What is Intellectual Property Anyway?
(Drafted for a non-legal audience)
Intellectual property (“IP”) protects intangible creations of the human mind, such as inventions, literary and artistic works, designs, symbols, brand names, images, and business methods and processes. The most common forms of IP are copyrights, trademarks, patents, and trade secrets.
A copyright protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. The Copyright Act grants the copyright owner the exclusive rights to:
prepare derivative works based upon the copyrighted work;
perform the copyrighted work publicly (applies to literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works);
display the copyrighted work publicly (applies to literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work); and
perform the copyrighted work publicly by means of a digital audio transmission (applies to sound recordings).
Protecting Your Works
Copyright protection arises automatically once an original work of authorship is fixed in a tangible medium. Thus, there are no formal registration procedures required to acquire copyrights. In addition, for registered and unregistered works first published on and after March 1, 1989, the use of a traditional copyright notice (for example, “Copyright © 2017 Cooper Legal, LLC”) is optional. However, the use of the copyright notice may be beneficial in discouraging infringement and may provide evidentiary advantages in litigation. Although no registration is required, a copyright owner should consider enhancing their rights by registering their works with the U.S. Copyright Office. Some of the benefits of federal registration include:
Creates a public record of a copyright claim
Allows the copyright owner to file suit for infringement in federal court
Establishes prima facie (presumption of validity) evidence of the validity of the copyright and facts stated in the certificate (registration must be made before or within five years of publication)
Provides eligibility for monetary damages, attorneys’ fees, and costs of litigation (registration must be made prior to infringement or within three months after publication of a work)
Allows copyright owner to establish a record with the U.S. Customs and Border Protection (“CBP”) for protection against the importation of infringing copies
Duration of Copyright Protection
The duration of copyright protection depends on the date of creation and the nature of authorship. Generally, for works created on or after January 1, 1978, the term of copyright is the life of the author plus 70 years after the author’s death. If the work is a joint work (written by multiple authors), the term lasts for 70 years after the death of the last surviving author. For works made for hire and anonymous or pseudonymous works, the term of copyright is 95 years from the date of publication or 120 years from the date of creation, whichever is shorter. For information related to the duration of copyright protection for works created before January 1, 1978, see Copyright Basics, section “How Long Does Copyright Last?”
The term "trademark" is often used to refer to both trademarks and service marks. A trademark is a word, phrase, symbol, logo, design, or a combination of the foregoing that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, design, or combination of the foregoing that identifies and distinguishes the source of a service rather than goods. Some examples include: brand names, slogans, and logos.
Protecting Rights in Your Trademarks
Under common law, a trademark owner begins receiving legal protection for their trademarks at the moment the trademark owner begins properly using the mark in commerce. However, the protection is limited to the territory in which the mark is used. As long as the trademark owner continues to use the mark properly, the mark does not become generic, and is protected against infringement, the protection will be indefinite - no registration is required. However, if the trademark owner registers their mark with the U.S. Patent and Trademark Office (“USPTO”), the owner will be granted nationwide protection (in some cases there may be territorial limitations). If properly used, a federally registered trademark maintains all of its common law rights and endures a term of 10 years. However, a federally registered trademark may be renewed every 10 years. Therefore, if the trademark owner continuously renews the mark, the trademark owner may enjoy federal protection indefinitely, so long as the mark is not abandoned, does not become generic, and is protected against infringement.
In addition to nationwide protection, federal registration provides additional benefits such as:
Permission for the trademark owner to use the ® symbol after the mark
Prima facie (presumption of validity) evidence of the validity of the trademark and facts stated in the registration certificate
Provides eligibility for monetary remedies in infringement lawsuits such as infringer’s profits, damages, litigation costs, and, in some cases, treble damages (tripled) and attorneys’ fees
Gives owner the power to authorize U.S. Customs to block counterfeit imports
A patent protects inventions, developments, and improvements, such as devices, machines, methods of manufacture, business methods, pharmaceutical products, ornamental designs for useful objects, and new varieties of plants. There are three different types of patents: design, utility, and plant patents.
Design Patents. A design patent protects new and original ornamental designs.
Utility Patents. Utility patents protect any novel, useful, and non-obvious process, machine, article of manufacture, composition of matter, or any improvement of the foregoing. These patents protect the manner in which the article is used i.e. the functionality or “utility”.
Plant Patents. A plant patent protects distinct and new varieties of plants which have been asexually reproduced (reproduction other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, etc.). Plants capable of sexual reproduction are not excluded from consideration, if they have also been asexually reproduced.
In order to be eligible for any of these patents, the invention must be “novel” or new, useful, and non-obvious.
