invention. Ideally, this should include drawings, photographs (if available), a parts list (including manufacturer and model number of parts actually used and of parts which are preferred), ranges of materials or characteristics of the invention, alternative materials, and a description of how the invention operates, including reference (by number) to each part on the parts list. Specify each advantage of the invention over prior similar devices or methods that the inventor is aware of. List prior publications, prior patents, or prior uses or sales that the inventor is aware of which might limit the scope of a patent on the invention. Consider and discuss uses of the invention other than the originally intended use.

(9) If the idea first came to mind more than two months ago, detail all activity related to the invention since then (in addition to that recorded above).

______

(10) List any patent applications filed in foreign countries, by country, serial number, and filing date: ______

(11) Are you interested in filing foreign patent applications? ( _____ Yes) ( _____ No) ( _____ Unsure).

Please carefully read the attached Declaration and Power of Attorney. Please give us any additional relevant information that comes to mind after you read this document. You will be required to sign a declaration like this under oath should you apply for a patent. You will notice that some portions of the declaration relate to deadlines for filing a patent application.

Date ______

Signature of Witness (Not a party to the invention - optional):

As a below named inventor, I hereby declare that: my residence, post office address, and citizenship are as stated below next to my name. I believe I am the original, first, and sole inventor (if only one name is listed below) or a joint inventor (if plural inventors are listed below) of the subject matter which is claimed and for which a patent is sought on the invention entitled:

as described in the specification [ ] attached or [ ] of patent Application Serial No. filed and amended on .

I hereby state that I have reviewed and understand the contents of the above identified specification, including the claims, as amended by any amendment referred to above; that I do not know and do not believe the same was ever known or used in the United States of America before my or our invention thereof, or patented or described in any printed publication in any country before my or our invention thereof or more than one year prior to this application; that the invention has not been patented or made the subject of an inventor's certificate issued before the date of this application in any country foreign to the United States of America on an application filed by me or my legal representative or assigns more than twelve months prior to this application; and that I acknowledge the duty to disclose information of which I am aware which is material to the examination of this application in accordance with Title 37, Code of Federal Regulations § 1.56(a). Such information is material when it is not cumulative to information already of record or being made of record in the application, and

(1) it establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or

(2) it refutes, or is inconsistent with, a position the applicant has taken or may take in:

(i) opposing an argument of unpatentability relied on by the Office, or

(ii) asserting an argument of patentability.

I hereby claim foreign priority benefits under Title 35, United States Code § 119 of any foreign or U.S. provisional application(s) for patent or inventor's certificates listed below and have also identified below any foreign application(s) having a filing date before that of the application(s) on which priority is claimed: ______

I hereby claim the benefit under Title 35 United States Code § 120 of any United States application(s) listed below and, insofar as any subject matter of any claim of this application is not disclosed in the prior United States Application, I acknowledge the duty to disclose material information as defined in Title 37, Code of Federal Regulations § 1.56(a) which occurred between the filing date of the prior application and the national or PCT international filing date of this application:

I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information and belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false statements may jeopardize the validity of the application or any patent issued thereon.

FULL NAME OF SOLE OR FIRST INVENTOR INVENTOR'S SIGNATURE DATE

RESIDENCE CITIZENSHIP

POST OFFICE ADDRESS

FULL NAME OF SECOND JOINT INVENTOR INVENTOR'S SIGNATURE DATE

RESIDENCE CITIZENSHIP

POST OFFICE ADDRESS

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1) If the invention might include an inventor who is not a Corporation employee, make sure that there is an agreement with that inventor or his company that will cause the invention to be assigned to the Corporation (see Section 2(a)(2) of paper).

2) Inventors should keep a diary in a bound notebook (and/or on a computer) of their progress, including unsuccessful as well as successful attempts (see Section 2(b) of paper). If the invention has been made, list all parts used in the invention by name, manufacturer, and part number, then explain how, if one could improve the invention as much as the inventor contemplates, one would modify that parts list. The description should be detailed enough to allow one of ordinary skill in the relevant technology to make the invention without undue experimentation. Include in the disclosure ranges of ingredients, sizes, capacities, or other physical properties of the invention. In appropriate cases, include lower limits and/or upper limits, express relationships between various elements of the invention, include various ranges (such as a (broader) preferred range, a (tighter) more preferred range, and a (tightest) most preferred range), generalize and/or list alternative materials (see Section 2(d) of paper). Go over this diary with your supervisor at least once per quarter (and preferably once per month - select a date in advance and meet, regardless of how busy you are that day).

3) Explain the advantages of the invention over prior similar devices or methods.

4) Disclose to the patent attorney anything which might limit the scope of a patent on the invention (see Sec. 2(e) of paper).

5) Inventors who wish to do some investigating on their own can do searching on the Internet by visiting the site at http://www.freepatentsonline.com/search.html (this site includes patents and applications from the US and other countries - I recommend that you check all the boxes before searching) and/or www.uspto.gov (this is the web site of the U.S. Patent and Trademark Office - it now has the full text and images of all U.S. Patents and published U.S. Patent Applications from 1976 through the present online, and images of all U.S. patents and published U.S. Patent Applications) and/or the site at http://ec.espacenet.com/ (this site has U.S. Patents and many foreign and international patents and applications, viewable in Adobe). The information from this search can be used to improve the invention or may show that the invention is impractical for reasons not previously considered by the inventor (see Section 2(c)).

6) If the invention may provide a contract win (i.e., a customer will award a contract to the Corporation due to the technology), royalty income (i.e., others may pay the Corporation for the right to use the invention), or help avoid litigation (the invention might be cross-licensed to a holder of a patent which the Corporation would like to use), file a provisional patent application as soon as possible. When determining whether to file a provisional patent application, consider the amount of money spent by the Corporation developing the invention - I believe that it is usually prudent to spend a little more money to secure the invention for the Corporation.

7) If it appears that the likely benefit of having foreign patents will outweigh the cost of obtaining foreign patents (see Section (2)(o)(5) of paper), have a patentability search conducted and file a full U.S. patent application as soon as possible (in this way, hopefully a U.S. patent examiner will begin examination before the deadline for filing foreign patent applications claiming priority of the provisional patent application). If the invention still appears to be patentable a year after the provisional patent application is filed, file a PCT application; if the invention still appears to warrant foreign patents, enter the national phase in desired countries 30 months after filing the provisional patent application.

