What Is a Copyright? - Volpe and Koenig, PC

i nsider
The Intellectual Property
Spring 2012
A Publication of Volpe and Koenig, P.C.
Inside this
Issue
What Is a Copyright?................1
Non-Disclosure and NonCompete Agreements Are
Not the Same Thing..................2
U.S. Patent Searches and the
Advantages of Provisional
Applications ..............................3
U.S. Trademark Owners
Are Being Targeted with
Misleading Letters...................4
Understanding the
Requirements for Trade
Secret Protection......................5
Firm News….................................6
©
What Is a Copyright?
By Melissa B. Thompson
©
A copyright is defined as an exclusive legal right to reproduce, publish, sell or
distribute an original work of authorship. That original work is an expression
of an idea. The idea does not need to be original, but the expression must be
original. Stated in another way, ideas are not copyrightable, but expressions of
ideas are. The line between idea and expression is a fine one and can be difficult
to define. The type of work for which a copyright can be obtained is broad: a work
of authorship may be literary, musical, dramatic, pantomime, choreographic,
pictorial, graphic and sculptural, motion picture and other audiovisual, sound
recording, or architectural.
How Does an Author Get a Copyright?
The author is the person (or persons) who actually creates the work, or translates
an original expression of the idea into a fixed, tangible medium. A copyright
initially vests in the author of the work at the time it is fixed. The requisite level
of originality or creativity is low and the Copyright Registrar does not make an
exhaustive review for originality. Fixation is a minimum requirement for copyright
protection.
Although the federal copyright attaches at the time of fixation, the United States
has a formal registration process that is a necessary requirement for enforcing
a copyright in the federal courts. Registration is handled through the Library of
Congress and the filing requirements are generally straightforward. However,
care must be given to the filing process, as it is possible to limit the scope of the
copyright through the nature of the filing.
What is the Duration of a Copyright?
The term of a copyright can be confusing as it depends on several factors, including
whether the work was published, and if so, the date of first publication. A brief,
non-exhaustive, explanation of the various statutory periods follows.
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For works created after January 1, 1978, the copyright attaches
upon being fixed in a tangible medium. Copyright protection
for these works lasts for the life of the author plus an additional
70 years. For an anonymous work, a pseudonymous work, or
a work made for hire, the copyright endures for a term of 95
years from either the year of its first publication, or a term of
120 years from the year of its creation, whichever expires first.
There are no renewals for works created after January 1, 1978.
For works created prior to 1978, the copyright term will vary
on the consideration of several factors, including whether the
work of authorship has been published, and if so, the date of
first publication. These works require the consideration of four
additional dates in determining the duration of a copyright.
•
Works published before 1923:
The work is now in the public domain and is no longer
protected under federal copyright law.
•
Works published between 1923 and 1963:
The copyright attached upon publication of the work with
notice. The initial term for a work within these dates
is 28 years, with a renewal term of 67 years. However,
renewal is not automatic. If no renewal is sought, the
work goes into the public domain.
•
•
©
Works published between 1964 and 1977:
The copyright attached upon publication of the work
with notice. The initial term for works within these dates
is 28 years, with a renewal term of 67 years. For a work
between 1964 and 1977, the second term commences
automatically.
Created, but not published, before 1978:
The term of the copyright for these works is the life of
the author plus 20 years. The earliest possible expiration
date for works that remain unpublished was December
31, 2002. For works that were published by December 31,
2002, the earliest possible expiration date is December
31, 2047.
As illustrated by the many dates and conditions, the existence
of a copyright and whether it is enforceable requires a careful
analysis of multiple factors and dates. While this brief
summary does not address the issue of copyright assignments,
such assignments add additional considerations regarding the
effective dates and any renewals. 
Non-Disclosure and Non-Compete Agreements
Are Not the Same Thing
By Anthony S. Volpe
Many intellectual property owners (IPOs) are aware of the need
to have some form of a confidentiality agreement before entering
into a relationship with a third party that may require disclosure
of confidential information. However, many IPOs are not aware
that such agreements are subject to state contract law, rather
than federal law — whether it is patent, copyright, trademark
or otherwise. Additionally, many IPOs are not aware that both
non-disclosure and non-compete agreements are recommended
before disclosing the information.
With respect to the controlling state law, best practice is to have
the agreement clearly state the controlling law and, if possible,
the venue for resolving any disputes. Fixing the controlling law
provides the opportunity to review the law in that state and check
for any special considerations for compliance. With respect to
fixing the venue, it eliminates uncertainty as to where any dispute
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will be settled. Venue can be important to smaller IPOs that are
concerned with litigating in a location far from the normal base of
operation. This is also important to foreign-based IPOs that have
limited U.S. operations or want to avoid the expense of crosscountry travel should a dispute arise.
Generally speaking, non-disclosure agreements are good at
clearly stating that the third party is obligated to protect the
confidentiality of the shared information and is prohibited
from using that information — or a derivative of the disclosed
information — for itself or another party. There are, however,
areas within an agreement that may need additional attention to
ensure maximum protection. Defining a derivative, for example,
is often a complicated and expensive process. Furthermore,
non-disclosure agreements seldom restrict third parties from
independently developing a different approach to the same end
objective. Also, the scope of the information protected by the
agreement may be insufficient to cover all concerns. Since many
IPOs are engaged in a specific market with target customers,
disclosure of that market information can be as valuable as
the more detailed information protected by the non-disclosure
agreement.
A non-compete agreement seeks to close the protection gaps
identified above and avoid conflict — and possible litigation —
over use of the information being disclosed. If the IPO expects
the time between disclosure and going to market to be one year,
the non-compete language should state that the third party
will not compete with the IPO’s business in the specified area
for a set period of time after the termination or completion of
the relationship. In the case of a 12-month market launch, the
general rule is to seek an 18 to 24 month non-compete period
that commences at the end of the contemplated third-party
relationship. This should offer sufficient time to establish the
IPO’s identity in the marketplace before the third party can
compete. Even if the third party begins immediate development
on a competitive entry at the end of the period, the non-compete
agreement will preserve the IPO’s initial market entry period.
There is no need to have separate agreements. These provisions
can easily be included in a single agreement, which is the
preferred method, as it reduces the likelihood of conflicting terms
or confusion over the information subject to the agreements. 
U.S. Patent Searches and the Advantages
of Provisional Applications
By John Porrazza
Patent searches are typically performed to determine whether
(1) an invention is patentable or (2) to determine if there is a
possible infringement. The patentability search, which is generally
more expansive, seeks to determine whether the invention
is patentable in view of the prior art. This involves searching
through all relevant patents and publications (as well as other
literature and any known products) to determine what is taught
by the prior art. The second search is primarily concerned with
identifying potential infringement charges and is typically limited
to patents to determine a clearance to sell or market a particular
product or service. Such an infringement opinion searches for
a set period, such as 25 years, and focuses on issued patents.
This search is typically more detailed than a patentability search,
but less inclusive because only enforceable patents or potential
applications are of concern.
A patent search for an infringement opinion will be more confined
because the patent expiration dates will narrow the search.
Utility patents filed on or after June 8, 1995, have a patent term
of 20 years —
calculated from
the filing date of the
application (or the earliestreferenced utility application
from which the patent claims priority). In
some cases, a patent may expire more than 20
years from the filing date. For example, due to delays at
the United States Patent and Trademark Office (USPTO), the
patent may be entitled to Patent Term Adjustment (PTA) that
extends the patent a certain number of days beyond 20 years,
based on the delay in that particular case.
Patent searches for the purpose of patentability are not without
flaws. Patents and published applications from other countries
may be relevant to the invention in question. However, many
foreign documents are not published in English and, consequently,
may not be found during a patentability search. Also, a U.S. patent
application typically is not published until 18 months from the
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earliest application filing date. Thus, there are information gaps
in a patentability search, especially if it is limited to U.S. patents.
U.S. provisional applications can be a useful form of gap protection.
A provisional patent application provides no enforceable rights
and will not be substantively examined. However, it is an
effective placeholder that establishes a priority date for filing a
“non-provisional patent application.” A provisional application
expires 12 months from the date of filing, so a non-provisional
application that claims priority from it must be filed within that
one-year period. Thus, the provisional application can be a
safeguard against the gap in prior art information and preserve
an early date.
