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Intellectual Property

What is Intellectual Property?

“The Congress shall have the power. to promote the Progress of Science and useful Art, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

(Article 1, Section 8, Clause 8 of the United States Constitution)

Intellectual property (IP) is property created by intellect and is not naturally occurring. Although intangible, IP is considered property in the sense it can be owned, sold, licensed (rented), willed, etc.

Types of Intellectual Property

Patents

Copyrights

Trade Secrets

Trademarks


Patents

Patent Definition

A patent is a certificate of ownership for intellectual property that enables the owner to exclude others from making, using, or selling the invention for a limited period of time. A patent is acquired by application to the United States Patent and Trademark Office (USPTO).

Patent Types and Their Uses

There are three types of patents: utility, design, and plant patents.

  • Utility Patent: A utility patent protects functional aspects of an invention and once issued, usually last for 20 years from its filing date.
  • Provisional Utility Patent Application: The provisional application only establishes the filing date for an invention but may be useful to obtain “patent pending” on ideas during test marketing, or final stage development. A provisional application is not examined and as such cannot become a patent. A non-provisional application must be filed within one year of filing the provisional application or the priority filing date is abandoned. You do not have to file a provisional application before a non-provisional application.
  • Non-provisional Utility Patent Application: A United States non-provisional patent application can be filed initially or based on a provisional application. An international non-provisional utility application (or PCT application) can be filed initially and designate the US for future protection, or can be filed within 12 months of the first filed provisional or non-provisional US utility application and claim priority from that application.
  • Design Patent: A design patent protects the decorative aspects of an invention for a term of 14 years. Design patents should be pursued if the essence of an invention is its appearance, or if the final version has a unique look.
  • Plant Patent: A plant patent protects the rights of an individual who asexually reproduces a plant with distinctive qualities. Processes (methods), machines, manufactures, compositions of matter, and any new or useful improvement of the former may be patented.

Criteria for Obtaining a Patent

To be patentable, an invention must be: novel, non-obvious, and useful.

  • The novelty requirement prevents the patenting of something that is known, If the invention is described in a printed publication or patent, or if it is sold anywhere in the world, it is not novel.
  • Non-obvious means that the invention could not have been conceived by someone “having ordinary skill in the art” without undue experimentation. The initial burden to show obviousness is on the patent examiner at the USPTO. The applicant can then rebut the presumption of obviousness.
  • The useful criteria simply requires that the invention have some utility or function and be beneficial to society. Normally this criterion is met easily.

Length of Patent Protection

New utility patents are generally for 20 years from the date of filing the application. New design patents are generally for 14 years from the date of filing.

US vs. Foreign Patents

Patent applications must be filed in each country you wish to have patent protection. A patent granted in one country is not enforceable in another. A United States patent will only protect you against others making, selling, or using your invention within the borders of the United States. The Patent Cooperation Treaty (PCT) was created to simplify the process of applying for foreign patents. The PCT application allows the applicant to reserve the right to file a utility patent application in over 125 countries around the world for up to 30 months form your initial filing date. The PCT application should be filed before any public disclosure of your invention and within a year of the date your initial patent application was filed.


Copyrights

Copyright Definition

A copyright is an exclusive right granted by the government for a limited time to regulate the use of an original expression of an idea. Copyrights are frequently used to protect literary works, movies, musical works, sound recordings, paintings, photographs, software, live performances, and video and sound broadcasts. Copyrights protect only the particular form or manner of an original expression. Copyrights do not protect the actual idea, concept, style, or technique which may be embodied by the copyrighted work. They protect the expression of an idea, but not the idea itself.

Obtaining and Enforcing a Copyright

In the U.S., copyright has been made automatic. Once an idea has been reduced to material form, the copyright holder is entitled to enforce exclusive rights. However, while not necessary, registration of a copyright serves as prima facie evidence of a valid copyright and enables the copyright holder to seek statutory damages and attorney’s fees (as opposed to only actual damages and profits). Copyrights are generally enforced in a civil rather than criminal law court.

Registration of US Copyrights

To register a copyright in the U.S., a clear rendition of the material to be copyrighted must be submitted to the US Copyright Office along with the appropriate completed form ( http://www.copyright.gov/forms/) and fees. Please contact the OTT with any requests for Copyright protection.

Exclusive Rights of the Copyright Holder

The holder of a copyright has the exclusive rights to produce copies of the work and sell those copies, import or export the work, create derivative works, display the work publicly, and sell or assign these rights.

Limits to Copyright Protection

  • Merger Doctrine: The copyright may not protect the expression of an idea that can be expressed only in one or a limited number of ways. Merger is a defense to copyright infringement in cases where the expression of the idea is inextricably merged with the idea.
  • First-Sale Doctrine: It is legal to resell legitimately obtained copyrighted works originally produced by or with the permission of the copyright holder. This doctrine is also known as the exhaustion of rights.
  • Fair Use and Fair Dealing: The fair use doctrine, codified by the Copyright Act of 1976 permits some copying and distribution based upon an analysis of various factors which should include:
    • The purpose and character of the use including whether for commercial or nonprofit educational purposes
    • The nature of the copyrighted work
    • The amount and substantiality of the use in relation to the work as a whole
    • The effect of the use upon the potential market or value of the work

Copyright Notices

Since 1989, the use of copyright notices (i.e., © or the word “copyright” followed by the year of the copyright and the ID of the copyright holder) in the US is optional. A copyright notice is no longer required for a work to be covered by copyright in jurisdictions which have acceded to the Berne Convention. However, the existence of a copyright notice may make claims for certain damages for infringement easier due to a presumption of intentional infringement.