9) An inventor who wishes to get as much protection for his invention as quickly as possible would: (1) immediately file a provisional patent application; (2) quickly have an expedited patentability search run; and (3) have a full patent application, which takes into account the results of the patentability search, prepared and filed on an expedited basis, along with a request to publish the patent application as soon as possible. Depending in part upon the technology involved, the activity in that technological field, the inventor's resources, and the potential value of the invention, such a course of action can range from extremely prudent to bordering on extravagant. I do not recommend this course of action for everyone - I simply believe that everyone should be aware of this possibility so that an informed decision to forego it can be made.

The following is a brief description of the practice and background of each of the Firm's attorneys (all of whom are patent attorneys and are licensed to practice law in Louisiana, except where noted otherwise below).

Charles C. Garvey, Jr. has over 30 years experience in intellectual property law. Chuck has developed a well-rounded practice including litigation, prosecution before the Patent and Trademark Office and client consultation on technology related issues. He has acted as lead counsel in several intellectual property law lawsuits, particularly patent suits. His office practice includes preparing technology transfer agreements and providing legal opinions on the state of the art, patentability and other intellectual property issues. Chuck obtained a J.D. and Bachelors degree in Civil Engineering from Louisiana State University and is a Registered Professional Engineer in Louisiana.

Gregory C. Smith has over 30 years experience in intellectual property law as an attorney and lecturer. Greg's practice concentrates on patent and trademark litigation in state and federal courts, and patent and trademark prosecution before the U.S. Patent and Trademark Office. Greg obtained his law degree from Loyola University New Orleans School of Law and a Bachelors degree in Chemistry and English from Louisiana State University. He has lectured in law at St. Mary's Dominican College, where he also served on the Law School Advisory Board.

Seth M. Nehrbass has been actively involved in the prosecution of patent applications since 1982, both as a patent examiner and as a patent attorney. While Seth's technical background is in physics, he has prepared and prosecuted patent applications in a range of technologies including chemistry, mechanical engineering, electronics, medicine and medical devices. Seth also has experience in all phases of intellectual property litigation. He is fluent in French and Spanish and has a working knowledge of Portuguese, Italian and German. Seth obtained a Bachelor of Science degree (summa cum laude) from the University of Southwestern Louisiana (now the University of Louisiana at Lafayette) and a law degree (cum laude) from Loyola University New Orleans School of Law where he was on Law Review and a member of Moot Court. He is an adjunct professor in patent law at Tulane Law School.

Brett A. North has substantial experience in intellectual property litigation and prosecution. In 1988 he received a Bachelor of Science Degree in Mechanical Engineering from the Louisiana State University, graduating summa cum laude and first in his class from the College of Engineering. In his senior year he was selected as the Phi Kappa Phi Outstanding Senior for the College of Engineering as well as the Mechanical Engineering College's Outstanding Senior. In 1993 he graduated summa cum laude from the South Texas College of law affiliated with Texas A&M University where he was a member of Law Review and the Order of the Lytae. He is registered to practice before the U.S. Patent and Trademark Office. He is an adjunct instructor in patent law at Tulane Law School.

Vanessa M. D’Souza is a 2008 graduate of Tulane Law School where she focused on intellectual property law. During law school, Vanessa was a member of the Tulane Journal of Technology and Intellectual Property and was elected to serve as Editor-in-Chief for Volume 10. She was also a member of the Tulane Inn of Court, Student Bar Association, and served as representative to © 1998-2016 GARVEY, SMITH, NEHRBASS & NORTH, L.L.C., PATENT ATTORNEYS - (504) 835-2000; fax (504) 835-2070, GSNN.US PERMISSION IS HEREBY GRANTED TO MAKE UNALTERED COPIES OF THIS PAPER, PROVIDED THIS COPYRIGHT NOTICE APPEAR THEREON. -1- PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS the American Bar Association. Her work experience includes externships with judges from the United States District Court for the Eastern District of Louisiana, Louisiana 4th Circuit Court of Appeal, and Louisiana 24th Judicial District Court. In 2003, Vanessa received a Bachelor of Science in Neuroscience and a Business minor from Tulane University. Vanessa is licensed to practice law in Louisiana and is registered to practice before the United States Patent and Trademark Office in patent cases.

Julia M. FitzPatrick became a patent attorney in 2007. She graduated with High Honors in 2006 from the University of Utah, S.J. Quinney College of Law, and she received her undergraduate degree in Genetics (cum laude) from the University of Georgia in 2000. During law school, she was a member of Law Review and focused her legal studies on intellectual property law, receiving awards for the highest grade in her Intellectual Property Survey and Patent Law Courses. Julia also received the Extra Muros Prize for the best Note on international law for her published Note that evaluated intellectual property issues in Third World Countries. While in law school, Julia also interned with the Utah Disability Law Center and volunteered at Utah Legal Services. After receiving her law degree, Julia clerked for a Judge on the Utah Court of Appeals for about two and a half years before returning home to Louisiana. She additionally has experience with litigation as an attorney, a law clerk while in law school, and a paralegal prior to law school. Julia is licensed to practice law in Louisiana and is registered to practice before the United States Patent and Trademark Office in patent cases. She remains licensed (though inactive) in Utah.

Mackenzie D. Rodríguez is a 2008 graduate of Tulane Law School, which she attended on an academic scholarship. During law school, Mackenzie was a member of the Tulane Journal of Technology and Intellectual Property. In 2002, Mackenzie received a Bachelor of Science in Medical Laboratory Science, magna cum laude from Northeastern University, Boston. Before going to law school, Mackenzie worked at the Scripps Research Institute, Molecular Experimental Medicine Dept., in La Jolla, CA and The Children’s Hospital, in Boston, MA. Mackenzie is a ASCP Certified Medical Technologist. She is licensed to practice law in Louisiana, Massachusetts, and New York, and is registered to practice before the United States Patent and Trademark Office in patent cases.

Julie Rabalais Chauvin was born and raised in New Orleans. She has a Bachelor of Science in Biomedical Engineering from University of Virginia and a law degree from University of Florida Levin College of Law. She has worked as an intern in federal court in Louisiana and in the US Attorney’s Office in Florida. She has worked as a research assistant at Loyola Law School. While in college she worked to develop a hip implant with researchers from the University of Virginia Health System. Before going to law school she worked at the Medical University of South Carolina. Julie is licensed to practice law in Louisiana and is registered to practice before the United States Patent and Trademark Office in patent cases.

