Intellectual Property Law

What is the difference between a patent, trademark and copyright?

It really is quite simple, although specific cases add flavor to the mix. Essentially, a patent protects an invention by granting exclusive rights to the inventor. A trademark protects a distinctive symbol, such as a logo, that designates the maker of goods or the provider of services. Last but not lease, a copyright protects the author of a creative work, such as a book or song. These simple definitions are only the starting point, for in each area, there are many subtleties that need to be addressed. Some of the key issues are discussed below.

What is a patent?

As noted above, patents protect inventions. Technically, a patent is a legal right granted by the U.S. Government. It is a federally regulated area, and there is a national patent system, as opposed to separate rules in different states. Patents, once granted by the U.S. Patent Office, last for 20 years. After that, the invention passes into the public domain and can be accessed, or used, for free by anybody. The purpose behind the patent law is to give an incentive to inventors to disclose their inventions and advance the state of scientific knowledge. The benefit of disclosure (once a patent is granted) is that the inventor has the exclusive right to use the covered invention for the duration of the patent period. When a patent is granted, a detailed description of the invention is published by the Patent Office and can be reviewed by the public. It is important to note that patent protection stems from the Patents Clause of the U.S. Constitution (Article I, Section 8, clause 8), which provides to Congress the power to legislate "[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." It falls to the Congress to actually write the specific statues that provide the details of the protection that is offered. The U.S. Patent Laws enacted by the Congress are found in Title 31 of the United States Code. The basic statute that defines patentability reads as follows: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor . . . ." Title 31, United States Code, Section 101. The U.S. Patent Office has issued detailed regulations that further clarify and define patent rights and procedures, and these rules are found in Title 31 of the Code of Federal Regulations, commonly known as CFR.

What types of things are covered by patents?

Basically, new machines, processes, substances, and physical articles may be patented. Some classic examples are television tubes, radio tubes, typewriters, computer chips, telephones and light bulbs. The list is endless, but the point is that the creators of these things obtained a period of exclusivity following the registration of their inventions.

How do you apply for a patent?

Inventors must apply to the U.S. Patent Office, and must fully describe their invention on forms approved by that office. The application not only explains the invention, but also defines the limits of the technology being claimed by the inventor. After the application is approved, it will lead to the publication of patent information in the official publications of the U.S. Patent Office and the pubic will have access to review it. The patent application will be reviewed by an examiner in the U.S. Patent Office before it is approved. The examiners usually have substantial technical experience and particular applications are routinely assigned to examiners who have experience in the subject area covered by the application. The patent examiner will search to see if there is already on file a similar application, and will attempt to determine whether the same technology has already been claimed by someone else. The examiner may also reject the application if it does not conform to the format of the U.S. Patent Office or if it is otherwise legally deficient. If the examiner has objections to the application, they will be communicated to the applicant. Should the applicant be unable to get around the objections and the application gets rejected, there is an appeal process that can be pursued. Before that occurs (and before the application is rejected) the applicant typically attempts to persuade the examiner that the objections are not valid, or he/she may amend the application to avoid any problem or question that has been raised. The point to remember is that patent applications receive vigorous review and are not granted automatically.

How do I prepare a Patent Application?

Because the process is complex and technical, most inventors employ patent counsel (practitioners who have experience dealing with the U.S. Patent Office). Most practitioners in this area have not only extensive legal knowledge of the requirements of the U.S. Patent Office, but they have extensive technological skill as well. While an individual inventor can certainly represent him/herself before the U.S. Patent Office, due to the legal complexities in the procedure, most inventors employ competent patent counsel to assist in the application process.

When do I apply for a patent?

Under the law, an inventor must file a patent application within one year after the public disclosure of an invention. The time limit begins to run when an inventor either:

- Publishes a description of an invention
- Places the invention up for sale
- Offers a detailed description to the public (for example, making a presentation at a public meeting)
- Otherwise places the invention in the public domain. This time period is extremely important, because if no application is filed within one year of disclosure, the right to obtain a patent is permanently lost. The reasoning here is that there is no need to offer an incentive to a person to disclose an invention that has already been disclosed. Consequently, most inventors refrain from publicly discussing their inventions until an application has already been placed on file. Hence the words "Patent Pending" appear in many places. This is an indication that the inventor has filed his/her patent application before making disclosure to the public.


How long does patent protection last?

As noted above, a patent provides exclusive rights for 20 years. The period runs from the date of the application, not the date it is approved.

What happens if more than one inventor claims the same invention?

The short answer is that patent protection will go to the inventor who proves he/she came up with the invention first. Usually, the patent is granted to the first person to file the application. The U.S. Patent Office does have a procedure whereby another inventor can challenge the patent by proving that he/she actually invented the item (formula, machine, article, etc.) first. These procedures are called an interferences. They often are long, complicated, expensive proceedings that take years to resolve.

Do employee-inventors own their inventions? Or does the employer own the invention?

The answer is: it depends. It is not at all uncommon for an employer to require an employee to sign an agreement, as a condition to employment, providing that all things invented while in the employer's service belong to the employer. This is most common in a university setting where considerable research is done; it is also common in any industry (such as the computer industry) where there is considerable "R & D" work (research & development). The reasoning behind such agreements is that the employer is providing the workplace and the means to make the invention, and therefore, the employer desires to claim the patent rights. Disputes can arise as to whether the employee created the invention on his own time, with his own resources, as opposed to utilizing things the employer has provided. These disputes, like many in the patent area, are often complex and expensive and intensely fact specific. When it comes time to file a patent application, however, the name of the inventor (not the employer) must be used.

How do I make money from a patented invention?

Because patents grant the inventor the exclusive right to make use of his invention, they convey a very valuable right. Many inventors either manufacture their inventions themselves, or else they enter into legal arrangements, usually called licenses, whereby they permit others to use their invention for a fee. Imagine the person who invented the television tube. For 20 years, he had the right to control who made television sets and he could make enormous money from his patented invention. After the 20 year period, the patented technology passed into the public domain.

What is a trademark?

The easy answer is "think logo." While not an exclusive definition, this short response really cuts to the heart of the issue, for trademarks are recognizable symbols ("marks") that identify the maker of goods or provider or services. They are distinctive symbols, letters, names; even smells and sounds can be trademarks, assuming they are distinctive and become identified in the minds of consumers with the maker of certain goods or the providers of certain services. Classic examples are the name "Coke" for Coca-Cola; the name "Windows" (or the Windows symbol) for Microsoft Software; the "swoosh" for Nike products.

Why are trademarks valuable?

Trademarks are extremely valuable in the crowded commercial marketplace because they immediately identify products/services with specific companies or providers. Once a manufacturer succeeds in obtaining trademark status for a given "mark," that symbol can be sued to instantly attract customers to buy its products. A purchaser looking for sneakers may see a wall of different shoes, but once he/she spots the Nike "swoosh," the eyes may be drawn to a particular pair, and the maker of that pair may have a competitive advantage because the goods will be easier to sell. Of course, once a given mark becomes popular, other companies may try to poach on the mark's popularity. This leads to something commonly called "palming off," which occurs when one manufacturer makes goods that look like another's. They may not be of the same quality, and if there is confusion in the market two things may happen: the "copy-cat" may be making sales to customers who really want to buy the original company's products and - just as important - the copy-cat's products may not be as good as the original company's, and the original company's reputation may be harmed by inferior manufacturer's palming off inferior products on an unsuspecting public. As you can easily imagine, the owners of trademarks protect them. They bring infringement actions against others who imitate protected marks and cause market confusion.

Who does trademark law protect? Manufacturers or consumers?

The answer is both. Manufacturers are protected because they have legal rights in marks they spend a great deal of money to create, promote and use. The public is also protected, because the aim of trademark law is to prevent market confusion. The public has a right to know who is making which goods; the public needs to be able to rely on recognizable marks in making purchasing decisions.

Are there different kinds of Trademarks? What are they?

Yes, but you must remember that some marks are protectable and others are not.

The basic types of marks are Generic Marks, Descriptive Marks, Suggestive Marks and Fanciful (arbitrary) marks. Each is explained below (and only some of them can blossom into protectable Trademarks).

Generic Marks: These are not protectable, because they simply describe the product or service being offered for purchase. If we allowed generic marks to become protected, we would in effect carve up the English Language and appropriate it to different companies. A good example of a generic trademark is the description "baseball bat." This is a "mark" that describes a product, but it does not tell us who made the product. It is important to remember that in commerce, manufactures have a need to describe their wares; the delicate balance of trademark law allows everyone to freely describe his/her products and services, while at the same time creating a protectable zone for distinctive trademarks that identify manufacturers/providers rather than merely describe what they are selling.

Descriptive Marks: These are one step removed from generic marks and they only will become protecible as a trademark if they gain something called "secondary meaning." This is an important concept, because it means that certain words have evolved in the public consciousness to have an additional meaning beyond their literal translation. For example, a "Tree Trunk" baseball bat would be a descriptive mark. It actually describes the qualities of a particular bat (very heavy and very thick, presumably to be used by a well muscled player, such as Babe Ruth or Mark McGwire). But it also may acquire secondary meaning through advertising. "Tree Trunk" may come to mean a bat made by the ABC Company, as opposed to bats made by some other firms. If the words take on a secondary meaning, they can become a protectable trademark because in the marketplace they identify a particular manufacturer.

Suggestive Marks: This is one more step up the ladder. Although a suggestive mark suggests characteristics of a given product, it may also, though secondary meaning, become associated with a particular manufacturer. A good example is a "Duracell" battery. The name suggests characteristics of the product (batteries with durable cells that have long life), but it may also suggest a particular manufacturer.
Fanciful Marks: These have the most potential, because they are not descriptive, or suggestive. They are purely arbitrary, created out of thin air, yet they may become so well known that they instantly tell the public who the manufacturer is. The best examples of fanciful marks are symbols (logos) that tells us who the manufacturer or provider is: Nike's swoosh, Microsoft's window; the distinctive, interlocking "N" and "Y" for the New York Yankees baseball team.

Of course, certain marks can be too successful, and fanciful words may fall into the public domain because they become part of our everyday language. Examples here include: elevator, cigarette, asphalt, and concrete. A closer call is a word like Xerox (often used instead of the generic term, photocopy).


How does a person acquire trademark rights?

Usually, the first person to use a given mark has the claim on it. Many states have a procedure for the registration of a mark, and the federal government has such a produce as well. It is important to remember that registration in a particular state only provides protection within that state. The most effective protection comes from the national registration system set up by the U.S. Government, through the U.S. Patent & Trademark Office in Washington, DC. The federal procedure begins with an application. Once an application is filed, an examiner at the U.S. Patent & Trademark Office reviews it to see if another person or company has already claimed rights in a similar mark. If such an earlier application exists, the later application may be rejected. The application can also be rejected if the examiner determines that the claimed mark is merely descriptive or generic in nature. Once the application is approved, it is published in one of the Registers of the U.S. Patent & Trademark Office. Once a trademark is registered, there is no time limit on the protection offered, provided the owner of the mark does not abandon it by non-use or other means.

What is a Trade Secret and how does it compare with a Trademark?

Trade secrets may sound like Trademarks, but they are totally different. Trade secrets, in essence, are "know how," special processes, detailed information not available to the general public that has value in a given business. The classic examples are secret formulas (which may also be the subject of a patent), customer lists, business plans, or company processes.

Can Trade Secrets be registered?

Generally the answer is no, unless the specific information of the trade secrete can be protected by a patent or copyright.

If a Trade Secret cannot be registered, how can it be protected?

Good question! First, the owner of a trade secret must take internal steps to safeguard it. These might include limiting access to the information (such as keeping the information in a safe, accessible only by certain employees). Real trade secrets are revealed to employees on a selective basis; often the information is kept under lock and key, or access is limited by use of passwords and other protective mechanisms. One of the keys to protecting trade secrets is treating the information as if it really is a secret. Many companies have extensive employee education programs to instill in the staff the concept that certain information is not generally accessible; is sensitive; is protected; is not to be disclosed; and must be returned if the employee leaves the company.

What if there is a claim that someone is violating or infringing another's trade secret? How does that get resolved?

This is a very difficult question to answer because almost every dispute in this area turns of specific facts. In general, however, several points can be made. The first issue in these cases is whether the information itself is, indeed, a trade secret. Is it something that is in the public domain (addressed in a telephone book, for example)? Did the claimant expend time and money to acquire the information? Does it have importance and value to a particular business? Did the claimant safeguard it? And has the defendant actually "violated" or "infringed" it? The classic cases involve formerly employees who set up new businesses and begin either making the same products, or calling on the former employer's customers. Winning and losing in these cases often depends on who can prove the most about the information in question. IF it was not treated as secret, it will not be protected. But if the claimant spent time and money to develop the information, and if the defendant has stolen it, the law will protect the claimant, and a court may well issue an injunction prevent further use of the information and may award damages caused by its misuse.

What is a copyright?

A copyright is legal device, granted by the federal government, that protects authors and others who create literary works and other creations in fixed format. Copyrights stem from the "copyright clause" of the U.S. Constitution (Article I, Section 8, clause 8), which reads as follows: "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." You might recognize the language - it was quoted above in the discussion about Patents. Both copyrights and patents stem from the same clause of the Constitution, yet the particular statutes that govern each are located in different parts of the United States Code. While Patents are covered in Title 31, copyright protection is dealt within Title 17.

What are the benefits of a copyright?

