The following is what I like to call “Intellectual Property Law 101” and is intended to be an extremely basic primer for those completely new to Intellectual Property Law. Here is what I hope to answer with this article: You have a piece of intellectual property (IP) – Great, how do you protect it? I hope this points you in the right direction and at least gets you to begin asking the right questions.
Intellectual Property in the United States falls into 4 major categories:
- Patents,
- Trademarks,
- Copyrights, and
- Trade Secrets.
Patents
When people think about Intellectual Property patents are usually the first thing that comes to mind. We have all seen the words “Patent Pending” stamped on the bottom of products, and it seems like every time your turn on the TV a major patent lawsuit is being decided. Patents are the quintessential form of protection for that better mouse trap or new widget that you know will revolutionize the world. That said, patents can also cover much more.
Generally speaking patents fall into 3 major classes.
Utility Patents
Utility patents are by far the most common form of patent and make up the bulk of what gets processed at the United States Patent and Trademark Office (USPTO). Utility patents fall into one of 5 different statutory classes of invention as governed by 35 USC 101. These classes include:
- Processes (aka “Method Patents”)
- Machines
- Articles of manufacture
- Compositions of matter
- Or any new and useful improvement thereof of the previous 4 classes.
As you can see, this covers a very broad range of subject matter. Perhaps it’s easier to discuss what is not patentable:
- Laws of nature
- Natural phenomena
- Products of Nature
- Abstract Ideas
- Unapplied Mathematical Algorithms
Of course determining whether your invention is patentable involves more than just deciding if it fits into one of these basic slots.
For example, a threshold requirement is that the invention must satisfy the Utility requirements of 35 USC 101 and 35 USC 112. Basically, as long as the invention may be put to a single possible use, it possesses utility. This is pretty broad. Note that there is no requirement that you identify the best possible use for your invention – you just need to identify a single use for it.
There are a slew of other patent requirements that will be discussed in later articles, but hopefully this gives you some idea as to what can be protected with a utility patent.
Design Patents
Design patents protect new, original, and ornamental designs for an article of manufacture. They must be primarily ornamental (as opposed to being primarily functional), and they only protect the ornamental design. It is important to reiterate that design patents do not protect any of the functional aspects of an invention at all.
A good example of what a design patent protect might be illustrated by a kitchen knife. In the culinary world you have your larger chef’s knives for general slicing and chopping, and then you of course have paring knives for detailed work, peeling potatoes etc. Functionally, a chef’s knife and paring knife does the same thing – it has a handle, a blade, and is used to separate matter. Their outward designs are much different but functionally they are the same. If you designed a new kitchen knife that was functionally the same, but had a unique ornamental appearance, that new design may be best protected by a design patent. Of course, if you designed something totally new (like say, a new electric chef’s knife, or something) that may be eligible for utility patent protection.
Design patents definitely have their place, but it is important to keep in mind that the scope of protection of a design patent is much more limited than a utility patent. On the plus side, design patents are much easier to obtain than a utility patent, and they are typically cheaper and faster to obtain as well.
Plant Patents
As I am sure you can imagine, Plant Patents cover plants. The requirements for a plant patent are fairly simple and straight forward. In a nutshell, Plant Patents protect distinct and new varieties of plants. The plants must have been asexually reproduced to be eligible for Plant Patent protection.
Trademarks
Generally speaking, Trademark protection protects intellectual property that is used to distinguish a product or service. Typically we think of logos and slogans when we think of Trademarks (and that would be correct), but a trademark can cover unconventional things as well. There are instances where sounds, smells, and even colors associated with certain types of goods in certain situations have earned trademark status. What matters most is that whatever you want to Trademark is highly distinct and closely associated with your brand.
Trademark protection can extend extend to Trade Dress – which is the overall visual image that is presented to consumers. This includes product packaging and product design. However, a big caveat for both Trademarks and Trade Dress is that your Trademark or Trade Dress must be non-functional (if it’s functional it needs to be patented, not Trademarked).
Trademarks are especially appealing because theoretically their protection can last forever.
A patent will protect your invention for approximately 20 years, copyright protection can be good for almost 200 years (it depends really, typically a Copyright will last for the life of the author plus 70 years), but if you maintain all of the requirements (and keep paying the USPTO) a Trademark can last forever.
Copyrights
Copyright law is pretty interesting, and can be an especially cerebral subject if you really want to distill down its nuances. That is because the definition for what is copyrightable is quite broad. Copyright protection is available for:
“…Original works of authorship, fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”
Again, it may be more useful to mention what isn’t copyrightable:
- Ideas
- Procedures
- Processes
- Systems
- Methods of Operation
- Concepts
- Principles
- Discoveries
The requirements that the work be “original” and “fixed” are among the more important requirements for a copyright. Lets discuss both requirements in a little more detail.
Originality Requirement
The originality requirement for a copyrightable work is a very low threshold. Originality requires:
- Independent creation by the author (opposed to copying from other works); and
- Some minimal degree of creativity (which is referred to as a “de minimus” standard)
There is no aesthetic standard, so your work doesn’t even have to be “good” to earn a copyright, and even accidental works meet the requirement of originality.
Fixation Requirement
The requirement that the work be “fixed” in a tangible medium of expression is also quite broad. Works of authorship include the following categories:
- Literary works
- Musical works, including any accompanying words
- Dramatic works, including any accompanying music
- Pantomimes and choreographic works
- Pictorial, graphic, and sculptural works
- Motion pictures and other audiovisual works
- Sound recordings
- Architectural works
So as you can plainly see, Copyright protection extends to a wide variety of creative work. The nice thing is that Copyright protection is relatively easy and inexpensive to obtain, and protects the work for a long period of time.
Trade Secrets
A Trade Secret encompasses knowledge possessed by an individual or institution and kept secret in order to prevent others from using the knowledge in a competitive manner or for other reasons. Examples include secret formulas (ie Coca-Cola) and secret manufacturing processes.
Generally speaking, to maintain a Trade Secret you must:
- Keep your secret a secret
- Take reasonable steps to maintain secrecy
- Limit Access
- Use Confidential non-disclosure agreements
Deciding whether to protect your IP with either a Patent or Trade Secret is not a decision to be taken lightly. There are pros and cons with each choice, and you must heavily weigh the consequences. Here are a couple of issues to consider when deciding whether to protect your IP with a Trade Secret or a Patent:
- The ability to maintain your trade secret as a trade secret.
- The likelihood of getting a patent.
- The ability to enforce a patent if you get one.
- The cost of securing patent protection.
- The criticality of the technology to your business.
Final Thoughts
Once again, I need to stress that these are very basic considerations.
In many cases it makes sense to use several different types of intellectual property together to ensure proper protection. Ultimately, you should consult with an experienced IP attorney before making the decision as to how best protect your intellectual property.