Length of Copyright Protection

In most of the world, copyrights expire at the end of the 50 th year after the author’s death, or the 70 th year after the authors’ death. These dates do not apply to pseudonymous or anonymous creations, and certain classes of work.


Trade Secrets

Trade Secret Definition

A trade secret is any information that derives independent economic value by being unknown, not readily ascertainable from proper means by others, and that is subject to efforts that are reasonable under the circumstances to maintain security.

Trade secrets are protected from another company or individual discovering the trade secret by improper, unethical, or illegal means. The remedies available are injunctions, payment of royalties, and compensatory damages. There is, however, no protection for secrets which are not reasonably maintained or “invented around” (discovered by others on their own).

Trade Secret Protocol

A reasonable effort to maintain security should include, but not be limited to:

  • Identify the information that is a trade secret.
  • Keep information in physically separate, secure location if possible. Mark off the location so that is states only authorized personnel in this area if this is not feasible at all times than make sure that it is done when trade secret is being implemented/used.
  • Mark trade secrets as such and employees should be notified of company procedures involving trade secrets i.e. confidential.
  • Employees should only be shown trade secrets on a need to know basis and third-parties and public should never be shown trade secrets unless required for business and then only after specific measures to ensure that the other party is under a duty not to disclose the trade secret information.
  • Take specific care not to disclose the trade secret unintentionally through a lecture or any published articles about the company.
  • Conduct “exit interviews” with employees that are leaving to reinforce the duty of nondisclosure they have.

Trademark Basics

Trademark Definition

A trademark is any word, ID, symbol or device used by a person in commerce to identify and distinguish goods and products from a particular source. 1 A trademark is acquired by application to the United States patent and Trademark Office (USPTO).

Trademark Requirements

In order to apply for a trademark, the mark must be distinctive in nature. In order to be distinctive, the mark must clearly identify the source of the product to the ordinary consumer. For example, the “flying WV” trademark registered to West Virginia University identifies the source of the mark (West Virginia University) to those consumers who purchase products which carry that specific trademark. The level of legal protection that is afforded to a specific trademark hinges upon how distinctive the mark is in relation to the product. The level of distinctiveness afforded to a trademark is broken down into four categories 2 :

  1. Arbitrary or Fanciful - A trademark that is arbitrary or fanciful is a mark that is purely original. This type of trademark usually has no significant relationship between the mark and the underlying product. Trademarks such as “Reebok” and “Google” and examples of such marks. Marks of this type are usually afforded the highest level of legal protection.
  2. Suggestive - A trademark that is suggestive sets forth a loose affiliation or suggestion between the trademark and the underlying product. Trademarks such as these allude to the consumer the type of product associated with the mark. Suggestive marks are inherently distinctive because they still incorporate a level of creativity with the suggestion. An example of a suggestive mark would be the mark “Jaguar.” While the term “Jaguar” is not new, it is suggestive of a fast automobile. These types of marks are usually given a high degree of legal protection.
  3. Descriptive - A trademark that is descriptive usually indicates some type of characteristic of the actual product. Rather than providing a term that requires the consumer to infer an aspect of the product, a descriptive trademark actually tells the consumer what they will get. For example, the term “Comfort Inn” tells consumers they will receive a comfortable stay at a hotel. Trademarks that are descriptive are not inherently creative. In order to receive a requisite level of protection, a descriptive mark must have an acquired “secondary meaning” that clearly associates that particular term with a particular brand of services. For example, the mark “Frosted Mini-Wheats” was classified as having a secondary meaning because it is commonly associated with a certain level of quality manufacturing by the Kellogg’s corporation. 3
  4. Generic - A trademark that is generic is a term that describes a general category to which the underlying product belongs. A mark that is generic has little to no creative component. Examples include every day terms that are used to describe products (i.e. bread and cereal). In addition to well known terms, arbitrary and suggestive trademarks can become generic terms over time if the terms are so widely used that they no longer signify a particular brand source. For example, the term “aspirin” was once an arbitrary trademark for the product acetyl salicylic acid. 4 Generic terms are usually afforded no protection.

Acquiring Rights in a Trademark

Once a mark is qualified for protection, trademark rights can be established. These rights are acquired in two ways: (1) common law rights- the mark is first used by the holder in the stream of commerce, or (2) statutory rights- the mark is the first to be registered with the United States Patent and Trademark (USPTO). 5 To use the mark in stream of commerce, the mark must be attached to the sale of the product in public. Often times this use is limited to the geographic region in which the sale is taking place. In order to ensure full protection of a trademark, the mark should be registered with the USPTO. The USPTO provides an online Trademark Electronic Application System (TEAS) and is available at http://www.uspto.gov/teas/index.html.