Mark N. Melasky is licensed to practice law in Louisiana and before the United States Patent and Trademark Office in patent cases. Mark’s practice is limited to patents, trademarks, copyrights, trade secrets, and related intellectual property matters. Mark is also an adjunct professor of Law in Marketing at Tulane University A.B. Freeman School of Business, which focuses on intellectual property issues in the context of marketing and business management. Additionally, Mark is a licensed

More information about the Firm's attorneys can be found at www.gsnn.us.

LICENSURES

Licensed Attorney, Massachusetts State Bar (2008), New York State Bar (2009), Louisiana State Bar (2009) Registered Patent Attorney, United States Patent and Trademark Office (2008) Certified Medical Technologist, American Society of Clinical Pathology (2002)

PUBLICATIONS AND PRESENTATIONS

Rodriguez, Mackenzie D. Updates in Intellectual Property Law – Continuing Legal Education Presentation, Gulf Coast Intellectual Property Association Meeting, New Orleans, Louisiana, Nov 2013.

Dismore, Mackenzie L. “Intellectual Property’s Newest Invention, The Tax Patent: Has Patent Protection Extended Beyond its Constitutional Limits?” Tulane Journal of Technology and Intellectual Property, Vol. 10, Dec 2007.

Dismore, Mackenzie L, David Haytowitz, James W. Peterson, and Sarah L. Booth. “The Vitamin K Content of Nuts and Fruits in the U.S. Diet.” Journal of the American Dietetic Association, Vol. 103, no. 12, Dec 2003.

LEGAL EXPERIENCE

Garvey, Smith, Nehrbass & North, New Orleans, LA August 2012 – present Of Counsel Prepare patent, trademark, and copyright applications, amendments, responses to office actions, and other prosecution documents; primary arts include medical devices, oil and gas field and other mechanical devices, and software; drafting and review of licensing and other intellectual property agreements; research and analyze legal issues involving patents, trademarks, and copyrights; advise clients regarding intellectual property portfolios and domestic and foreign patent, trademark, and copyright matters.

Taylor, Porter, Brooks & Philips, Baton Rouge, LA June 2011 – June 2012 Associate Practice in patent prosecution, transactions, and litigation; prepare patent applications, amendments, responses to office actions, and reports to clients; primary arts include medical devices, chemistry, agricultural field, and biotechnology; review and advise clients regarding licensing, material transfer, and sponsored research agreements; research and analyze legal issues for general litigation practice, prepare research memoranda, pleadings and reports to clients; participate in firm recruitment and retention of law students for clerk program.

Hailey, McNamara, Hall, Larmann & Papale, Metairie, LA September 2009 – June 2011 Associate Responsible for management and reporting of over three-hundred case files for one client; prepare pleadings, reports to clients, and appellate documents; attend hearings regarding discovery and dispositive motions; organize, attend and supervise settlement conferences and mediations; participate in trial preparation; communicate with client regarding case strategy and recommendations.

Page 1 of 2

MACKENZIE D. RODRÍGUEZ [email protected] [email protected]

OTHER EXPERIENCE

The Scripps Research Institute, Molecular Experimental Medicine, La Jolla, CA July 2003–August 2004 Lab Manager/Research Assistant

The Children’s Hospital, Boston, MA January 2002 – June 2003 Medical Technologist, ASCP-MT

EDUCATION

Tulane University Law School, New Orleans, LA May 2008 Juris Doctor, cum laude

Northeastern University, Boston, MA June 2002 Bachelor of Science in Medical Laboratory Science, magna cum laude

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EVERY BUSINESS HAS INTELLECTUAL PROPERTY

“80% of the value of a typical business is intellectual property” http://www.lexology.com/library/detail.aspx?g=6f7dd161-e101-4809-9cb6-af37b853aae8

“The value of intellectual property (IP) is often not adequately appreciated and its potential for providing opportunities for future profit is widely underestimated… when IP is legally protected and there is demand for the IP-protected products and/or services in the marketplace, IP can become a valuable business asset.” World Intellectual Property Organization, 2016 http://www.wipo.int/sme/en/ip_business/ip_asset/sme_market_value.htm

Every business has intellectual property and should take steps to protect it. While many do, I believe that the great majority of companies do not protect all of their intellectual property. Most are likely not even aware of all of their intellectual property assets. You can help your clients help themselves by helping them inventory their intellectual property and related assets and taking steps to protect them. Many companies have patents on inventions - such as new products, new procedures, and new software. Valuable patent rights in inventions can be lost if patent applications are not filed promptly, due to a recent change in US patent law which in general awards a patent to the first inventor to file a patent application. Sometimes, because of a lack of an agreement beforehand, independent contractors own patent rights in work paid for and delivered to companies. An agreement to help prevent this is included in these materials. Most companies have trademark rights (often unregistered) in their names and the names of their products and services, and in symbols or phrases used on their products or to advertise their products and services. Registering these trademark rights is recommended to help maximize protection of them. It is sometimes best to secure a domain name after conducting a trademark search but before filing a federal trademark application, as sometimes others will review new trademark applications, buy domain names, and offer to sell them to the trademark applicant. Most companies today have copyrights in their website and brochures used to advertise their business, in patient instruction booklets, in operating manuals and employee manuals, for example. Though copyright protection is now automatic in the US, registering copyrights makes it easier to enforce them and gives additional benefits and remedies in federal court. Sometimes, because of a lack of an agreement beforehand, independent contractors own copyrights in work paid for and delivered to companies. An agreement to help prevent this is included in these materials. Most companies have trade secrets - such as formulas for chemicals, procedures for conducting testing, customer or client lists, pricing information, and methods of ensuring quality control. Often these trade secrets can be lost if employees of the company do not realize that they should be kept secret, or if they are not properly documented and the employee who develops them leaves the company. An agreement to help prevent inadvertent loss of trade secrets is included in these materials. Patent attorneys help their clients obtain patents on inventions, register trademarks, register copyrights, document and safeguard trade secrets, license intellectual property, litigate intellectual property disputes, and understand risks and opportunities when venturing into a new business area.

