What You Need to Know
“Intellectual property” is a category of rights protecting commercially valuable products of the human intellect. It includes patents, copyrights, trademarks and trade dress, trade secrets, and publicity rights. Intellectual property is a form of personal property that can be bought, sold, licensed, and abandoned.
What a Copyright Is
Copyright protects original works of authorship fixed in any tangible form, for example literature, music, dramatic works like theater, fine art, digital art, motion pictures, sound recordings, computer software code, and architecture. Eligible works are protected by copyright law from the moment the work has been created and fixed in a tangible form, whether the work has been published or not, and at least since March 1, 1989, whether or not a copyright notice has been placed on the work. Copyright does not grant you any right to the underlying ideas, facts, procedures, systems, methods, concepts, or principles, but only grants you rights to the particular expression of those underlying ideas fixed in tangible form. Copyright does not protect single words or short phrases.
How Long Copyright Lasts
The term of a copyright dictates for how long its owner has enforceable right in the copyright and depends on the year the work was created and who the author is. Works created on or after January 1, 1978 are protected for the life of the author plus 70 years after the author’s death, or if more than one author, 70 years after the last surviving author’s death. Works created prior to that date, but not published or registered, are also protected for the same duration. But if the work was created as a work for hire, or created anonymously or under pseudonym, the term of the copyright is the shortest of 95 years from first publication or 120 years from creation.
Why Copyright Notice is Important
Almost everyone is familiar with the copyright symbol ©, but few understand how it actually relates to the copyrights it gives notice of. Since 1989, copyright notice is not required for legal protection of the copyright; as soon as you create an original work of authorship and fix it in tangible form, you have copyright in that work. However, without proper notice placed on the work, the damages you may be able to obtain for infringement may be limited to the point it is not financially reasonable to litigate. Proper copyright notice takes the form “© [Year of First Publication] [Owner]”. If space allows, the notice should also include word “Copyright” or “Copyr.” and “All Rights Reserved.”
Why Registration is Important
While copyright exists as soon as the work is fixed in tangible form, registration of the copyright with the U.S. Copyright Office website provides legal protections that make enforcement of the copyright both possible and practical. You may register your work before or after you publish it, but if you have already published your work, you should register it within three months of publication to obtain the maximum benefits of registration. Copyrights can be registered online through the U.S. Copyright Office website. Mailing your work to yourself does not give you any copyright and does not grant you registration.
Trademarks and Trade Dress
What a Trademark Is
Trademarks and Service Marks are words, terms, names, or symbols used in connection with goods or services. Trademark rights exist only when the trademark is actually used, but last as long as the trademark is being used. Not all trademarks are enforceable trademarks or registrable as a trademark. Words that are merely descriptive of a product are usually not enforceable as trademark, for example the mark “Apple” to describe the sale of apples. The strongest trademarks are completely arbitrary in relation to the goods and services associated with the mark, for example the trademark “Apple” for the sale of computers and computer software.
Your brand name is only as valuable as it is capable of identifying you as the source of your goods and services. When others use your brand name, you lose business because the purchasing public can no longer distinguish the goods or services as yours. It is important to discuss your branding with an experienced trademark attorney before you invest too much in the marketing of your brand name so that your brand can actually be enforced as a trademark.
What Trade Dress Is
Trade Dress refers to the trademark protection available for unique presentations of items in the marketplace. Specific color combinations, graphic designs, and specific shapes may comprise trade dress. For instance, the distinctive shape, look, and feel of the Coca-Cola bottle may be protectable as a trade dress. Trade Dress may also be registered with the USPTO.
Why Registration is Important
While registration of a trademark or trade dress is not necessary to have rights in the trademark or trade dress, failing to register makes enforcement impractical in most cases. Trademarks can be registered with any state and/or with the federal government. Due to the complexity and expense of filing for a federal trademark registration, those doing business only within certain states may choose to register their mark only in those states. Federal trademark registrations, however, are the most beneficial and valuable, in particular because they give you the exclusive right, as of the filing date of the registration application, to use the mark nationwide in connection with the listed goods and services. Federal registrations also grant:
- Nationwide constructive notice of the registrant’s claim of ownership of the mark;
- “Incontestable” status after five years of registration, limiting challenges to the validity of the mark;
- Federal court jurisdiction;
- Treble damages for willful infringement; and
- The services of U.S. Customs and Border Protection in restricting importation of infringing or counterfeit goods.
While registration is not necessary to use a trademark, you must be using a trademark before you are granted a registration for it. That being said, the USPTO permits you to file an “intent-to-use” application before you start actually using the mark. Such applications are beneficial because they establish a priority as of their filing even before you know whether or not you are going to use the mark. If the application is allowed, you must prove that you are using the mark before you are granted a registration.
If you have already been using your trademark, you would file a use-based trademark registration application that once allowed, will issue into a registration.
What the Trademark Registration Process is Like
Federal trademark registration applications are examined by the USPTO and usually issue within a year of filing. The USPTO will conduct a search of registered trademarks and may reject your application if it determines that your mark would cause confusion with any registered trademark. Applicants have the opportunity to refute the examiner’s findings and/or to amend their application. Once the USPTO determines that the trademark would be allowable by its own examination, the trademark is published for opposition to permit others, within a certain amount of time, to oppose the application. If opposed, administrative proceedings may commence that will determine whether the registration application should be allowed. Absent an opposition, or if opposition is resolved, a registration is issued so long as the applicant has proven it is actually using the mark.
Why Trademark Searches Are Important
Before you invest time and money in branding a product, make sure that you are confident you are using a trademark that is enforceable as a trademark, that is capable of registration, and that does not infringe on other trademarks. Trademark searches help with this. Trademark searches can be conducted using tools provided by the USPTO or through a general online search, but professional patent search firms have access to specialized databases and have researchers trained to navigate the complex classification systems employed by the USPTO trademark database, state trademark registration databases, and other databases.
What a Trade Secret Is and How it is Created
Some information and innovation is so valuable that you want to keep it to yourself. Trade secrets include recipes, financial data, formulas, supplier or customer lists, source code, manufacturing methods, and other information that is not generally known and that gives companies a competitive advantage.
How a Trade Secret is Kept
A trade secret is ensured by properly executed agreements with employees and business partners. Because patents disclose the details of the underlying invention and copyright registrations are documents potentially available to the public, any information you want to keep as a trade secret should not be included with documents filed with the Copyright Office or the USPTO.
How Long a Trade Secret Lasts
The rights granted by patent and copyright don’t last forever, but a trade secret potentially could. As long as you take reasonable steps to keep the information secret, you can enforce your trade secret rights against those who steal the information, but not those who reverse engineer or come up with the trade secrets independently of you.
What a Patent Is
Patents grant their holder the right to exclude others from making, using, selling, and importing the invention recited in the claims of the patent within the United States. These rights are enforceable against infringers even if the infringers independently invented the idea; the first to file a patent application for the invention is the first to be given these incredibly valuable rights to exclude others.
How Long Patent Protection Lasts
In exchange for you disclosing how to make and practice your invention to the world, the government grants you those exclusive patent rights for a limited term: 20 years from filing for utility patents and 15 years from the date of grant for design patents. For most inventors, the limited term is worth disclosing the invention with the world, but all inventors should ask whether their invention—or certain aspects of their invention—is best kept as a trade secret.
Provisional Patent Applications Are a Good First Step
Most inventors are not sure whether their invention is worth the money spent on a patent application or are unsure about how their invention might change once it hits the market. A certain type of patent application called a “provisional patent application” gives inventors a chance to test the market for their invention while preserving their right to obtain patent protection for the invention for a year from the date the provisional patent application was filed. Provisional patent applications permit the inventor to market their invention as “patent pending,” which some find to be beneficial to sales. Provisional patent applications do not have many of the formal requirements of non-provisional patent applications, for example, provisional patents have no claims and the figures/drawings need not follow the strict rules applicable to non-provisional applications, but for the provisional patent application to serve its purpose, it must describe the invention adequately. If a utility, design, or plant patent is not filed for the invention within a year of the provisional patent application’s filing, patent pending status expires, no enforceable patent rights exist, and if you had made the invention publicly available more than a year ago, you abandoned your right to seek any patent protection for the invention.
What Type of Patents There Are
There are three types of patents: design patents, utility patents, and plant patents. Utility patents protect functionality. Design patents protect ornamental designs. Plant patents protect human made asexual plants. Any invention may be protected by one or some combination of these types of patents.
What the Patent Process is Like
When a non-provisional patent application is filed, the USPTO conducts their own search of the prior art and examines the application in light of all of the requirements of law, including that the invention claimed in the application is eligible subject matter for a patent, has not already been done anywhere in the world, is not an obvious variation on anything already done anywhere in the world, and that the application describes the invention sufficient to allow a person skilled in the art to make and practice the invention. This process is called “patent prosecution,” which on average lasts just over two years. Most patent applications are rejected at least once, most often based on prior art the examiner found, at which point the applicant may amend the patent claims to avoid the prior art. Even if a patent is issued by the USPTO, its validity may still be challenged in court, most often by those accused of infringement, and in administrative proceedings created specifically to determine the validity of issued patents.
Determining Whether Your Invention is Patentable
You are not required to prove that your invention is patentable to the USPTO. Rather, the USPTO has the burden of proving the invention is not patentable. However, due to the complexity and length of patent prosecution, patent applications are significant investments in time and money. Before you make that investment, patent searches can help determine if your invention is patentable and aid in the drafting of patent claims that will survive the USPTO’s examination and hold up in court. Patent searches can be conducted using tools provided by the USPTO website or through a general online search, but professional patent search firms have access to specialized databases and have researchers trained to navigate the complex classification systems employed by the USPTO patent database and other databases around the world.
Patent Rights Abroad
Patents granted by the USPTO do not grant you any rights outside of the United States. To obtain patent rights abroad, you must obtain a patent in each individual country. Fortunately, there are streamlined processes for doing so. Foreign patents may be obtained through the Patent Cooperation Treaty (PCT), which allows you to file a patent in a first country and proceed to an international examination process that allows you to obtain rights in other countries that are signatories to the Treaty. For most applicants, the PCT process is a more efficient way of obtaining foreign patent rights than filing in each individual country. The PCT does have some disadvantages. For example, unlike in the United States where you may request that your patent not be published prior to being issued, the PCT requires publication.
Commercialization is How Your Intellectual Property Makes Money
Obtaining intellectual property rights is only the beginning. Your intellectual property comes to life through commercialization. Some of our clients dedicate their lives to making and selling the products of their intellectual property. If they are not already an established business, they form companies, hire employees, establish business relationships with manufacturers and distributors, and market their product, and the profits from sales become the fruit of their labor. At Peacock Law we guide them through their entire journey, whether it be to form companies, draft employment agreements to maintain confidentiality and trade secrets, draft manufacturing and distribution agreements, guide them through the regulatory environment of their product, or to advise them how to design and package their products to enjoy the full benefits of their intellectual property rights and avoid infringement of other intellectual property rights.
Other clients are not in a position to make and sell the products of their intellectual property themselves. Perhaps they don’t want to give up their day-job for a risky venture or don’t have the initial capital it takes to get the products to market. These clients prefer to license or assign their intellectual property rights to entities that can bring their product to market, and in exchange, they receive royalty payments. At Peacock Law we have extensive experience in negotiating and drafting licensing agreements. Due to the complexity of the law surrounding intellectual property, such agreements are risky if not drafted with an understanding of intellectual property. If the mutual obligations are not clarified properly from the beginning, the intellectual property owner may be stuck in an arrangement that pays nothing or that creates liabilities greater than rewards.
Enforcing Intellectual Property Rights
While some types of intellectual property may be registered with the government, like trademarks and copyrights, or may be issued by the government, like patents, it is the owner of the intellectual property rights that has the burden of enforcing their rights against infringers, not the government. As a full-service law firm, Peacock Law is prepared to enforce your intellectual property rights and to defend you against claims of enforcement, whether that means something as simple as drafting or responding to cease and desist or demand letters, or as complex as formal court or administrative proceedings.