The use of provisional applications may become even more
advantageous in view of the recently-enacted America Invents
Act (AIA) that provides several changes to United States patent
law. The AIA, enacted on September 16, 2011, establishes a
“First-Inventor-to-File” system in the United States as of March
16, 2013. This will represent a change from the current “Firstto-Invent” system, and be more in harmony with international
patent laws. Establishing an earlier filing date will be even more
important as of the March 2013 date.
This brief article did not consider invalidity, technology mapping, or
state-of-the-art searches, but information about them is available
upon request at [email protected]. 
U.S. Trademark Owners Are Being Targeted with
Misleading Letters
By Michael B. Smith
U.S. trademark owners beware. U.S. trademark owners are
receiving correspondence from privately owned and operated
companies that have the appearance of being sent from the
United States Patent and Trademark Office (USPTO). The
solicitation letters are instructing trademark owners to respond
to the letter and include the payment of required fees.
Many of these non-governmental organizations use “U.S.”
or “United States” in their names to create the
misleading impression that they have
an affiliation with the USPTO. These
companies are also including specific
information regarding the identified
trademark — such as the serial
number, registration number, filing
date and other specific information
— to give their solicitations the
appearance of an official government
correspondence. However most, if
not all, of this information is publicly
available on the official USPTO Web
site for registered trademarks, trademark
applications and newly allowed marks that are
published for opposition in the Official Gazette for
Trademarks (OG).
These deceiving solicitation letters primarily offer trademark
monitoring, recording of trademarks with the United States
Customs and Border Protection and other ancillary services. They
give the impression that the offered services are compulsory and
the associated fees are required. These letters often include a
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Spring 2012 Insider Volpe and Koenig, P.C.
looming deadline in an effort to pressure the trademark owners
into quickly sending the so-called “required” fees to meet that
deadline.
The USPTO is aware of these companies and their tactics. The
USPTO has clearly stated that it is not affiliated with these
companies and that the USPTO does not provide the services
promoted in these solicitation letters. The USPTO’s official
Web site (http://www.uspto.gov/trademarks/solicitation_
warnings.jsp) includes an associated “Warning to
USPTO Customers: Trademark Monitoring and
Document Filing Companies.” The USPTO
encourages trademark owners who receive
these solicitation letters to file a complaint
with the Federal Trade Commission (FTC)
and to notify the USPTO. Details on filing
a complaint with the FTC and notifying
the USPTO regarding receipt of suspicious
solicitation letters also can be found at the
above link.
If Volpe and Koenig is engaged to handle a trademark
matter on your behalf — whether a pending application
or an issued registration — that communication will come from
our offices, not from the USPTO or a third party. We will be in
direct contact with you about any deadlines concerning your
matter, or any fees due to the USPTO.
Volpe and Koenig strongly advises recipients of these trademark
solicitation letters to treat them with extreme caution. If you
receive a suspicious solicitation, we are available to review the
correspondence and recommend a course of action. 
TOP SECRET
Understanding the Requirements for Trade Secret
Protection
By Abhik A. Huq
Trade secret protection, one of the four cornerstones for protecting
intellectual property, is primarily governed by state law, either
through state common law (New York and Texas), codified state
common law (Massachusetts) or adoption of a Uniform Trade
Secrets Act (UTSA) statute variation (47 states). The federal
Economic Espionage Act of 1996 (EEA) also prohibits certain
conduct involving trade secrets. Because there is no unified
statutory structure, like patent law, a case-by-case analysis of the
applicable laws needs to be conducted, as each state law brings
its own perspective to the protection of trade secrets and many
of the circumstances are highly fact intensive.
to the owner, includes single and multiple use trade secrets and
eliminates the continuous and non-continuous distinction.
The Controlling Definitions of a Trade Secret
The Standards for Misappropriation
The common law provides that a “trade secret may consist of
any formula, pattern, device or compilation of information which
is used in one’s business, and gives him an opportunity to obtain
an advantage over competitors who do not know or use it.”
Moreover, a trade secret is not like other confidential business
information that is concerned with a single event, but rather is
concerned with a process or device in continuous use by the
business.
The common law generally defines misappropriation as use
or disclosure of a trade secret that was acquired through a
relationship of trust (such as employment), or through fraud or
other improper means, such as theft, bribery, or hacking.