Novelty. In order for an invention to be considered novel the invention cannot be:
known to the public before the applicant filed for patent protection, unless the one-year grace period is applicable;
described in a printed publication before the applicant filed for patent protection; or
described in a published patent application or issued a patent that was filed before the applicant filed for patent protection.
Useful. The invention must have a useful purpose. The invention must be operable or functional, not just imply usefulness or potentially be useful.
Nonobviousness. If an invention is not identical to the prior art (prior products or processes), then it is considered novel. Stated differently, the invention is compared to the prior art, and then a determination is made as to whether the differences between the prior art and the new invention would have been obvious to a person having ordinary skill in the type of technology used in the invention/technical field of the invention. An invention would be “obvious” if someone knowledgeable in the particular area relating to the invention would regard your invention as already known. Even if the identical invention is not currently existing, but an ordinary person skilled in the art was to combine several references, then it would be obvious. Non-obviousness is defined as a sufficient difference from what has been used or described before that a person having ordinary skill in the area of technology related to the invention would not find it obvious to make the change. In other words, a determination of whether the improvement is more than the combination of or predictable use of prior art elements according to their established functions.
How to Protect Your Patent
Patents are issued by the U.S. Patent and Trademark Office and grants the owner an exclusive right to exclude others from making, using, selling, offering to sell, and importing an invention for a limited period of time.
Duration of Patents
The duration of patent protection depends on the type of patent granted:
Design Patents – 15 years from issuance for applications filed on or after May 13, 2015 (14 years from issuance, if filed before May 13, 2015)
Utility Patents - 20 years from the date on which the application for the patent was filed in the United States (or, in special cases, from the date an earlier related application was filed)
Plant patents - 20 years from the date on which the application for the patent was filed in the United States (or, in special cases, from the date an earlier related application was filed);
Under certain circumstances, patent term extensions or adjustments may be available. An experienced patent attorney can assist you in making a determination as to whether a particular patent is eligible for an extension.
The USPTO provides a downloadable patent term calculator as a resource to assist you in estimating the expiration date of a design, utility, or plant patent. For more information about patent terms, visit the USPTO's website.
A trade secret is secret information used in the operation of a business that gives the business an opportunity to obtain an economic or business advantage over its competitors who do not have access to the information. A trade secret can be any information of value that is maintained in confidence and may encompass confidential financial information, technical information, business plans and information, marketing strategies, research, client lists, chemical formulas, software source code, or processes, methods, or techniques that generally meet the following outlined criteria:
The owner derives independent economic value or business advantage from the information not being generally known
The information is not generally known or ascertainable outside of the owner's organization and control (i.e it’s a secret)
The owner makes reasonable efforts to preserve its secrecy
How Trade Secret Rights are Secured and Maintained
Trade secrets are protected without any procedural formalities nor is there any legal notice that must be attached to trade secrets. Protection lasts until the information is publicly available or until the owner no longer derives economic value or business advantage from its secrecy. Therefore, a trade secret can be protected indefinitely as long as it meets the criteria above.
Some of the methods typically employed to protect trade secrets are:
Limiting the number of people with access to the information
Requiring people with access to the information to execute non-disclosure agreements
Restricting access to the information (i.e. lock it away in a secure place, such as a bank vault or encrypted or password protected files)
Employing appropriate security measures at the owner's facilities and computer networks
Designating any written material pertaining to the trade secret as “CONFIDENTIAL” or “SECRET”
Employing security measures to prevent reverse-engineering
Although no formal registration formalities are required, some trade secrets may be eligible for independent protection under copyright and/or patent laws. A prime example would be computer source code; it can be protected as a trade secret, but it may also be protected by copyright and can embody a patentable invention. However, it is important to note, trade secret protection may be lost if a deposit and public disclosure of the source code are made in connection with registration of the copyright of that source code. In addition, trade secret protection will be lost upon publication of a patent application. Therefore, if you are considering registration, you should consult with an intellectual property attorney to determine the best course of action and enlist their assistance in the registration process in order to avoid the possibility of inadvertent disclosure resulting in the loss of trade secret protection.
In sum, each type of intellectual property encompasses and protects a different aspect of an individual or company’s asset(s). Intellectual property is extremely valuable to an individual or company’s operations and therefore should be protected. Many small businesses fail to protect their IP, which often has dire consequences. Don’t take the risks. Protect your intellectual property.
If you have assets that you would like to protect, contact Cooper Legal and let us help you secure the full protection of your intellectual property rights.
This blawg is provided by the firm for informational purposes only and may not be relied on as legal advice. If you have any questions related to your specific business needs, please schedule a legal consultation today.