In a word: exclusivity. This is the same concept as patent law. The owner a copyright controls the reproduction, duplication, publication, distribution, sale and use of the work that is the subject of the copyright. He/she owns the copyrighted work and has the right to use it exclusively. Authors typically enter into contracts (or licenses) with publishers to produce their works. For example, John Grisham owns the copyright to his novel, The Firm, but he has agreed that a particular publishing company may print, publish, distribute and sell the book (paying him fees, called royalties). The owner of a copyright also has the right to control the use of the work in different media. The best example is the author (John Grisham is a good example) who controls the development of his book into a movie.

What things may be copyrighted?

Literary works of all varieties. These include: gBooks, novels, plays and poetry
- Musical works (sheet music)
- Sound recordings (records, tapes, CDs)
- Pictorial and graphic works (paintings, drawings, cartoons)
- Audio visual works (movies, television programs, animated works) There is one important addition:
- Computer software. While there was legal controversy initially (in the late 1970's and early 1980's) as to whether software (computer code) could be the subject of copyright protection, that issue is well settled. Software is expressly included in the Copyright law that is part of Title 17 of the U.S. Code.


What may not be copyrighted?

Copyright protection does not extend to facts, specific words or ideas, processes, or "unfixed" works. This last designation bears an explanation. For copyright protection to attach, the work must be fixed. That is why live performances, in and of themselves, cannot be copyrighted. They are transitory in nature, and cannot be the subject of legal protection. However, a recording of a live performance is fixed and is copyrightable. Other examples of these distinctions include:

- Measurements - usually not protectable because they are facts. However, if a group of measurements are compiled in a book, such as an atlas, the specific depiction may be the subject of copyright protection.
- Recipes or formulas - typically not copyrightable because they are processes, not literary works. As with atlases, however a compilation of recipes, such as a cookbook, can be copyrighted.
- Book titles - usually not subject to copyright because it is only a word or, at most a short phrase. The reason copyright protection does not apply is because the result would be to carve up our language and allow it to be appropriated by different people. The specific words are not copyrighted; it is the work that uses the words that is protected.


How do I get a copyright?

This is where copyrights are vastly different from patents. The author of a work obtains legal protection the moment the work is created. While no formal applications necessary, many authors actually file a written application with the U.S. Copyright Office. The key benefit of registering your work is that you cannot legally protect it in an U.S. court (i.e., file suit for infringement) unless the work is registered. You can obtain copyright protection by applying to the U.S. Copyright Office. The application procedure is simple and it is fast. The forms may be downloaded from the Internet and fees are relatively modest. You will be required to submit copies of the work along with the application. The copies that are submitted are then added to the Library of Congress collection in Washington, D.C.

How long does a copyright last?

That depends on who authored the work:
- If the author is an individual, the copyright lasts for the life of the author, plus 70 years;
- If the author is a corporation (through its employees), the copyright lasts for 120 years from the date of the creation, or 95 years from the date of publication, which ever is shorter. Upon expiration, the work becomes part of the pubic domain. Anyone can use it for free at that time.


Do people always have to pay the author to use his work? What is the concept of "fair use"?

Usually, anyone desiring to make use of a copyrighted work must pay the author a fee. But there are some exceptions, and the most common is known as the "fair use" doctrine. Under the doctrine of fair use, a person may make unauthorized "fair use" of another's copyrighted work, especially if the purpose is for study, scholarship, commentary or criticism. The best examples are limited quoting from a novel in the course of a book review; showing limited clips in the course of a movie review; discussing passages of a book in an English class.

What, then, is copyright infringement? Infringement involves unauthorized use, which most often occurs for commercial purposes. Examples here involve pirated tapes and CDs, "underground" copies of movies, and so forth. The copyright owner has the right to sue anyone infringing his/her copyright and can recover damages; obtain an injunction to prevent infringement; and can require that the infringing products be destroyed.

Are there protective steps I can take before registering my work with the U.S. Copyright Office?

Yes. Whenever you print an essay, book, screenplay, poem, computer program or song (or any other literary work, for that matter), make sure you include under the title the following words:

Copyright (insert year) by (insert your name).
All rights reserved. This designation will alert third parties to your claimed rights and will protect you. But remember, in order to bring a copyright infringement suit, you must have registered your work with the U.S. Copyright Office.


What about things I create while I am working for someone else? Do I own them? What is a "work made for hire"?

Then short answer is: it depends. Often, a work is one "made for hire" -- and owned by the employer -- if it was created while within the course and scope of one's duties, especially if the employer supplied the means to create it (the computer, information gathered from the workplace, etc.). In many cases, employers have employees sign specific written agreements to remove all doubt. Such agreements will concede that the literary creations of employees will be deemed "works for hire," owned by the employer.



 
 

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