Retaining Rights in a Trademark

Once a trademark is obtained, it is up to the trademark holder to maintain the use of the trademark in identifying the source of the product within the stream of commerce. When a trademark holder wants to claim rights in a mark, they may use “TM” (trademark) or “SM” (service mark) to signal their claim to the public. 6 The terms “TM” and “SM” may be used regardless of whether or not a trademark holder has filed an application with the USPTO. However, a trademark holder may only use the federal registration symbol “(TM)” after the USPTO has registered the mark and only in connection with the goods and/or services that are listed in the issued federal trademark registration. 7 In order to retain the rights in a trademark, a holder of that mark must not abandon the mark, must not improperly assign or license the mark or allow the mark to become generic. The rights granted in a federally-registered trademark can last indefinitely if the owner continues to use the mark in connection with their product within the stream of commerce. 8 The USPTO requires a trademark holder to periodically file affidavits of continued use or excusable non use.

Abandonment of a Trademark

A trademark is deemed abandoned when the user no longer makes use of the mark in commerce and does not intend to continue that use in the future. 9 To ensure that rights are maintained in a trademark, the holder must ensure that his mark is continually interjected into the stream of commerce. The non-use of a trademark for three consecutive years is prima facie evidence of abandonment. 10

Improper Licensing or Assignment of a Trademark

Trademark rights can be lost when the trademark holder improperly assigns or licenses the trademark to another individual. A trademark holder has the responsibility to ensure that anyone who uses the trademark does so in a manner that is consistent with the product the trademark is linked to in commerce. When a trademark is used in a way that is contrary to its intended purpose of signaling a source of goods, the trademark will be cancelled. 11

Allowing a Trademark to Become Generic

Trademarks, no matter how creative and arbitrary, have the potential to become generic if the trademark holder does not take certain steps to ensure protection of the mark. 12 A trademark is defined as generic if that specific word or mark is used to describe a large category or class of products instead of a single product linked to a specific source. A trademark can become generic if it is allowed, by the trademark holder, to be used in a manner to describe products which are not linked to the source of the mark. A trademark holder must be vigilant of their trademark and take action against the use of their mark for an unintended or unauthorized purpose. 13 A trademark only becomes generic through the inaction of the trademark holder.

Enforcement of a Trademark

The use of a trademark in the stream of commerce is held exclusively by the trademark holder. The trademark may not be used to signal the source of goods without the express permission of the trademark holder. The unauthorized use of a trademark (commonly called infringement) by another occurs if such use is likely to cause consumer confusion as to the source or sponsorship of the goods interjected in the stream of commerce. 14 In order to protect the trademark, a holder may file an infringement law suit against the person or entity making unauthorized use of the mark. In evaluating whether or not infringement of a trademark has occurred, a civil court will evaluate a number of factors, including: (1) the strength of the mark; (2) the similarity between the trademark and the infringing action; (3) the similarity of the goods; (4) evidence of actual confusion; (5) the similarity of the marketing methods used; (6) the effect on the consumer; and (7) the intent of the alleged infringer. 15

Permissive Use of a Trademark by Another

While a trademark holder normally has control over the use of the mark, there are instances where someone other than the holder can use a trademark without the express permission of the trademark holder. A trademark can be used with out the trademark holder’s permission under the following circumstances 16 :

  • Fair use - A fair use of a trademark occurs when the mark is used in good faith for a primary (rather than secondary) meaning where no consumer confusion is likely to result. For example, a generic grocery product may use the trademark of the id brand counterpart for the purpose of illustrating to consumers that the generic product is similar to the id brand product bearing the trademark. In such a case it is clear that the generic product is not the same as the product bearing the trademark.
  • Nominative Fair use - A trademark may be used without the trademark holder’s permission when the use of the mark is necessary to identify or report about the products or services associated with that particular product. This type of use is permitted when the products or services could not be identified without the use of the mark, the use is limited to identification purposes only, and there is no suggestion of sponsorship or endorsement of the trademark holder.
  • Parody - A trademark may be used without the trademark holder’s permission if the mark is used for the purpose of criticism or comment associated with the protection afforded by the First Amendment. Again, there must not be a likelihood of confusion by the consumer between the unauthorized use and the registered trademark.

Much of the information above was compiled from the USPTO website. For more information go to: http://www.uspto.gov

  1. 15 U.S.C. § 1127 (2006).
  2. http://www.registeringatrademark.com/trademark-law-basics.shtml
    http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm
  3. http://www.registeringatrademark.com/trademark-law-basics.shtml
  4. Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921)
  5. http://www.uspto.gov/web/offices/tac/tmfaq.htm#DefineTrademark
  6. Id.
  7. Id.
  8. http://www.uspto.gov/web/offices/tac/doc/basic/maintain.htm
  9. 15 U.S.C. § 1127 (2006)
  10. Id.
  11. http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm
  12. Id.
  13. Id.
  14. http://www.bitlaw.com/trademark/infringe.html
  15. Id.
  16. http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm