Within each area of intellectual
property there are certain key phrases or words which are commonly
used. These words have specific meanings both to the inventive
process, the Patent and Trademark Office, and the court system so it
is very important to understand their meaning and apply them
correctly.
There are four specific areas of intellectual property: patents,
trademarks, copyrights and trade secrets. Each of these areas is
controlled by different statutes, some federal and some state.
Additionally the courts have construed various portions of the
statutes in an effort to produce uniformity and consistency and a
working knowledge of this case law is important.
Each of the intellectual property areas has specific uses in
particular situations and each situation will oftentimes determine
which area of intellectual property to pursue.
The areas have different requirements and unless they are diligently
followed, the maximum level of protection may not be achieved. A
long term approach should always be considered when deciding issues
of intellectual property. For instance a patent term is either
fourteen or twenty years. A copyright gives the author a term of
protection of at least the author’s life plus seventy years.
Trademarks and trade secrets can last indefinitely.
An improperly or partially perfected intellectual property right
could prove useless. This would jeopardize the work that was
necessary to produce a particular idea and ultimately lead to little
or no protection for the inventor or author.
Specific recommendations concerning a particular issue of
intellectual property should be made by a registered patent
attorney. The recommendations should be based on the objective of a
business goal or plan and the achievement and implementation of it.
PATENTS
There are three different types of patents: utility, design and
plant. Whether or not something is patentable and can receive the
protection which that affords is a matter of federal law.
Utility patents are the most common and cover new and useful
inventions including the way certain material is used or the process
of manufacture. Design patents generally involve changes to the
ornamental design of useful articles. Plant patents involve new and
distinct plant varieties.
The patent statute establishes four distinct conditions before an
invention may be patented:
1. It must “statutory subject
matter”;
2. It must be “useful“;
3. It must be “novel”; and
4. It must not be “obvious”.
Each of the highlighted terms have
specific meanings and their meaning may differ depending on a
particular use or application. What may apply in one context may not
apply in another. Whether or not a patent application should be
filed should be done on a case by case basis after appropriate
consultation with a registered patent attorney.
Some of the ideas which can be patented include a device, the
process to make the device or ornamental changes to the device. New
business methods and different types of plants may also be patented.
After you think you have something to patent, what is the next step?
PATENT SEARCH
A patent search should ALWAYS be done prior to making the
decision whether to proceed further by completing the patent
application. The search will determine the existence of any "prior
art".
The search looks for similar inventions that have been
patented or have become part of the public domain by prior “public
use”. If an invention has been patented prior to your idea or if
your idea is so similar to another invention it may not be advisable
to seek patent protection. After a patent search a thorough analysis
by a trained patent attorney is recommended before the decision to
seek or not seek patent protection is made.
CAVEAT: THE RESULT OF A PATENT SEARCH IS NOT A GUARANTEE THAT
YOUR PATENT WILL ISSUE.
So now your attorney has performed your search and your idea looks
unique, what’s next?
ANALYSIS
A patent search is very likely to reveal inventions which may be
very similar to your idea. In order to complete the analysis it is
necessary to determine if your idea can be distinguished from prior
ideas or “prior art” and is not “obvious” to those “skilled in the
art”.
What is or may be “prior art” is a critical question and one which
can only be answered by a careful and thorough analysis of all the
facts. The answer to that question may determine whether or not to
pursue patent protection.
Likewise, whether or not something is or is not “obvious” has been
debated in the courts for years. Suffice it to say that if it is
“obvious” then no patent will be issued. When the term “obvious” is
discussed the meaning and interpretation of a companion phrase,
“skilled in the art”, must also be analyzed.
“Skilled in the art” refers to the knowledge which was available at
the time to persons within a certain discipline. Again all these
terms are terms of art and may carry different meanings depending on
the circumstances.
The answers to these questions need to be considered at the very
early stages of the analysis. Although you may think that you have
an idea that will set the world on fire, it may have already been
done or otherwise be not patentable for a variety of reasons.
Appropriate consultation with a registered patent attorney in the
beginning is critical to the successful pursuit of a patent.
APPLICATION
The application spells out for the Patent and Trademark Office the
specifics of your invention first in broad terms and then in
specific terms.
There are many parts to the application and each part serves a
different function to completely describe the invention for the
Patent and Trademark Office. It is critical to be extremely precise
in crafting the language to “claim” what you believe is your idea in
order to achieve maximum patent protection. Particular meanings
attach to words or phrases and it is important to understand their
significance.
ANOTHER CAVEAT: THE FAILURE TO PRECISELY CLAIM OR DEFINE YOUR
INVENTION MAY LEAD TO LIMITED PATENT PROTECTION OR NONE AT ALL.
WHY BOTHER?
When a patent is granted to an inventor the government gives to that
entity a monopoly on the use and manufacture of that item.
The grant of a patent is a trade between the inventor and the
government. The inventor with the idea gives to the public his or
her idea and the government in turn grants a monopoly of either
fourteen or twenty years to the inventor. Once the patent term
expires any member of the public can manufacture the product. During
the term of the monopoly, however, if someone tries to interfere
with that monopoly the inventor has certain civil rights which can
be enforced through the court system.
Assuming that all the hurdles have been navigated the patent is
issued and the inventor can then sell the idea, license the idea or
assign the idea to the exclusion of everyone else for that limited
time period.
The grant of the limited monopoly protects someone who has developed
a new idea from being robbed of the fruits of that idea. It also
encourages the creation of new ideas. The inventor can be a garage
hobbyist or a behemoth corporation and the invention can be as small
as a molecule or as large as a car. The grant and level of
protection are the same in both cases.
How Long Will It Take?
By definition, every patent is different from any other. The
exact length of time that it will take to prosecute a patent
will depend on several factors including the complexity of the
device and the state of the "prior art". Generally speaking the
process will take anywhere from eighteen months to two years to
complete.
COPYRIGHT
Copyright protection is afforded by federal statute. What is or may
be afforded copyright protection is subject to debate and
interpretation. Copyright does not protect the idea itself but
protects the expression of those ideas. While most people
probably associate this protection with literary or artistic
creations other types of expressions are also protected.
For example, the following may be copyrighted:
1. Literary works;
2. Musical works;
3. Dramatic works;
4. Choreographic works;
5. Pictorial, graphic and sculptural works;
6. Motion pictures and other audiovisual works;
7. Sound recordings; and
8. Architectural works.
The list is not exhaustive but merely
representative of the types of works that may be copyrighted. For
instance the creator of a particular wallpaper design has been
afforded this protection.
Again it is the not the idea itself but the expression of that idea
that is protected.
If you express an idea in a unique manner, what is the next step to
determine if it is afforded copyright protection?
WHAT IS COPYRIGHTABLE?
In order to be copyrightable three basic conditions must be
satisfied:
1. the work must fall within a
particular definition of authorship;
2. the work must be fixed in a tangible medium of expression; and
3. the work must be original.
Whether or not someone is the
“author” or whether or not a work falls within the definition of a
work of authorship can sometimes lead to disputes. Whether or not
something is fixed in a tangible medium of expression and whether or
not it is original can be troublesome issues as well.
You have consulted with an attorney who has advised you that have
satisfied all three requirements, so now what do you do?
REQUIREMENTS FOR PROTECTION
To be able to take advantage of the protection the work must be
deposited and registered with the Copyright Office. These works are
maintained by the Library of Congress. To register a work is a
relatively simple process but can reap huge dividends if properly
done. Registration is not mandatory but the author would greatly
limit his remedies if someone infringed on his copyrightable work.
Because it is so easy to register there seems to be no reason not to
register the work.
In the case of someone such as Elvis Presley, his estate and
therefore his heirs will reap the benefits of his artistic creations
well into this century. Can you imagine if copyright protection had
not been secured for him?
TERM AND TYPE OF PROTECTION
OK, so you are not Elvis and I will never live in Graceland. What
potential benefit can you realize as a result of this protection?
Generally speaking the years of protection afforded is equal to the
life of the creator plus a term of seventy years. The protection may
extend beyond the seventy years in certain circumstances. Several
years ago the protection was extended from a term of twenty eight
years to the current seventy.
The Copyright law gives to the author the separate exclusive right
to his work. Infringement is the unauthorized exercise or use of
that right by another. It protects against copying and public
performance and display. Elvis (assuming he was really spotted) or
his representatives have the right to make copies of his music and
sell it to the public. If I try to make copies and sell them to the
public I will have violated the copyright.
TRADEMARK
Trademark protection allows businesses to develop a corporate
identity. A variety of items may be trademarked including slogans,
phrases, characters, scents and designs, to name a few.