The UTSA definition of a trade secret addresses “information,
including a formula, pattern, compilation, program, device,
method, technique, or process, that: (i) 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, and (ii) is the subject of efforts that are reasonable under
the circumstances to maintain its secrecy.” The UTSA definition
is less rigid than the common law on the commercial advantage
The EEA definition is the broadest of the three with the list including
“all forms and types of financial, business, scientific, technical,
economic, or engineering information, including patterns, plans,
compilations, program devices, formulas, designs, prototypes,
methods, techniques, processes, procedures, programs, or codes,
whether tangible or intangible, and whether or how stored,
compiled, or memorialized physically, electronically, graphically,
photographically, or in writing.”
UTSA states define misappropriation in a variety of ways that
include at least two of the following elements: (1) existence of a
trade secret; (2) acquisition by a person that knows or has reason
to know that the trade secret was acquired by improper means;
(3) disclosure or use without consent by one who used improper
means to acquire knowledge of the trade secret or knew that it
was derived by improper means; (4) acquisition by mistake by
one who knew that it was a trade secret; or (5) use of a trade
secret received pursuant to a confidential communication or
relationship.
The EEA has two provisions, (1) economic espionage and (2)
theft of trade secrets. An offense under provision (1) or (2) is
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committed when one knowingly steals a trade secret, copies or conveys a trade secret, receives a stolen trade
secret, or attempts or conspires to do any of the above, under (1), for the benefit of a foreign entity, or, under
(2), for placement of a product in domestic interstate or foreign commerce for the economic benefit of a
person that is not the trade secret owner.
The Various Remedies
The common law permits the trade secret owner to seek injunctive relief, monetary damages based on actual
harm and in exceptional cases punitive damages.
The UTSA remedies are relatively broad in that they include the potential for attorneys fees.
The EEA includes criminal penalties, like fines and imprisonment, in addition to forfeiture.
Other Considerations
Since the controlling law is often state law, there are other applicable provisions that need to be considered,
including:
•
•
•
Statutes of limitations that vary from two to five years.
Some states recognize the inevitable-disclosure doctrine, which may result in a trade secret
misappropriation when an employee changes jobs.
Others have requirements on the identification of trade secrets for purposes of litigation.
Choice Considerations
The decision to employ trade secret protection requires a meaningful analysis of the subject matter to
determine whether it is patentable and what form of protection is most advantageous. 
fir m news
Robert D. Leonard Elected as Shareholder
The firm is pleased to announce that Robert D. Leonard has been elected as Shareholder.
Rob practices in all areas of intellectual property law with a concentration in the procurement
and monetization of domestic and foreign patent applications. Rob frequently prepares
infringement and invalidity opinions, and advises in intellectual property due diligence and
licensing transactions. Rob’s experience includes securing and leveraging intellectual property for various technologies, including telecommunications, displays, chemical processing
and biotechnology.
Prior to joining Volpe and Koenig in 2005, Rob gained industry experience as a process engineer in a biologics pilot plant of a major biopharmaceutical company. He is a member of the
Pennsylvania Bar and is registered to practice before the United States Patent and Trademark
Office. Rob is also an active member of the Licensing Executive Society.
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Spring 2012 Insider Volpe and Koenig, P.C.
Jessica N. Morton, Thomas Gushue and Turhan F. Sarwar
Join as Associates
Pictured (l-r)
Jessica N. Morton,
Thomas Gushue
and Turhan F. Sarwar
The firm is pleased to announce that three members of its most recent clerk group have joined the firm as associates.
Jessica is an associate in the firm’s University and Life Sciences Group, where she applies her background in molecular biology and
genetics and focuses on biological and chemical patent prosecution, licensing and due diligence.
Tom is an associate in the Mechanical Arts Group. His practice focuses on U.S. and international patent prosecution and intellectual
property litigation with an emphasis on working closely with clients to establish rights that are best matched to their objectives.
Turhan is an associate in the Trademark and Litigation Groups. He has excellent research and writing skills that are well suited to his
focus on trademarks, intellectual property litigation, licensing, and portfolio management. He also provides support in connection
with the administrative issues that arise in the prosecution of domestic and international trademark and patent applications. 
