Intellectual Property in an Hour (Series: One Hour Law School)

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Practical and entertaining education for
attorneys, accountants, business owners
and executives, and investors.
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DISCLAIMER
The material in this webinar is for informational purposes only. It
should not be considered legal, financial or other professional advice.
You should consult with an attorney or other appropriate professional
to determine what may be best for your individual needs. While
Financial Poise™ takes reasonable steps to ensure the information it
publishes is accurate, Financial Poise™ makes no guaranty in this
regard.
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MEET THE FACULTY
Moderator:
Jack O'Connor – Sugar Felsenthal Grais & Helsinger
Panelists:
Darren Spielman – Kain Spielman, P.A.
Eugene Goryunov – Kirkland & Ellis
William Cory Spence – Spence PC
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ABOUT THIS WEBINAR:
Intellectual Property in an Hour
Intellectual property (“IP”) rights are at the center of 21st Century business. Copyrights protect
the books we read and the movies we watch. Patent protection is what enables drug companies
to spend billions of dollars every year in search of cures to our worst diseases. And without
trademarks, we might not have the iconic brands we have come to enjoy and trust across a
spectrum of industries. But what is a trademark? You cannot touch it, taste it, or smell it. And
what is a copyright, a trade secret, and a patent? When does a business need one? How can a
business avoid violating the intellectual property rights of a third party? And how do traditional
IP rights related to things like internet domain names? This webinar is designed to teach the
basics of intellectual property.
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ABOUT THIS SERIES:
One Hour Law School
Looking for a bird’s eye understanding of the rudimentary principles of a
complex area of law? Interested in a much needed refresher on an issue
that has rapidly evolved in recent years? Short on time? This series
explores the essential building blocks of important legal concepts facing
business people.
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EPISODES IN THIS SERIES
1/22/19 Episode #1: Estate Planning & Asset Protection-101
2/19/19 Episode #2: Intellectual Property in an Hour
3/19/19 Episode #3: Labor & Employment Law in an Hour
4/16/19 Episode #4: Environmental Law In an Hour
5/14/19 Episode #5: Business Tax Law-101
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Dates shown are premiere dates.
All webinars will be available
On Demand approximately 4 weeks
after they premiere.

EPISODE #2:
INTELLECTUAL PROPERTY
IN AN HOUR
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WHAT IS INTELLECTUAL PROPERTY?
●
Creations of the mind, including: inventions; literary & artistic works; symbols;
names & images used in commerce.
●
IP allows creators (or owners) of patents,
trademarks, or copyrighted works to benefit
from their own work or investment in a creation.

TYPES OF INTELLECTUAL PROPERTY
Trade Secret – any confidential business information which provides an enterprise a
competitive edge may be considered a trade secret
Copyright - form of protection grounded in the U.S. Constitution and granted by law for
original works of authorship fixed in a tangible medium of expression
Trademark - word, phrase, symbol, and/or design that identifies and distinguishes the
source of the goods of one party from those of others
Patent - a right granted to the owner of an invention that prevents others from making,
using, importing or selling the invention without his permission

WHAT IS A TRADEMARK?
“generally a word, phrase, symbol, or design . . . that identifies &
distinguishes the source of the goods of one party from those of
others. ”
- United States Trademark Office
All trademarks identified with: ®; ™; ℠ are marks of their respective owners.

TRADEMARKS: SIGNIFICANCE OF SYMBOLS
A brand that someone has started using to sell services, but hasn’t
registered.
A trademark or servicemark that has been registered with the U.S.
Trademark Office or some other country’s or region’s trademark
office.

TRADEMARK PROTECTIONS
●
Allows owner to prevent others from using “confusingly similar” mark to sell goods
or services.
●
Does not prevent others from selling the same goods or
services.
●
Does not prevent others from using the word(s) in owner’s
trademark in other, permissible, contexts.

TRADEMARKS: OBTAINING RIGHTS
Owner must start using word, symbol, or something else to
sell goods or services.
Once created, trademark must be used commercially before
registration.

TRADEMARK REGISTRATION
File - After 3-5 months your application will be assigned to an examiner.
Examiner may approve application for publication or issue an office action if there’s a
problem. If you can address the problem to the examiner’s satisfaction, you move
on. Otherwise, you can appeal or allow your application to die. About 35% of
applications die at some point.
If examiner approves application (either immediately or after an acceptable response
to office action), application will be published in the Official Gazette. Others have 30
days to oppose application (or ask for more time to oppose). If someone successfully
opposes application, it will die. If no one opposes, application moves on.

TRADEMARKS: WHAT ARE COMMON MISTAKES?
●
Trying to register a word or phrase that’s “generic” or “merely descriptive.”
●
Trying to register a trademark that’s “confusingly similar” to someone else’s trademark.
Mistakes on trademark application:
●
“Use” vs. “Intent-to-Use”
●
Choosing wrong international class(es)
●
Improper description of goods and services
●
Not submitting acceptable evidence of use
●
Registering word mark and design together

TRADEMARK DURATION
Trademark registrations last forever, if:
●
Owner keeps using trademark;
●
Mark doesn’t become generic (like zipper or linoleum); and
●
Owner renews registration
The oldest living registered U.S. trademark is Samson® for rope, registered in 1884. Many others go back
almost as long: CocaCola® and Tiffany® were each registered in 1893. Budweiser® and General Mills®
were registered in 1886.

COPYRIGHT
●
A form of protection grounded in U.S. Constitution & granted by law for original works of
authorship fixed in tangible medium of expression.
●
Covers both published & unpublished works.
●
Protects original works of authorship including literary, dramatic, musical, & artistic
works, such as poetry, novels, movies, songs, computer software, and architecture.
Source: Copyright.gov

COPYRIGHT FUNCTION
Author of work alone has right to:
●
Make copies of work
●
Distribute copies of work
●
Perform work publicly
●
Display work publicly
●
Create derivative works
●
Prevent others from doing same

BENEFITS OF COPYRIGHTS
Establishes public
record of
ownership
Enables copyright
holder to sue
infringers
Potential statutory
damages
Can serve as
evidence in court of
validity of copyright
Allows copyright owner
to record registration in
U.S. Customs

TRADE SECRETS
Any confidential business information that provides an entity a competitive
advantage may be considered a trade secret
Any type of information, whatever its nature, which affects the company’s
life and management, has value for the company and which competitors
would like to know.
Any technical knowledge relating to ideas, products or industrial procedures
which, because of its competitive value for the company, the business
person wishes to keep concealed.

TRADE SECRETS cont'd
Trade Secret Elements:
1) Information must be a secret and
2) have commercial value; and
3) Holder must have tried to keep it a secret
●
Unauthorized use of trade secrets by person other than the holder is regarded as unfair practice &
violation of trade secret.
●
Depending on legal system, protection of trade secrets forms part of general concept of protection
against unfair competition or based on specific provisions/case law on protection of
confidential information
Source: www.wipo.int/sme/en/

WHAT IS A PATENT?
●
The grant of a property right to the inventor, issued by the United States Patent
and Trademark Office (USPTO)
●
Generally given in 20 year terms
●
Right is to exclude others from making, using, offering for sale, or selling” the
invention in the United States or “importing” the invention into the United
States. What is granted is not the right to make, use, offer for sale, sell or
import, but the right to exclude others from making, using, offering for sale,
selling or importing the invention
●
Once patent is issued, the patentee must enforce the patent without aid of USPTO
●

TYPES OF PATENTS
granted to anyone who invents or discovers and asexually reproduces
any distinct and new variety of plant
granted to anyone who invents or discovers any new and useful
process, machine, article of manufacture, or composition of matter,
or any new and useful improvement thereof

OBTAINING PATENT RIGHTS
Non-provisional Application / Provisional Application: (1) written
document; (2) drawing; (3) filing fees
Subject matter must be useful
Cannot be too similar to already-patented material

PATENT INFRINGEMENT STANDARDS
Patent owner can sue in federal court for patent infringement.
If patent owner is able to prove infringement, court may order infringer to pay $$$ or stop
infringing (or both) one or more patent claims.
Court can also find that (1) license to the patent not
needed because accused infringer doesn’t practice the
invention; (2) one or more patent claims are not valid;
or (3) there are other reasons why patent owner is not
entitled to prevail.
https://www.uspto.gov/patents-maintaining-patent/patent-litigation/about-patent-infringement

IP CREATED BY EMPLOYEE OR CONTRACTOR
If employee not hired with purpose to invent then IP belongs to them
State Law Overrides
Contract Assigning IP Ownership
No Contract
Some states have enacted laws limiting breadth of PIIAs
May include inventions made on or off company’s premises

MORE RESOURCES
World
Intellectual
Property
Organization
United States
Patent and
Trademark
Office
United States
Copyright
Office
American Bar
Association –
Section of
Intellectual
Property
Intellectual
Property
Owners
Association
Global
Intellectual
Property
Center
Intellectual
Property
Association
American
Intellectual
Property Law
Association

ABOUT THE FACULTY
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JACK O'CONNOR – joconnor@sfgh.com
Jack O’Connor is an associate in the Bankruptcy, Reorganization and Creditors’ Rights practice group. Jack’s
practice focuses on the representation of corporate clients in complex reorganization proceedings across the
country, including unsecured creditors’ committees, debtors, and chapter 11 liquidation trusts.
Jack is skilled in negotiating complex business transactions in chapter 11 proceedings as well as structuring
non-bankruptcy workouts in a historically weak credit market. In 2011, Jack successfully steered his first
chapter 11 plan of reorganization to confirmation before the United States Bankruptcy Court for the
Northern District of Illinois in In re Mangia Mangia, Inc. Jack is committed to finding creative and
practical solutions for his clients, and works to provide them with the highest level of legal service. In
addition to his experience as a restructuring and insolvency professional, Jack has worked on appellate
matters in state and federal courts. For more, please click here.
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DARREN SPIELMAN – dspielman@complexip.com
Darren Spielman is a Shareholder of Kain Spielman, P.A. He concentrates his practice in the field of
intellectual property, with an emphasis on trademarks, trade secrets, domain name disputes, copyrights,
first amendment law including slander, libel and defamation. Darren has a Bachelor of Science in Public
Relations from University of Florida. He also earned a Masters in Mass Communications degree from the
University of Florida, as part of a joint degree with the University of Florida Levin College of Law. Darren is
admitted to practice in front of the U.S. District Court for the Northern District of Florida, Southern District
of Florida, and Middle District of Florida and the Eleventh Circuit Court of Appeals.
Darren is a member of the Intellectual Property Committee, the Vice Chair of the E-discovery Committee and
the Computer Law and Technology Committee of the Business Law Section of the Florida Bar. He is also a
Board Member of the Federal Bar Association Broward Chapter. Darren is a member of the Intellectual
Property Law Association of Florida, the First Amendment Lawyers Association and the Broward County
Bar Association.
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DARREN SPIELMAN cont'd
Awards & Accolades: Darren has been honored as AV Rated with Martindale Hubble 2015-2018 and with the
Super Lawyers Rising Stars Award for 2009-2011, 2013- 2018 and Top Attorneys Florida Outstanding
Young Lawyers Award for 2011, 2013-2017; America’s Most Honored Professionals Top 1%, 2016-2018.
Darren is also a frequent presenter and public speaker on Intellectual Property and First Amendment topics.
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EUGENE GORYUNOV – egoryunov@gmail.com
Mr. Goryunov is an experienced trial lawyer that represents clients in complex patent matters involving many
diverse technologies. He is deeply involved, as trial counsel, in all aspects of cases pending in Federal
courts, at the U.S. International Trade Commission involving Section 337 investigations, and in appeals at
the U.S. Court of Appeals for the Federal Circuit. He also regularly serves as first-chair trial counsel in post-
grant review trials, on behalf of both Petitioners and Patent Owners, pending at the U.S. Patent &
Trademark Office. To date, he has been involved in over one-hundred post-grant review trials.
Mr. Goryunov is a regular contributor to intellectual property publications, including the Intellectual Property
Magazine, The Patent Lawyer, and the IPO Law Journal. To date, he has published more than sixty articles,
many of which discuss post-grant review trial practice. Mr. Goryunov also speaks about diverse issues of
patent law and post-grant review trial practice. He also teaches patent law and intellectual property
litigation at the Columbia University and previously at the University of Notre Dame.
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WILLIAM CORY SPENCE – william.spence@spencepc.com
William Cory Spence is the Founder of SpencePC.
Mr. Spence assists individual and business clients to obtain their best possible outcome in contentious legal
matters. He has extensive experience in litigation, arbitration, and mediation involving all areas of
intellectual property law. A registered patent attorney, Mr. Spence serves clients by providing advocacy and
advice in the areas of: patent infringement; trade secret misappropriation; unfair competition (including
conspiracy, tortious interference, and related antitrust claims); breach of contract; post-grant patent
proceedings (e.g., inter partes review) ; trademark infringement; and copyright infringement.
He has litigated claims in both state and federal courts throughout the United States. Additionally, Mr. Spence
has extensive experience with patent monetization strategies and complex, international patent
infringement litigation involving multiple parties and jurisdictions, most notably including Japan. He is a
published author and frequent speaker on patent monetization and other intellectual property issues, and
has been repeatedly recognized as an “Illinois Rising Star” and “Illinois Star,” in the area of intellectual
property.
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WILLIAM CORY SPENCE cont'd
Cory is a graduate of the University of Notre Dame, where he obtained separate Bachelor of Science Degrees in
Chemical Engineering and Biophysics (“Physics in Medicine”). As a student he received the distinction of
Notre Dame Scholar and also earned the Monogram Award. Upon graduation from Notre Dame, Mr.
Spence received his commission as a Second Lieutenant in the United States Air Force, Medical Service
Corps. After completing his military service, he worked for several years in the chemical industry before
pursuing his legal education at the University of Houston Law Center.
Prior to forming SpencePC, Mr. Spence spent twelve years practicing law with Kirkland & Ellis LLP in Chicago,
IL and Tokyo, Japan.
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QUESTIONS OR COMMENTS?
If you have any questions about this webinar that you did not get to ask during
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not hesitate to email us at info@financialpoise.com with any questions or
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email and we will do our best to provide a timely response.
IMPORTANT NOTE: The material in this presentation is for general educational purposes only. It has been prepared primarily
for attorneys and accountants for use in the pursuit of their continuing legal education and continuing professional education.
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ABOUT FINANCIAL POISE
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