In the area of trademark law there are three distinct issues:
1. The right to use a mark;
2. The right to exclude others from using a mark; and
3. The right to register a mark.
A company, if the mark is properly
registered, has the right to exercise all three of those facets of
the trademark law.
GENERAL REQUIREMENTS
The mark must be “distinctive” of the goods or services. For example
the word “Xerox” is a company name and for a time described the act
of making a copy with a copier. Because the phrase “make me a xerox”
was becoming too familiar the trademark name “Xerox” was in jeopardy
of being lost.
The mark must not be confusingly similar to another mark. If that
occurs, infringement is sure to follow.
The purpose of a trademark is to develop a corporate identity. It
also serves to identify the goods or services and the source of the
goods or services. It does not, however, warrant the usefulness or
reliability of a product.
HOW TO REGISTER
Before any attempt to register is made a search should be made by
your attorney. The search is conducted to reveal whether or not the
mark has been used in the past or whether or not it is so similar to
a existing mark that it may cause confusion between the proposed
mark and an existing mark.
Once you have satisfied the search requirements your attorney will
file an application with the Patent and Trademark Office. Certain
information is given to the office and the office will perform their
own analysis to determine if the mark is satisfactory.
If the mark passes muster with the PTO it is then published in the
Official Gazette so that others may file objections to the mark. If
there is no successful opposition the mark will issue and a
certificate of registration will issue.
So now you have registered your mark, what can you do with it?
BENEFITS OF PROTECTION
If it is properly performed the use of a trademark can certainly
build a customer base for your goods or services.
Trademarks are everywhere:
1. McDonald’s golden arches;
2. “007”;
3. “Like a good neighbor, State Farm is there”;
4. Coke; and
5. Huggies.
These are just a few of the
registered trademarks and certainly the benefits are obvious for the
companies who own them. Unlike patents and copyright protection
trademarks are indefinite in duration if not abandoned. Abandonment
usually occurs through inactivity or lack of use.
TRADE SECRETS
Trade secrets are those ideas and processes of an enterprise which
are anticipated to remain, well, secret. Why would a business want
to do this?
Quite simply to protect a competitive advantage. For instance, if
the secret formula to Coke was patented, it would expire after a
certain term and everyone and his brother could duplicate that
winning formula. This of course, would drastically affect the
performance of the company and leads others to copy a success. But
so what?
Coke spends millions every YEAR in advertising to promote
“THE REAL THING”. If everyone else had access to this information,
there would no longer be just one real thing but many real things.
All those advertising dollars may be wasted.
In the case of Coke the retention of the trade secret is wedded to
the advertising and promotion of the product but also ties into the
trademark of Coke as well. It is part of an overall corporate policy
and given past history it is a very effective marketing and
advertising plan.
EXAMPLES OF TRADE SECRETS
Not every company is a Coke so what are some other examples. These
include any proprietary information which has been developed by a
company.
For instance, a better or cheaper way to manufacture a product.
This, of course, would give the company a price advantage and
therefore a competitive advantage.
Another example could be a customer list. These lists are valuable
commodities and oftentimes businesses prohibit or severely restrict
their use by employees once an employee leaves the company. The
reason is simple. Customer lists generally take years to develop and
if these lists were purloined the company would lose all the money
and time which was devoted to compilation of the list, not to
mention lose the benefit of the list itself.
These are just a few of the examples of what may considered a “trade
secret”. Trade secret protection can be lost if the secret is no
longer a secret. I know this sound obvious but any communication
with someone who is not associated with the owner of the secret may
endanger the secret itself.
WHAT LAW CONTROLS
Unlike patents, copyrights and trademarks, the trade secret law is
generally controlled not by federal law but by state law. What this
means is that there may be more favorable states with regard to
their definition of a trade secret and the remedies for
misappropriation of the secret.
Additionally the majority of the law in this area has been defined
by the courts rather than statute. Unlike the other three areas
where a specific statute is involved and the court construe or
determine the meaning of particular words and phrases, the courts in
this area have not only defined the essential meaning of terms but
have also construed the meanings of words. As a practical matter
what this means is that there is no legislative history to study to
determine what Congress intended. This sometimes makes it more
difficult to determine exactly what a trade secret may be in any
given circumstance.
This lack of a specific statue also gives the court wide latitude
and much more freedom to determine appropriate remedies such as
civil or monetary damages and injunctive relief. This may be good or
bad depending on the facts but it must be appreciated to fully
understand the ramifications of a particular course of action.
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