Understanding and Protecting Intellectual Property E-Guide
Understanding and Protecting Your Intellectual Property
Intellectual property is the product of your mental labor, consisting of four major forms: patents, trademarks, copyrights and trade secrets. The rights in each are protected thorough unique processes and are enforceable in court, subject to certain restrictions as discussed in this e-Guidebook.
· Patents protect inventions of tangible items such as machines and chemicals, and intangible items such as industrial or technical processes.
· Trademarks protect names or symbols that identify the source or origin of goods or services.
· Copyrights protect written and artistic expressions such as songs, books and plays.
· Trade secrets are confidential business information that give the owner an advantage over its competitors, provided the information remains confidential.
Obtaining an enforceable patent requires inventors, designers and creators to submit a “non-provisional” application for registration with the United States Patent and Trademark Office (USPTO).
Although ownership of a trademark is possible under the common law (i.e. simply by being the first to use that trademark), national protection for that trademark is only possible after registration with the USPTO.
U.S. Copyright law automatically grants copyright protection for an original work of authorship when it is created and fixed in a tangible form that can be perceived directly or by using a machine, but the copyright is only enforceable when it is properly registered with the US. Copyright Office.
There is no formal process similar to patents, trademarks and copyrights for protecting trade secrets through the U.S. government. Instead, trade secret information is protected through nondisclosure agreements which bind parties receiving that information to disclose or use it only with the owner’s permission.
Contrary to conventional wisdom, U.S. Patent law doesn’t give the owner of an invention the right to make, use, sell, or offer for sale, the patented invention. Instead, it gives them the right to exclude others from doing so. This right is for a limited period of time and is effective in the United States, United States territories, and U.S. possessions. An inventor obtains this right through a patent registration granted by the USPTO.
The patent clause of the U.S. Constitution gives the U.S. government the right to issue and regulate patents. A patent is essentially a “bargain” between the public and the inventor. This bargain goes something like this: patent law gives the inventor a monopoly on their invention for a limited time in exchange for a detailed description of how their invention works (as described in their publicly available patent application). Without this “bargain”, an inventor would be incented, by their substantial investment in developing their invention, to keep how that invention works a secret.
There are three types of patents:
· Utility Patent – a utility patent may be granted to anyone who (a) invents or discovers any new or useful process, machine, article of manufacture, or composition of matter, or (b) any new and useful improvement of a process, machine, article of manufacture, or composition of matter. In other words, a utility patent protects the way something is made or used. Examples include a new lawnmower (i.e. a machine), a new lawnmower component (i.e., an article of manufacture), or a new way to manufacture the lawnmower (i.e., a process).
· Design Patent – a design patent may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. In other words, a design patent protects how a useful invention looks. Examples include the unique shape of a lawnmower.
· Plant Patent – a plant patent may be granted to anyone who invents or discovers, and asexually reproduces, any distinct and new variety of plant. “Asexually” means reproducing other than by seeds, such as by the rooting of cuttings.
A patent will only be granted for an invention if it is novel, non-obvious, and useful. Other creations, such as works of art or slogans, are not patentable, but may be protected under copyright and trademark law, respectively. Moreover, inventions useful in nuclear material or atomic energy for atomic weapons, the laws of nature, physical phenomena and abstract ideas are never patentable.
Here is what novel, non-obvious and useful mean:
· Novel – “novel” refers to the originality of an invention; there must be nothing like it in the public knowledge (or “prior art”, discussed later). To be novel, an invention must not be:
- Known, or used by others, in the U.S. before the inventor invented it.
- Patented, or described in any printed publication, before the inventor invented it.
- Patented, or described in printed publications, in any country more than one year before the date of the inventor’s patent application.
- In public use or on sale in the U.S. more than one year before the date of the inventor’s patent application.
The novelty requirement doesn’t prevent an inventor from obtaining a patent for an improvement on an existing invention, as long as the improvement is “non-obvious” (discussed next). Combining two existing and/or patented inventions (i.e. the camcorder, which combines a camera with a tape recorder), meets the novelty requirement.
· Non-obvious – this means that there is a sufficient difference from what was used or described before in the prior art that a person having ordinary skill in the area of technology related to that invention wouldn’t find the difference obvious. For example, increasing the toasting capacity of a toaster is obvious because this simply takes an existing invention and increases its ability to toast more bread. In contrast, combining a video camera with a tape recorder (i.e. a camcorder) is non-obvious.
· Useful – this means that the subject matter of the invention has a useful purpose. Note that, to be useful, an item must be able to operate; if it isn’t operable, and therefore can’t perform its intended purpose, it would not, by definition, be useful. Because determining whether an invention is useful can be subjective, the USPTO has issued guidelines for its examiners to determine usefulness:
(a) if a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the invention’s characteristics, and
(b) the usefulness is specific, substantial and credible.
As discussed above, you can’t patent your invention unless it’s completely novel. To find out if your invention is novel, you have to conduct a patent search to determine what the “prior art” is and whether it would bar your patent claim. The prior art is all of the patents, patent applications, and other documentation available to the public worldwide that are related to your invention. If the prior art shows that your invention is not novel, you won’t be able to patent it. If the prior art shows that your invention is novel, you’ll still need to list all the prior art you find in the application to register your patent.
Although doing a patent search is easier than it used to be given the existence of the Internet and the wide array of patent search services available, it’s best to hire a patent attorney to conduct your patent search. Patent attorneys can usually run a truly comprehensive search that may uncover things your search missed. A complete and thorough patent search before you make your patent application is important because (a) if your invention is already in the prior art, it’s better to know this early so as to not waste time and money on an invention that will never be patented, and (b) the more prior art disclosed in your patent application distinguishing your invention from what already exists, the more likely the USPTO will view your invention as completely novel.
Only the individuals who invented the invention are eligible to apply for a patent and all inventors must sign the patent application. Applications can either be “non-provisional” or “provisional”:
· Provisional – you have an option to file a provisional patent application with the USPTO. Because they are very few formalities required to file and the filing fees are low ($___ at the time of this eGuidebook), a provisional application gives you the flexibility to quickly protect your invention.
You have one year from the filing date of your provisional patent application to convert it into a “non-provisional” patent application (discussed next). During this time, you can use the term “patent pending” with your invention, as a well as test it and get it production ready. But be careful. If you make changes to your invention that weren’t reflected in your provisional patent application, then you may lose the benefit of that application as you originally described the invention. To help avoid this problem, your provisional patent application should anticipate as many different ways of practicing your invention as possible. The filing date of your provisional patent application becomes the filing date of your non-provisional patent application for application priority purposes. This is vital since the U.S. patent system is a “first-to-file” system in which the grant of a patent is given to the first person to file a patent application for protection of an invention, regardless of when it was invented.
· Non-provisional patent application – in contrast to a provisional patent application, a non-provisional patent application is expensive and must follow a strict format, including providing the USPTO with a detailed description of the invention, formal drawings, an inventor declaration and other information disclosure statements detailing the prior art. Also, unlike with a provisional patent application, no new matter can be added to a non-provisional application. As such, improvements to invention technology described in your non-provisional application would have to be filed in another patent application. Because of this, you should file both kinds of applications for your invention.
As of the date of this eGuidebook, it takes about 22 months to get a patent registered by the USPTO. This time could be as little as 12 months if your application is for certain utility and plant patents. If your patent application is rejected, you can file an appeal with the USPTO’s Board of Patent Appeals and Interferences. However, this could add an extra year to your patent registration time.
Once your patent is registered, how long it lasts depends on what kind of patent you have:
- Utility patents last 20 years from the date of filing of the earliest application (provisional or non-provisional).
- Plant patents also last 20 years from the date of filing of the earliest application.
- Design patents last 14 years from the date the patent is issued.
Upon expiration of your patent, anyone can make, use, offer for sale, or import your invention without your permission.
If someone infringes your registered patent, you can bring an action in federal court for the resulting damages to you and your business. Infringement means that someone exercises one of the rights you have with respect to your registered patent: making, using, selling, or offering to sell, your patented invention without your permission.
Since patents are personal, you can assign, sell, license, or transfer them through a written instrument. The interest in a patent can be assigned in less than whole interests (e.g. ½ interest, 1/3 interest etc.).
The name of your product or service is among your company’s most valuable assets. Good trademarks establish brand equity and distinguish your products or services from others in the marketplace. In fact, the single largest source of a company’s intangible value (e.g., its goodwill) is often its trademarks. For example, the Google trademark was worth an estimated $120 billion as of 2015.
Trademarks are source indicators for your products or services. They tell people who buy your products or services where they came from and lets them know what quality they can expect when they buy them. Because owning a trademark gives you the exclusive right to use that trademark on your products or services, trademarking your product or service name is one of the best ways to protect the goodwill in your business you’ve worked so hard to build.
The first step in trademarking your product or service name is to come up with something distinctive that helps sets your product or service apart from others. Understanding what items can be a trademark will help you with this step:
· Words – “Coca Cola” soda; “Kodak” film.
· Names – “Ford” automobiles; “Pierre Cardin” fashions.
· Symbols – the Nike “Swoosh”; Microsoft’s “Windows Flag”; the “Jolly Green Giant”.
· Logos (i.e. combinations of words and designs) – Ford’s blue and white oval Ford logo; the Pepsi swirl.
· Package Designs and Product Configurations (i.e. Trade Dress) – Coca Cola’s classic bottle shape; Kodak’s Film packaging.
· Sounds – the NBC chimes; MGM’s Lion roar.
· Scents – Floral-scented sewing thread.
· Colors – Owens-Corning pink fiberglass insulation.
Next, choose a strong trademark. The stronger your trademark, the more likely it will be approved for registration by the United States Patent and Trademark Office (the “USPTO”), and the easier it will be to enforce your right to its exclusive use against others. “Strong” means how likely a purchaser of your product or service will view your trademark as an indicator of the source for your product or service.
Trademark strength is composed of four categories; from strongest to weakest: (1) coined or fanciful, (2) arbitrary, (3) suggestive, and (4) descriptive. Coined or fanciful trademarks are invented words with no dictionary or other known meaning (e.g. Xerox). Arbitrary trademarks have a known meaning, but the meaning isn’t related to the goods or services being protected (e.g. Apple for computers). Suggestive trademarks suggest, but don’t describe, qualities of, or a connection to, the goods or services (e.g. Coppertone for suntan oil). Descriptive trademarks describe the goods or services being sold and therefore aren’t inherently distinctive like the other trademarks described above are likely to be (e.g. “Creamy” for yogurt). There are also generic terms (they don’t qualify as trademarks in the legal sense), which are far weaker than the other four categories because they are simply the common, everyday name for goods and services that everyone has a right to use (e.g. “Bicycle” for bicycles). Generic terms can never be trademarks.
Once you’ve chosen a name for your product or service, you need to make sure you perform a thorough search of that name before you file your application for registration with the USPTO. A trademark search is important to make sure that your trademark is available for use and is registerable with the USPTO. This includes determining whether anyone else came up with your name before you did and used it in the marketplace. It also includes identifying potential problems such as a likelihood of confusion with a prior registered trademark or with a trademark in a pending trademark application. Finally, a trademark search may show you whether your trademark, or part of your trademark, appears as generic or descriptive wording in another trademark registration, which may indicate that your chosen trademark is weak or difficult to protect.
Although you can perform a trademark search using the USPTO’s search tool (Trademark Electronic Search System or TESS), this may not be enough to ensure that there are no trademarks similar to yours. A search on TESS is limited to the USPTO’s database of federal trademark applications or registrations – it doesn’t include trademarks of other parties who may have trademark rights, but no federal registration (also known as “common law” trademark rights). Also, trademark searching is not easy – it’s tempting to assume that because searching the web has become part of our lives, searching for a trademark is as easy as searching for a recipe or finding facts on Wikipedia for a book report. But this is not the case.
Trademark searching can be very complex. A search for a trademark involves analyzing such things as sound and meaning, the inherent distinctiveness (or lack of distinctiveness) of a prior trademark, as well as other factors courts use in determining whether a proposed trademark infringes a pre-existing trademark. That’s why having an attorney who has expertise in trademark law, as well as access to robust trademark research tools, can help to more accurately determine the distinctiveness and registerability of your chosen product or service name. This can save you time and money in avoiding submission of a wasted trademark application.
Once a full and comprehensive trademark search has been performed on your chosen product or service name, you need to file an application to register that name as a trademark with the USPTO. This application must be filled out completely and accurately – mistakes in an application may cause delays in processing, result in requests by the USPTO for further clarification, or even cause rejection of your application.
A trademark application which is complete and makes it through the USPTO will be reviewed and vetted by an examining attorney at the USPTO. The examining attorney will review your proposed trademark to ensure that it doesn’t bear any similarity to, or cause confusion with, an existing trademark. The examining attorney may also have questions about your proposed trademark and/or request additional information. Registering a trademark is a time-consuming process, and there is often a long backlog of applications which makes the process even longer. So, responding promptly to the examining attorney’s questions and requests for information is vital to ensure that your application keeps moving along.
Finally, after your trademark application is approved and your trademark is registered, you can put the public on notice of your registration. This means that you can use the small circled “R” with your product name which indicates to the public that your trademark is a registered trademark.
The steps described in this post are sometimes complicated and can take many months to complete – it normally takes 8 months from the filing of a trademark application to receive final registration. If you are unsure of how to trademark your product name, your best option is to get help from an expert trademark attorney.
Copyright is a form of legal protection for “original works of authorship” that are “fixed in a tangible medium of expression”. Under the United States Copyright Act, “original” means that there must be “some minimal degree of creativity”. The threshold for meeting this requirement is low. It’s met as long as the work possesses some creativity “no matter how crude, humble or obvious it might be”. Feist Publications v. Rural Telephone Service.
“Works of authorship” include:
· Literary, musical and dramatic works
· Pantomimes and choreographic works
· Pictorial, graphic and sculptural works
· Sound Recordings
· Motion pictures and other audio-visual works
· Computer programs
· Compilations of works and derivative works
· Architectural works
The “tangible medium of expression” through which the works of authorship are “fixed” must be able to be “perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device”. This includes, but isn’t limited to, any electronically readable formats (such as email or computer memory storage), audio recordings, video recordings, or articles in a newspaper or magazine.
Your work becomes copyrighted when you “fix” it in a tangible medium of expression. Once you do, the work immediately becomes your property without any further action on your part, including placing a copyright notice on the work. For works made for hire, the employer is considered the author and therefore holds the copyright to that work.
According to the U.S. Copyright Office, things that aren’t copyrightable include:
· Ideas, processes, systems, methods of operation, concepts, principles or discoveries incorporated into a work.
· Titles, names (including business names), short phrases and slogans, and product descriptions. However, these things may be protected with a trademark.
· Commonly known information such as facts, news and research. Examples include standard calendars, height and weight charts, and telephone directories.
· Works that aren’t fixed in a tangible medium of expression. Examples include performances, choreographic works and speeches that haven’t been recorded, notated or transcribed.
· Works in the public domain. Examples include works of U.S. government employees created in their capacity as employees.
· Fashion articles (i.e. articles of clothing and accessories). Although copyright law protects architectural design works and visual arts works, clothing and accessories are considered “useful articles” and thus not copyrightable. However, specific fabric patterns may be copyrightable and clothing designs may be patentable.
As the owner of a copyright, you have the exclusive right to do any of the following, or to let others do any of the following:
· Copy your work.
· Distribute or sell your work to others in your discretion.
· Create “derivative works” of your work, including modifying, adapting, or making new uses of your work. An example includes making a movie adaptation of a novel.
· Display your work in public. Examples including showing a painting, statue, or other work of art in public.
· Perform your work publicly. An example includes playing your own music at a concert.
Your exclusive rights aren’t permanent. Copyright law lets you keep them for a defined period of time. This period of time depends on when you created the work:
· Works created after January 1, 1978 have a copyright for the life of the author plus 70 years. For a joint work of authorship, with two or more authors, copyright protection extends for 70 years after the death of the last surviving author.
· Works created before 1978 have a copyright which varies depending upon the year it was created.
· A work created anonymously, or as a work for hire (i.e. a work created by an employee as part of his/her job, or a work specially ordered or commissioned for use by another) has copyright protection for 95 years from its publication date, or 120 years after its creation date (if not published). “Publication” means that your work is made available to the world.
Once the period of copyright protection for your work ends, it falls into the public domain (i.e., the public owns your work), and you lose your rights to the work.
In addition to time limits, the exclusive rights to your copyrighted works are subject to certain exceptions which try to balance these rights against the interests of society in using them. The most important, and most often used, exception is the “fair use doctrine”. Under the fair use doctrine, limited use of a copyrighted work for news reporting, criticism or comment, teaching or research, is permitted without permission from or payment to the copyright holder. An example of fair use would be quoting a few lines from a movie in a movie review.
Although registration of your copyright is voluntary, it provides you with certain important benefits:
· It establishes a public record of the copyright claim to your work.
· It’s proof in court of your copyright as long as registration occurs within 5 years of publication.
· It’s necessary if you want to file a copyright infringement lawsuit in federal court. Also, if registration is made within 3 months prior to infringement of the work you’re entitled to seek statutory damages and attorney’s fees in your infringement action.
· Registration constitutes a public record of the copyright claim to your work.
To register your copyright, you must file an application with the U.S. Copyright Office (the filing fee is $___ as of this writing) and deposit a copy of your work with the Copyright Office.
While a copyright notice on your work isn’t required for that work to be considered copyrighted, using it is helpful in a number of ways:
· It informs the public that your work is protected by copyright.
· It identifies you as the copyright owner and shows the year of first publication.
· If your copyright is infringed, a copyright notice eliminates any claim of innocent infringement by the infringer (i.e. where the infringer claims ignorance about whether the work was protected by copyright).
A copyright notice for visually perceptible copies of a work should include these elements, together or in close proximity:
· The circle “c” symbol or the word “Copyright”.
· The year of first publication of your work.
· Your name as owner of the copyright. Example: “Copyright 2019 John Smith”).
If someone uses your copyrighted work without your permission (i.e. without a license, or where no exception to your exclusive rights exist, such as “fair use”), this is copyright infringement. Copyright infringement is a crime and it’s also the basis for a civil lawsuit by you against the infringer. To prove infringement, the court must find that (1) the infringing work is “substantially similar” to your work, and (2) the infringer had access to your work (i.e. they saw or heard it).
If you win a copyright infringement lawsuit, the infringer will have to pay you the money he/she made from using your work or that you would have made if there hadn’t been any infringement. As mentioned above, if you registered your copyright with the U.S. Copyright Office, the infringer may also have to pay you statutory damages. They will also be stopped from any further use of your copyright.
The intellectual property your company owns is the foundation of your business. Protecting this intellectual property is essential to extracting its value and in taking advantage of the opportunities that arise from it. One type of this intellectual property is trade secrets.
Unlike other intellectual property, such as patents, trademarks and copyrights, trade secrets aren’t meant to be disclosed to enhance the public good. They are meant to be kept as a secret part of your business to provide you with an advantage over your competitors.
Trade secrets are information (1) that has actual or potential value, (2) that isn’t generally known in your industry (and therefore provides you with an advantage over your competitors), and (3) which you’ve made “reasonable efforts” to keep secret and confidential. Trade secret information doesn’t have to be novel, but it does need some “modicum of originality”. Simply calling information a “trade secret” won’t work.
Trade secrets can include positive and negative information. For example, information about a drug compound that doesn’t work on a targeted disease can be just as valuable as information about a drug compound that does. This negative information can help a drug company avoid spending large sums of money on something that doesn’t work.
General examples of trade secrets include:
· Customer lists
Specific examples of trade secrets, and among the most famous, are:
· The Coca-Cola recipe
· The Google search algorithm
· The formula for Listerine
· McDonald’s Big Mac special sauce recipe
Unlike patents, trademarks and copyrights, no registration or other action is needed to get and keep legal protection for a trade secret. If all 3 requirements for establishing a trade secret above are met, and continue to be met, protection is automatic and perpetual.
The perpetual nature of a trade secret can sometimes provide an advantage over a patent when it comes to an invention. A patent application for an invention is published and any trade secrets it incorporates are made public. In addition, while patent protection for an invention, and the patent owner’s exclusive right to exploit that invention, last 20 years after filing, once this period expires, anyone can use or exploit the invention without compensation to the patent owner. In contrast, a trade secret may be protectible, and the owner may recover damages for its unauthorized acquisition and use, for as long as it’s a trade secret.
Here as some of the “reasonable efforts” you can make to show a court that you intended to keep your trade secret information secret. Note that extraordinary measures (e.g., putting them in a bank vault) aren’t necessary.
· Mark trade secret materials as “confidential”.
· Limit access to trade secret materials to individuals with a genuine need to know them by, among other things, locking them away after business hours.
· Maintain appropriate security over computers through which someone could access your trade secrets.
· Require those who have, or could have, access to trade secret materials to sign nondisclosure agreements.
Once a trade secret has been made public, it loses its protection and can’t be enforced. Examples include distribution to vendors without restriction, sale of a product to the public where the trade secret is fully disclosed by the product, accident, or government requirement such as a label for medication.
However, trade secrets which are made public due to misappropriation (i.e. acquisition, disclosure and/or use without the owner’s permission, and with knowledge that it is a trade secret) may still be enforced. The following are examples of trade secret misappropriation:
· A person who has a fiduciary duty (i.e. a legal or ethical obligation of trust) to the owner of a trade secret, discloses that trade secret. A fiduciary is automatically bound to protect the owner’s trade secrets by virtue of their routine contact with that trade secret as part of their duties. An example of a fiduciary is a member of a company’s board of directors.
· A person acquires a trade secret directly from the owner, or through others, as a result of theft, bribery, fraud, or breach of contract.
· A person discovers a trade secret by accident or mistake, and discloses that trade secret knowing, or having a reason to know, that it is a trade secret.
· A person is bound by a nondisclosure agreement with the owner of a trade secret, in which he/she promises not to disclose or use that trade secret without the owner’s permission, and discloses or uses it in violation of that nondisclosure agreement.
Note that, if an owner’s trade secret is discovered independently by someone else (i.e. without misappropriation of the owner’s trade secret), the other person can’t be prevented from disclosing or using that trade secret. For example, it’s permissible to lawfully purchase a product and “reverse engineer” it (i.e. disassemble or analyze the product in order to duplicate it) to determine any trade secrets incorporated into that product.
Enforcement of misappropriated trade secrets can be in federal or state court:
The federal “Defend Trade Secrets Act” (DTSA) applies nationwide and gives claimants who use, or intend to use, their trade secrets in interstate commerce, a right to file a lawsuit for misappropriation in federal court. In addition to seeking recovery of damages for misappropriation, a claimant under the DTSA can ask the court to “seize” stolen trade secrets if there are “extraordinary circumstances”. However, the proof and other requirements needed to obtain a seizure order are higher than typically required for an injunction.
The DTSA also has a “whistle-blower” provision. This provision gives immunity protection against any criminal or civil liability under state or federal trade secret law to anyone who reveals a trade secret, if the disclosure was made to report or investigate an actual or alleged violation of law.
Finally, the DTSA permits employees, contractors, and consultants to disclose the trade secrets of their employer in so-called “anti-retaliation lawsuits” against their employer. In an anti-retaliation lawsuit, an employee, contractor, or consultant sues their employer for retaliating against them for “reporting a suspected violation of the law”. As part of this lawsuit, they can disclose their employer’s trade secrets to their attorney and use them in court as long as the trade secrets are filed under seal and disclosed only with a court order.
States also have laws prohibiting the misappropriation of trade secrets. These laws exist in every state and most are based on a model law known as the “Uniform Trade Secrets Act”. State law claims for misappropriation aren’t pre-empted by the DTSA. This means that a victim of trade secret misappropriation can simultaneously exercise their remedies under federal and state law.
An owner’s remedies for trade secret misappropriation under either federal or state law include:
· Recovery of the owner’s actual loss from sales that were lost because of the misappropriation, including lost profits.
· Compensation for loss of the trade secrets.
· The profits made by the defendant (i.e. the person or company that misappropriated the trade secret).
· Punitive or “exemplary” damages where the misappropriation was willful or malicious.
· An injunction to make sure the trade secret is maintained as secret during the lawsuit.