GARVEY, SMITH, NEHRBASS & NORTH, L.L.C., PATENT ATTORNEYS Patents, trademarks, copyrights, trade secrets, and other intellectual property © 2016 Seth M. Nehrbass, Patent Attorney www.neworleanspatents.com December 2, 2016 Page 1 A U.S. patent gives one the right to exclude others from making, using, offering to sell, or selling the patented invention in the United States, or importing the patented invention into the United States, for a limited amount of time, typically about 20 years. Inventors who wish to do a little investigating on their own can do searching on the Internet by visiting the site at http://www.freepatentsonline.com/search.html (this site includes patents and applications from the US and other countries - I recommend that you check all the boxes before searching) and/or the site at www.uspto.gov (this is the web site of the U.S. Patent and Trademark Office - it now has scanned copies of all U.S. patents and the full text of all U.S. Patents from 1976 through the present online) and/or the site at http://ep.espacenet.com/ (this site also includes patents and applications from other countries) and/or www.google.com/patents. The information from this search can be used to improve the invention or may show that the invention is impractical for reasons not previously considered by the inventor. A trademark is a word, name, phrase, design, smell, or sound used to distinguish one's goods or services from those of one's competitors. It is now possible to search the trademark records of the U.S. Patent and Trademark Office for free online at www.uspto.gov. Further, one might also use an Internet search engine (such as www.dogpile.com) to see if the mark is in use on the Internet for potentially related goods or services. A copyright protects architectural, artistic, musical, and literary works, including computer software, against copying. The process for obtaining a copyright registration on a work is relatively simple, and persons with more time than money may wish to consider registering their copyrights themselves. The most conservative route, however, when the work is potentially valuable or there are multiple works to be registered, is to have an experienced attorney register the work. For information about copyrights authors may wish to contact: Copyright Office, Library of Congress, Washington, D.C. 20559, Tel.: (202) 707-3000, web site: http://www.copyright.gov/. It is a good idea to put a copyright notice on all materials, including some contact information (such as on the photo above) to allow one to contact the copyright owner for permission to use a copyrighted work. Since copyright protection is now automatic, one should never copy or use photos, text, or software from another without written permission to do so. A trade secret is information that derives independent economic value from not being generally known to and not being readily ascertainable by proper means by other persons who can obtain economic value from its disclosure or use, and is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. Trade secrets are best protected by not telling them to another unless and until there is a written confidentiality agreement signed by that person. Trade secrets should be marked CONFIDENTIAL on each page. Perhaps the most famous trade secret is the formula for Coca Cola, said to be worth billions of dollars. http://www.ipwatchdog.com/2012/01/06/vault-with-coca-cola-trade-secret-formula-on-public- display/id=21588/ Unfair competition includes false advertising, dilution of a famous trademark, conspiracy to restrain trade, and unfair methods of competition and unfair or deceptive acts or practices in the conduct of any trade or commerce. In general, a business should get all other persons and companies who might develop intellectual property of any kind on behalf of that business to sign an agreement to assign all intellectual property created for the business to the business. An experienced patent attorney can prepare such an agreement. A draft agreement is included in these materials.

GARVEY, SMITH, NEHRBASS & NORTH, L.L.C., PATENT ATTORNEYS Patents, trademarks, copyrights, trade secrets, and other intellectual property © 2016 Seth M. Nehrbass, Patent Attorney www.neworleanspatents.com December 2, 2016 Page 2 Many resources for inventors, entrepreneurs, and businesses can be found at the website of the GULF COAST INTELLECTUAL PROPERTY ASSOCIATION - Bringing innovation and intellectual property to life (www.gcipa.org), whose mission is to promote and protect intellectual property that supports technological innovation and enhances economic prosperity in the Gulf Coast region. To avoid losing possibly valuable intellectual property rights, and to avoid infringing the rights of others, entrepreneurs should meet with a patent attorney before launching a new venture. More information about intellectual property can be obtained from the author of this work, who is solely responsible for its content:

Seth M. Nehrbass, Patent Attorney GARVEY, SMITH, NEHRBASS & NORTH, L.L.C., PATENT ATTORNEYS Three Lakeway Center, 3838 N. Causeway Blvd., Suite 3290 Metairie, LA 70002-1767, U.S.A. Tel.: (504) 835-2000, ext. 345 Fax: (504) 835-2070 Mobile: 504-813-8815 E-mail: [email protected], [email protected] www.neworleanspatents.com

Intellectual property law – it’s what we do – it’s all we do.

Our law practice is limited to patents, trademarks, copyrights, trade secrets, and related intellectual property matters.

Additional useful information can be found at the following websites:

http://www.lexology.com/library/detail.aspx?g=6f7dd161-e101-4809-9cb6-af37b853aae8 https://hbr.org/2000/01/discovering-new-value-in-intellectual-property http://www.wipo.int/sme/en/ip_business/ip_asset/sme_market_value.htm http://www.wipo.int/sme/en/ip_business/managing_ip/managing_ip.htm http://www.ipwatchdog.com/2012/01/06/vault-with-coca-cola-trade-secret-formula-on-public- display/id=21588/

Permission is granted to make unaltered copies of this page and the prior pages of this document and revise as desired the following pages – electronic copies available upon request.

P:\Seth\Seth2007\Z99BD.5\NOBA2016CLE\GSNN-IP-Inventory-20161127-Fillable.doc

PATENT PROPERTIES To search US patents and published applications: http://www.freepatentsonline.com/search.html, then click on US Patent Applications (US Patents will already be checked)

Country [GSNN#] Patent No. Status/ Applicant(s) if not Serial No. Issue Date Maintenance fees inventors Filing Date Title (Nickname or Model (or other action) Corresponding U.S. Inventor(s) Name) due: Serial No./ Assignee Company or person Expiration Date of Record/ Date to whom there is an Assignment obligation to assign Recorded

TRADEMARK PROPERTIES To search US trademark registrations and applications: https://www.uspto.gov/trademark, then click on TESS To search Louisiana trademarks and trade names: https://coraweb.sos.la.gov/CommercialSearch/CommercialSearch.aspx Country/State Registration Status/ Image/Mark Trademark Search Serial No. No. Action Corresponding US Result (Relevant Filing Date Registration Due Serial No. Marks): Owner Date Serial [GSNN #] Goods/Services No./Registration No. First use date Image/Mark Owner

COPYRIGHT PROPERTIES To search registered US copyrights, go to http://www.copyright.gov/records/index.html Type Creator Status/ Agreement Date Title Origin of Rights Action Due Owner Registration No. [GSNN #] Registration Date

Trade secret name Who currently Who has signed Locations where full knows agreements to keep descriptions are kept this confidential (these should all be in a computer document on a flash drive in a safety deposit box, or some other safe location, with multiple electronic and printed backups)

OTHER INTELLECTUAL PROPERTY WEBSITES Find domain name information at https://www.networksolutions.com/whois/ Registrant Domain Name Status/ Registrar/url of Name Current host Action Due Registrar/person who knows Registrant Host contact e-mail password/contact e-mail Organization Document where all address/document where all [GSNN #] website login registrar login information information is kept is kept

SOCIAL MEDIA Owner Social Media Status/ Website/ person who knows [GSNN #] Domain Name Action Due password/contact e-mail address/document where all login information is kept

CORPORATE ENTITIES In Louisiana, search at https://coraweb.sos.la.gov/CommercialSearch/CommercialSearch.aspx Country/State Name Status/ Filing Date Registered Agent and Action Due (annual report Owner Address last filed)/Corporate Attorney [GSNN #] contact information

KEY EMPLOYEES/CONTRACTORS Employee/ Full contact Intellectual Locations where Contractor name information Property signed agreements and citizenship Agreements signed are kept (these and dates should all be in a computer document on a flash drive in a safety deposit box, or some other safe location, with multiple electronic and printed backups)

GARVEY, SMITH, NEHRBASS & NORTH, L.L.C., PATENT ATTORNEYS Patents, trademarks, copyrights, trade secrets, and other intellectual property © 2016 Seth M. Nehrbass, Patent Attorney www.neworleanspatents.com December 2, 2016 Page 11 A test about intellectual property law prepared by Mackenzie D. Rodriguez, Patent Attorney, and Seth M. Nehrbass, Patent Attorney, for use during an educational program entitled New Orleans Bar Association's Procrastinators' Programs™ “Intellectual Property Law for the Non-IP Attorney ” Wednesday, December 28, 2016 3:40 pm-4:40 pm Pan American Life Building, 601 Poydras Street, in the 11th Floor Auditorium

© GARVEY, SMITH, NEHRBASS & NORTH, L.L.C., PATENT ATTORNEYS 3838 N. Causeway Blvd., Suite 3290 Metairie, LA 70002-1767, U.S.A www.neworleanspatents.com First US Patent Telephone and Airplane Patents Monopoly 99% of patents Modern valuable patents Method Patents Plant and Design Patents Trademarks

Original trademark: They’ll blow your sh*t away Collective membership marks Trademark and Service mark Certification marks Famous marks Copyright ? 1. The deadline for filing a patent application in most foreign countries is two years from the time that the invention is first put on sale, used in public, or is described in a printed publication. _____ True _____ False 1. The deadline for filing a patent application in most foreign countries is two years from the time that the invention is first put on sale, used in public, or is described in a printed publication. _____ True _____ False

False. The application must be filed before the invention becomes part of the prior art (i.e., before it is made public in any way). However, the application can be filed within a year of the filing date of a U.S. patent application, as long as the U.S. application was filed before the invention was made public in any way. The deadline for filing a patent application in the US is one year from the time that the invention is first put on sale or disclosed non- confidentially anywhere. 35 U.S.C. § 102.

The US has recently joined most of the world and now awards a patent to the first inventor to file. Thus, it is best to file a patent application as soon as possible. 2. Information in a published patent can constitute a trade secret. _____ True _____ False 2. Information in a published patent can constitute a trade secret. _____ True _____ False

False. To qualify as a trade secret, information must be not generally known. Information in a published patent is considered to be generally known. 3. In general, one must early on decide between seeking foreign patent protection and keeping an invention a trade secret. _____ True _____ False 3. In general, one must early on decide between seeking foreign patent protection and keeping an invention a trade secret. _____ True _____ False

True. Most foreign patent applications are published 18 months from the priority date (usually the U.S. filing date). Under US law, a corresponding US application must be published at 18 months as well. Thus, if one files a foreign application, he will not be able to keep the invention a trade secret if the U.S. patent does not issue, because the invention will be made publicly known by the publication of the foreign and U.S. patent applications. Thus, one must choose, often before knowing whether an invention may be patentable, between possible foreign patent protection and trade secret protection Also, when filing a U.S. patent application, it is necessary to disclose how to make and use the invention in a manner that one of ordinary skill in the field of endeavor of the invention could make it without undue experimentation. Further, the best mode contemplated by the inventor for carrying out the invention must be disclosed. Failure to do either of these things can render the patent invalid. 4. An oilfield service company has problems coupling downhole tools to wirelines. It works with a machine shop to develop a quick-connect coupling. Both companies contribute patentable input to the invention. The machine shop begins to sell the coupling to competitors of the service company. Can the service company stop it from doing so?

___ Yes ___ No 4. An oilfield service company has problems coupling downhole tools to wirelines. It develops a quick-connect coupling with a machine shop. Both companies contribute patentable input to the invention. The machine shop begins to sell the coupling to competitors of the service company. Can the service company stop it from doing so?

___ Yes ___ No

No. Before any work began, the oilfield service company should have required the machine shop to sign an agreement requiring the machine shop to keep all inventions confidential and to assign to the service company all patentable input it might have in the coupling. 5. It is patent infringement to, without authority, import a product covered by a US patent into the United States, even if the product is not used or sold in the United States. _____ True _____ False 5. It is patent infringement to, without authority, import a product covered by a US patent into the United States, even if the product is not used or sold in the United States. _____ True _____ False

True. For years, a patent owner had the right to exclude others from making, using, or selling the patented invention in the United States. In December 1994, patent law was amended to allow the patent owner to prohibit importation of patented articles into the United States. 6. It is patent infringement to, without authority, offer for sale in the United States a product covered by a US patent, even if the product is not sold in the United States. _____ True _____ False 6. It is patent infringement to, without authority, offer for sale in the United States a product covered by a US patent, even if the product is not sold in the United States. _____ True _____ False

True. In 1994, patent law was amended to allow the patent owner to sue for patent infringement when infringers offer to sell infringing products, even if no sales are made. I am not sure what the damages would be if there are no actual sales. This may merely be an amendment to help patent owners establish personal jurisdiction in a friendly venue. 6. It is patent infringement to, without authority, offer for sale in the United States a patented product, even if the product is not sold in the United States. _____ True _____ False

True. In 1994, patent law was amended to allow the patent owner to sue for patent infringement when infringers offer to sell infringing products, even if no sales are made. I am not sure what the damages would be if there are no actual sales. This may merely be an amendment to help patent owners establish personal jurisdiction in a friendly venue. 7. The term of a US patent is 17 years from date of issue. a. True b. False c. It depends on when the patent issued. d. It depends on when the patent application was filed. e. c and d, and not b 7. The term of a US patent is 17 years from date of issue. a. True b. False c. It depends on when the patent issued. d. It depends on when the patent application was filed. e. c and d, and not b e. c and d, and not b.

Due to U.S. legislation implementing GATT (General Agreement on Tariffs and Trade), the term of U.S. patents (and most foreign patents) is now 20 years from the date of filing of the patent application (or of the first parent application, if the patent issues on a continuation or continuation-in-part application). The term of U.S. patents which were in force on June 8, 1995 or which issue after June 8, 1995 on patent applications filed prior to June 8, 1995 is 17 years from date of issue or 20 years from date of filing, whichever is longer. 35 U.S.C. § 154. 8. Beth is in charge of keeping a pump at her factory in good working order. The pump was high maintenance, requiring new seals to be installed every two weeks. Beth discovered that by using two O-rings instead of one, the seals would last six months. Could her discovery be patentable?

Yes. No - adding an O-ring to an existing device is not a patentable improvement 8. Beth is in charge of keeping a pump at her factory in good working order. The pump was high maintenance, requiring new seals to be installed every two weeks. Beth discovered that by using two O-rings instead of one, the seals would last six months. Could her discovery be patentable?

Yes. No - adding an O-ring to an existing device is not a patentable improvement

Yes. In Hughes Tool Company v. Smith Industries International, Smith was required to pay $100 million on very similar facts. 9. Provisional patent applications, long available in foreign countries, are also available in the U.S. _____ True _____ False (meaning provisional patent applications have not been long available in foreign countries, but are available in the U.S.) _____ False (meaning provisional patent applications have been long available in foreign countries, but are not available in the U.S.) _____ False (meaning provisional patent applications have not been long available in foreign countries and are not available in the U.S.) 9. Provisional patent applications, long available in foreign countries, are also available in the U.S. _____ True _____ False (meaning provisional patent applications have not been long available in foreign countries, but are available in the U.S.) _____ False (meaning provisional patent applications have been long available in foreign countries, but are not available in the U.S.) _____ False (meaning provisional patent applications have not been long available in foreign countries and are not available in the U.S.)

True. It is now possible to file provisional patent applications in the United States Patent and Trademark Office. A provisional patent application is similar to a normal, full patent application, except that it does not require claims or a declaration of the inventor, and it requires a smaller government filing fee. Another benefit of the provisional patent application is that it does not start the 20-year-from-filing term, but it can be relied on for priority in a later, complete, patent application filed within a year (or 14 months if the failure to file within a year was unintentional). 35 U.S.C. § 119. Under the Paris Convention, the provisional patent application can be relied on for priority in foreign countries as well. Because no claims are required, it takes less time to prepare (and less time means less money if one is paying to have the patent application prepared). Because no declaration is required, delays due to busy or difficult-to-reach inventors are eliminated. 10. Copying of journal articles for internal use in an oil company is: a. copyright infringment. b. fair use. c. rampant. d. well reported. e. a, c, and d f. b, c, and d 10. Copying of journal articles for internal use in an oil company is: a. copyright infringment. b. fair use. c. rampant. d. well reported. e. a, c, and d f. b, c, and d

e. It is considered copyright infringment because the use is primarily commercial and there are simple procedures (the Copyright Clearance Center, e.g.) for compensating the copyright holder. See American Geophysical Union v. Texaco Inc., 60 F.3d 913, 35 U.S.P.Q.2d 1513 (2d Cir. 1995) and the several earlier versions of that decision by the 2d Circuit. 11. An application to register a trademark on the principal register of the U.S. Patent and Trademark Office can be filed prior to using the trademark in interstate or international commerce. _____ True _____ False 11. An application to register a trademark on the principal register of the U.S. Patent and Trademark Office can be filed prior to using the trademark in interstate or international commerce. _____ True _____ False

True. Intent-to-use applications are a way to allow businesses to determine whether a mark is available before investing money in advertising and graphic development. When a filing is made on the basis of an intent to use, the applicant must file a verified statement that the mark is in use in interstate commerce within six months of the notification that the mark is registrable. This time period can be extended an additional six months automatically upon paying a fee to the United States Patent and Trademark Office, and for good cause for up to three years from the date of notification that the mark is registrable. 15 U.S.C. § 1051(d). An intent-to-use application can be converted to a regular application if use of the mark is made while the application is pending. 15 U.S.C. § 1051(c). 12. Fees must be paid after issue to keep a U.S. Utility Patent in force. _____ True _____ False 12. Fees must be paid after issue to keep a U.S. Utility Patent in force. _____ True _____ False

True. Patents are not renewable. However, to keep a patent in force, patent maintenance fees must be paid according to the following schedule: 3½ years from date of issuance, 7½ years from date of issuance, and 11½ years from date of issuance. If the fees are not timely paid, the patent will expire. 35 U.S.C. § 41(b). However, it might be possible to revive a patent that has expired due to failure to timely pay a maintenance fee. 35 U.S.C. § 41. 35 U.S.C. § 41(c) allows for acceptance of a late maintenance if the non-payment of the maintenance fee was unintentional. 13. A copyright usually lasts the lifetime of the author plus 70 years. _____ True _____ False 13. A copyright usually lasts the lifetime of the author plus 70 years. _____ True _____ False

True. For works created after 1977 (or created before but neither copyrighted nor published), the term of a copyright is the life of the last- surviving author plus 70 years (or in the case of an anonymous work, pseudonymous work, or a "work made for hire" (see 17 U.S.C. § 101), the term is 75 years from the year of first publication) and no renewal of the copyright is necessary or permitted. In general, for works created and copyrighted prior to 1978, the term is 75 years from the date the copyright was originally secured. While it used to be necessary to renew the copyright, if the copyright has never been renewed, renewal is now automatic, 17 U.S.C. § 304, though it might be advantageous in some cases to renew the copyright (renewing can sometimes change ownership of the copyright). 14. A copyright owner has the exclusive right to reproduce the copyrighted work in copies, to sell or lease the work, and to prepare derivative works based upon the work. _____ True _____ False 14. A copyright owner has the exclusive right to reproduce the copyrighted work in copies, to sell or lease the work, and to prepare derivative works based upon the work. _____ True _____ False

True. 15 U.S.C. § 106. 15. A U.S. patent gives the patent owner the exclusive right to make, use, or sell the patented invention in the United States. _____ True _____ False 15. A U.S. patent gives the patent owner the exclusive right to make, use, or sell the patented invention in the United States. _____ True _____ False

False. A utility patent gives one the right to exclude others from making, using, or selling the patented invention in the United States. Recently, as discussed above, this right to exclude has been expanded to include offers of sale and importation into the United States. 35 U.S.C. §§ 154. 16. Copyright protection is automatic in the countries adhering to the Berne Convention. _____ True _____ False 16. Copyright protection is automatic in the countries adhering to the Berne Convention. _____ True _____ False

True. A U.S. author's copyright is recognized and respected by the more than 80 members of the Berne Convention for the Protection of Literary and Artistic Works, without the need for registration in each country. Berne Convention, Art. 5(2). Due to recent changes in U.S. copyright laws, there is no need to place a copyright notice on or to register the work. 17 U.S.C. §§ 302, 401(a), 407(a). However, there are certain advantages to placing the notice on the work and registering the work with the Library of Congress. For example, infringers cannot claim innocent infringement if the notice is prominently displayed on all published copies of the work. 17 U.S.C. § 401(d). If the work is registered within three months of first publication or prior to commencement of infringement by others of the copyright (whichever last occurs), the copyright owner can collect statutory damages and attorney fees, even if no actual damages can be proved. 17 U.S.C. §§ 412, 504, 505. 17. Provided that certain conditions of use and/or excused non-use exist, a trademark registration can last indefinitely. _____ True _____ False 17. Provided that certain conditions of use and/or excused non-use exist, a trademark registration can last indefinitely. _____ True _____ False

True. A certificate of Registration lasts ten years from date of issue if, between the fifth and sixth years after issue, the registrant files an affidavit or special declaration stating that: (1) The goods or services recited in the registration (all or only specified ones) are in current use; or (2) Non-use of the mark is due to special circumstances (for example, shortage of parts needed to manufacture the goods) and not due to any intention to abandon the mark. 15 U.S.C. § 1058. If the affidavit or special declaration is not filed within six years from the date of issue, the registration will be cancelled. 15 U.S.C. § 1058. A similar affidavit or declaration must be made within six months preceding the tenth year after issue, and every ten years thereafter. 15 U.S.C. § 1059. 18. A manufacturer's representative who suggests a particular material for use in an invention is a co-inventor of the invention. (a) True (b) False (c) Maybe 18. A manufacturer's representative who suggests a particular material for use in an invention is a co-inventor of the invention. (a) True (b) False (c) Maybe

(c) Maybe. In Hess v. Advanced Cardiovascular Systems, Inc., 41 U.S.P.Q.2d 1782 (Fed. Cir. 1997), the U.S. Court of Appeals for the Federal Circuit reviewed several U.S. Supreme Court cases which indicate that a person who is used primarily as a reference (that is, one who is asked questions, the answers to which could have been found by the inventors by carefully reviewing product literature or other printed references) does not become a co-inventor simply because he suggests a particular material to be used in an invention. 19. If an invention is not patentable, it cannot be legally protected. _____ True _____ False 19. If an invention is not patentable, it cannot be legally protected. _____ True _____ False

False. All states have laws which protect trade secrets. A "trade secret" is confidential information, including a formula, pattern, compilation, program, device, method, technique, or process, that derives independent economic value, actual or potential, from not being generally known to and not being readily ascertainable by proper means by other persons who can obtain economic value from its disclosure or use. Examples of trade secrets include customer lists, formulas for chemicals, the design of apparatus to perform a method, and the fact that a particular company is conducting research in a particular area. To be considered a trade secret, the information must be the subject of reasonable (but not necessarily fool- proof) efforts to maintain its secrecy. 20. A potential client list may be very valuable, but it cannot be protected from copying by competitors. _____ True _____ False 20. A potential client list may be very valuable, but it cannot be protected from copying by competitors. _____ True _____ False

False. A potential client list which is not patentable because it is not an invention and may not be copyrightable because it does not contain enough original authorship to warrant copyright protection, can be protected from competitors by keeping it a trade secret. 21. Jimmy is trying to develop a new contact for semiconductor devices. He quickly determines that a silicide will be needed, but it will take months of experimentation to decide which silicide will work best over time.

(a) Jimmy should get to work experimenting with different silicides. (b) Jimmy should go to his computer and play on the Internet. (c) Jimmy should hire an invention marketing company to see if there will be a market for his invention. 21. Jimmy is trying to develop a new contact for semiconductor devices. He quickly determines that a silicide will be needed, but it will take months of experimentation to decide which silicide will work best over time.

(b) Jimmy should go to his computer and play on the Internet. It is now possible to conduct quick limited patent searches at no cost on the Internet. This can be useful especially when an invention can be easily described with few search terms. Jimmy might be able to save a lot of time by finding out that the invention he is trying to develop has already been patented. Also, it may also help him from going down blind alleys (some patents may discuss combinations which do not work). In general, inventors should stay away from invention marketing companies that charge on the order of $1,000 or more to "assist" inventors. These companies are usually the only beneficiaries of the relationship between the company and the inventor. 22. Only monetary damages are available as a remedy for misappropriation of a trade secret. _____ True _____ False 22. Only monetary damages are available as a remedy for misappropriation of a trade secret. _____ True _____ False

False. Injunctive relief is available under the Uniform Trade Secrets Act to prevent the misappropriator of a trade secret from using the trade secret. Also, in some states including Texas, there are criminal penalties for trade secret theft. 23. "Our architectural firm has a single subscription to a weekly newsletter, and makes three copies every week for internal distribution in our company. That isn't copyright infringment, is it?" _____ Yes _____ No 23. "Our architectural firm has a single subscription to a weekly newsletter, and makes three copies every week for internal distribution in our company. That isn't copyright infringment, is it?" _____ Yes _____ No Yes. In Washington Business Information Inc. v. Collier, Shannon & Scott (E.D. Va. No. 91-0305-A 2/26/91), WBII sued a law firm and six individual partners for copyright infringment for regularly making multiple complete copies of WBII's weekly newsletter "Product Safety Letter". The defendants responded to a cease-and-desist letter by asserting that "internal circulation of a limited number of copies in order to speed distribution of the information for professional development and research purposes is entirely proper." I spoke with employees of WBII, who told me that the case has settled with an injunction against further copying of the newsletter, an agreement by the defendants to purchase multiple subscriptions for five years, and payment by defendants of a six-figure settlement. See also Pasha Publications Inc. v. Enmark Gas Corp., 22 U.S.P.Q.2d 1076 (N.D. Tex. 1992), in which the parties agreed to a stipulated judgment in which it was declared that Enmark's cover-to-cover photocopying of a newsletter for internal use in the company was not fair use, but rather copyright infringment, and Enmark was enjoined from photocopying the newsletter or faxing it to its satellite offices. 24. In 2014 an architectural firm paid an independent photographer $500 to take photos of personnel for its 2014 brochure. In 2015, the firm used the same photos in a revised brochure. The firm received a letter from the photographer demanding $500. The firm told him that the firm owns the copyright in the photos, and can reproduce them as much as it likes. The photographer disagrees. Who is right? _____ The firm _____ The photographer 24. In 2014 an architectural firm paid an independent photographer $500 to take photos of personnel for its 2014 brochure. In 2015, the firm used the same photos in a revised brochure. The firm received a letter from the photographer demanding $500. The firm told him that the firm owns the copyright in the photos, and can reproduce them as much as it likes. The photographer disagrees. Who is right? _____ The firm _____ The photographer The photographer. When one sells a work of art or literary work, for example, one transfers ownership only of the particular copy sold - the copyright remains the property of the artist or author unless expressly agreed otherwise. 17 U.S.C. § 202. Businesspersons commissioning art for catalogs or brochures should be careful in the wording of the contract for the commission--the purchase of the art for one catalog does not automatically mean that the art can be used in subsequent catalogs. See 17 U.S.C. §§ 101, 201; Community for Creative Non-Violence v. Reid, 109 S. Ct. 2166, 10 U.S.P.Q.2d 1985 (1988). One should get all subcontractors working on a potentially copyrightable project (such as a brochure, catalog, video, etc.) to sign an agreement to assign all copyrights to him; otherwise, he may not be able to later reproduce the work. 25. To recover monetary damages for patent infringement: a) a patent owner must mark his patented product with the applicable patent number or a website where that information can be found; b) a patent owner must notify an infringer of the infringement; c) a suit must be filed within 6 years; d) a) or b) and c); e) none of the above. 25. To recover monetary damages for patent infringement: a) a patent owner must mark his patented product with the applicable patent number or a website where that information can be found; b) a patent owner must notify an infringer of the infringement; c) a suit must be filed within 6 years; d) a or b and c; e) none of the above. d) a or b and c 35 USC §§286-287 26. "Can federal marshals call on my company if I make a few copies of AutoCAD?" _____ Yes _____ No 26. "Can federal marshals call on my company if I make a few copies of AutoCAD?" _____ Yes _____ No

Yes. Unauthorized copying of software is copyright infringment, and can subject the copier to severe penalties. For example, if the infringment is willful and 10 unauthorized copies of AutoCAD are made, the copier can be sentenced to up to five years and fined up to $100,000. 18 U.S.C. § 2319, 17 U.S.C. § 506(a), 17 U.S.C. § 504. The Business Software Alliance (BSA) was formed in 1988 to enforce copyrights in software. The Business Software Alliance has filed more than 400 lawsuits worldwide since 1988 for infringment of software copyrights of its members. According to Lawrence Hawkins of BSA, there are usually a minimum of $10,000- $20,000 in penalties per action, settlements of $500,000 - $800,000 are common, and raids are sometimes conducted on companies suspected of using illegal software copies. 27. "I can't be infringing, because the copyright in the article I copied was never registered." True or false? _____ True _____ False 27. "I can't be infringing, because the copyright in the article I copied was never registered." True or false? _____ True _____ False

False. If the work is registered within three months of first publication or prior to commencement of infringement by others of the copyright (whichever last occurs), the copyright owner can collect statutory damages and attorney fees, even if no actual damages can be proved. 17 U.S.C. §§ 412, 504, 505. However, even if the work is not registered, one still infringes the copyright in it by making unauthorized copies, and can be sued once the copyright holder registers his copyright in the work. The copyright holder will be limited to receiving actual damages that he is able to prove. 28. "I can't be infringing, because there is no copyright notice anywhere on the work!" True or false? (Hint: "My account can't be overdrawn - I still have checks left!")

_____ True _____ False 28. "I can't be infringing, because there is no copyright notice anywhere on the work!" True or false? (Hint: "My account can't be overdrawn - I still have checks left!")

_____ True _____ False

False. Copyright protection is now virtually automatic, without the need to place a copyright notice on or to register the work. 17 U.S.C. §§ 302, 401(a), 407(a). However, there are certain advantages to placing the notice on the work. For example, infringers cannot claim innocent infringement if the notice is prominently displayed on all published copies of the work. 17 U.S.C. § 401(d). Also, as a practical matter, many people are less likely to copy a work if the copyright notice is prominently displayed on it. 29. An invention marketing company should be hired before a patentability search is performed. ____ True ____ False 29. An invention marketing company should be hired before a patentability search is performed. ____ True ____ False

False. In general, inventors should stay away from invention marketing companies. It has been my experience that the only people who profit from involvement with invention marketing companies are the owners of the companies. A Wall Street Journal article reports that one company that advertises nationally has admitted that over the previous seven years only 18 of 2,219 of its customers actually licensed their idea to a manufacturer, and of these only "some" made a profit. 30. Bob is a photographer and often has little children in his office. Bob put a VCR in his waiting room and brought to the office a collection of movies which he copied off of the Disney Channel at home so the children can watch them. Disney sues Bob and his firm for copyright infringement. Who wins? a. Bob b. Disney c. Bob's Lawyers d. Disney's Lawyers e. c and d, but not a or b 30. Bob is a photographer and often has little children in his office. Bob put a VCR in his waiting room and brought to the office a collection of movies which he copied off of the Disney Channel at home so the children can watch them. Disney sues Bob and his firm for copyright infringement. Who wins? a. Bob b. Disney c. Bob's Lawyers d. Disney's Lawyers e. c and d, but not a or b

b. Disney.

It is considered "fair use" (see 17 U.S.C. § 107), not copyright infringement, to tape a program or movie broadcast on television, as long as it is being taped only for "time shifting" (viewing at a later time) and not for "librarying". Sony Corporation v. Universal City Studios, 464 U.S. 417 (1984). However, Bob was not simply time shifting - he was "librarying". International

The Madrid Protocol has 98 Contracting States