Aneesh A. Mehta, Neil C. Maskeri, and Turhan F. Sarwar Contribute
as Board Members of the National South Asian Bar Association and
the Philadelphia Chapter
Pictured (l-r)
Aneesh A. Mehta,
Neil C. Maskeri, and
Turhan F. Sarwar
Aneesh was elected as the Vice President of Memberships for the North American South Asian Bar Association (NASABA), where he
also serves as co-chair of the Sponsorship Committee, as well as co-chair for the 2012 NASABA Convention to be held in Philadelphia
from June 28-30. Aneesh is also completing his term as Vice President of the South Asian Bar Association’s (SABA) Philadelphia
Chapter and will remain on that Board as an advisory member.
Neil was elected President of SABA’s Philadelphia Chapter, where he will help further its mission to better serve the area’s growing
South Asian Bar and community. He has been an active member of SABA for nearly five years and previously served as the Vice
President of Law Student Outreach and SABA Treasurer. In addition to his new post, Maskeri will serve on the Board of NASABA, and
serves as a co-chair for the 2012 NASABA Convention.
Turhan was appointed Vice President of SABA’s Attorney Outreach Committee for the Philadelphia Chapter. In this role, he will help
to increase the awareness of, membership in, and involvement with SABA among the Philadelphia legal community.
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f i r m ne w s co n t i nu e d
Volpe and Koenig Gears Up to Kick off Its
6th Annual IPromise™ Charitable Giving Fund
We are happy to announce the firm’s 6th Annual IPromise™ Charitable Giving Fund (formerly known as The Giving
Fund) is set to kick off in early June 2012. This year, non-profits from the Greater Philadelphia and Princeton, NJ areas
that support Arts & Culture or Health & Human Services efforts will be invited to apply. Selected charity organizations
will be notified at the end of August 2012 and will be invited to present to the IPromise™ committee. The Committee
will then select two organizations (one in each category) to each receive a grant of $20,000. More information will be
posted on the firm’s Web site as the 2012 application process begins in early June.
Volpe and Koenig Hosts County Mayo, Ireland
Social Media Site Launch
On March 12, 2012, the firm hosted a reception to support the launch
of a new Web site (www.mayo.ie) designed to connect the nearly
three million people worldwide of County Mayo heritage. The social
media Web site was an initiative of the Mayo County Council and
the Western Development Commission (WDC), a statutory body
created to promote both social and economic development in the
Western Region of Ireland.
Shareholder John O’Malley, whose father hailed from County Mayo,
helped organize the reception in Philadelphia, which is the home to
one of the largest Irish populations in the United States. Distinguished
guests from County Mayo’s Council attended the reception at Volpe
and Koenig to personally announce the launch. Among the featured
speakers at the reception were Volpe and Koenig’s President and
CEO, Jay Halt, as well as City of Philadelphia Councilman James
Kenny and former Pennsylvania State Senator Joseph Rocks. 
The Intellectual Property Insider is a quarterly publication from Volpe and Koenig, P.C. For a
complimentary subscription, please email your contact information to [email protected] or visit
our Web site at vklaw.com. To opt-out of an email subscription, please send your name and email
address, with “unsubscribe” in the subject line, to [email protected]. This publication is intended for
informational purposes only and should not be considered legal advice. Please consult an attorney
regarding your specific situation. Receipt of this newsletter does not constitute an attorney-client
relationship. © 2012 Volpe and Koenig, P.C.
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Spring 2012 Insider Volpe and Koenig, P.C.
Standing (l-r): Patsy O’Brien (County Mayo Councillor), Richard Finn (County
Mayo Councillor), Colleen Mullarkey, Siobhan Lyons (Director of Irish Immigration Center of Philadelphia), John J. O’Malley (Shareholder, Volpe and Koenig,
P.C.) Theresa Murtagh, Esquire, Jay Halt (President and CEO of Volpe and
Koenig, P.C.), and James Kenny (City of Philadelphia Councilman); seated (from
left): Rosaleen Megonegal (President of Mayo Association of Philadelphia) and
Austin Frances O’Malley (Mayor of County Mayo)
News Credits
Editor . . . . . . . . . . . . . . . . . . . Anthony S. Volpe
Contributing Authors . . . . . Abhik A. Huq
John Porrazza
Michael B. Smith
Melissa B. Thompson
Anthony S. Volpe