The Four Pillars of Intellectual Property Law
Nothing in this blog post should be construed as legal advice. You should seek legal advice from a licensed attorney before using or relying on the information presented in this blog post.
Intellectual Property can be a critical asset to any business. For emerging companies, it’s important to know what intellectual property assets they have, how to protect them, and the costs associated with intellectual property protection and enforcement. To better protect their business in the future, ventures are recommended to think about intellectual property early on. Below is information about the four main pillars of intellectual property law in the United States today: (1) trademarks, (2) patents, (3) copyright, and (4) trade secrets.
Part 1: Trademarks
A trademark is a mark that identifies the source or origin of goods or services in commerce. Examples of marks include brand names, logos, colors, sounds, smells, and other things that can identify a business as the source of goods or services. The United States Patent and Trademark Office (USPTO) is the federal agency responsible for the registration of trademarks. To register a mark with the USPTO, the mark sought to be registered cannot be too like a previously registered mark to be likely to cause confusion among consumers, and the mark owner must identify the class of goods or services for which the mark is used (for example, trademark class 9 refers to computers and scientific devices, and class 42 refers to science and technology services). Trademark protection is limited to the class of goods or services identified in the trademark application.
To register a mark with the USPTO, the mark must be distinctive and be used in interstate commerce. Distinctive trademarks are marks that are considered to be fanciful (invented words, such as the mark Pepsi for soft drinks) or arbitrary (words that have no relation to the goods or services, such as the mark Apple for computers). In general, marks that are descriptive (words that are merely descriptive of the goods or services, such as the mark Creamy for yogurt) cannot be registered with the USPTO. Marks that are generic (commonly known name for goods or services, such as the mark Bicycle for bicycles) can never be registered trademarks.
Registration of a trademark is not essential for ownership of the mark. Ownership of a trademark arises through its use in commerce, and owning a trademark allows the mark owner to prevent others from using that mark or similar marks in a manner that is likely to confuse consumers in the relevant marketplace within the specific area where the trademark is used. Registration of a trademark with the USPTO gives a trademark owner stronger nationwide rights. A trademark lasts as long as it is used in commerce, and the mark owner must engage in certain trademark maintenance activities, such as filing required documents at certain time intervals.
Part 2: Patents
A patent is a form of intellectual property that gives inventors certain legal rights. A patent holder can prevent another party from making, using, selling, and importing into the US the patented invention. The USPTO is also the agency in charge of granting patents. In general, the two types of patents that ventures should be aware of are utility patents and design patents. Of interest to most ventures is the utility patent, which is related to the invention or discovery of “any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.” For example, utility patents can protect engines, computer software (in general, difficult and expensive), pharmaceuticals, etc. Laws of nature, natural phenomena, and abstract ideas cannot be patented.
The US uses a first-to-file system, which means that, in general, a patent is awarded to the first party to file a patent application for an invention. In general, a patent lasts 20 years from the filing date of the patent application. Obtaining a patent can be an expensive and time-consuming process, depending on the complexity of the invention. For example, the patent costs for a complex invention can be more than $10,000 dollars, and on average, it takes 20.2 months to receive an initial response from the USPTO regarding the examination of a patent application. To obtain a patent, the invention sought to be patented must satisfy the novelty and non-obviousness requirements of patent law. These two requirements are evaluated by examining prior art (information, such as preexisting patents, publications, etc.). Non-obviousness is determined from the point of view of a hypothetical person of ordinary skill in the relevant subject matter area.
Ventures should also be aware of the provisional patent. A provisional patent acts like a placeholder for a nonprovisional patent (utility and design patents). In general, a provisional patent is easier and less costly (around $1,500 to $3,000 if you hire a patent attorney) to obtain than a nonprovisional patent. However, the provisional patent must be converted into a nonprovisional patent within 12 months; otherwise, the provisional patent is deemed to be abandoned.
Note that certain types of disclosures related to an invention may bar an inventor from obtaining a patent. If the invention was described in a printed publication or in public use or on sale for more than a year prior to the inventor applying for a patent, then the invention cannot be patented anymore. Therefore, ventures need to be aware of the need to protect the confidentiality of their inventions. For example, prior to disclosing the invention to third parties, ventures may want to require the third parties to sign confidentiality agreements or nondisclosure agreements.
Part 3: Copyright
The United States Copyright Office (USCO) is the agency responsible for copyright registration. Copyright law protects original works of authorship that is fixed in a tangible form of expression. Works that may be protected include literary works, musical works, dramatic works, pictorial works, sound recordings, etc. These categories of protectable works have been interpreted broadly. For example, computer code may be protected by copyright as a literary work. An original work of authorship is one that is independently created and possesses a minimal level of creativity. The work must be fixed in a medium so that the work is able to be perceived, reproduced, or communicated for more than a short duration of time (i.e., a drawing fixed on a piece of paper). Not everything can be protected by copyright. For example, copyright protection does not extend to ideas (an expression of an idea may be copyrightable, though), names, titles, short phrases, familiar symbols, etc.
An author is a copyright owner the moment he or she creates an original work that is fixed in a tangible medium. Copyright law grants copyright owners certain exclusive rights, such as the right to reproduce the work, the right to prepare derivative works based upon the original work, etc. In general, the duration of copyright protection is the life of the author plus 70 years after the death of the author. Ventures should note that to enforce your exclusive copyright rights, you have to register the work with the USCO.
Part 4: Trade Secrets
In general, a trade secret is information that is:
(1) not generally known or readily ascertainable using ordinary means;
(2) derives independent economic value from the information being secret; and
(3) subject to reasonable efforts to maintain its secrecy.
Examples of trade secrets include the recipe of Coca-Cola and Google’s search algorithm. Trade secret law protects owners from misappropriation of a trade secret. Unlike other forms of IP protection described above, there is no need to register a trade secret with an agency. A well-kept trade secret may last forever. Examples of efforts to protect a trade secret include implementing appropriate security measures, such as limiting access of a trade secret to certain authorized individuals and using confidentiality agreements, such as requiring all those that have access to the trade secret to keep it confidential. Trade secret protection ends once the claimed information becomes publicly available. Ventures may want to protect their invention as a trade secret rather than getting a patent. For example, in general, a patent only lasts 20 years, whereas a trade secret may last forever. Also, early-stage ventures may not have the resources to go through the patent process.
Part 5: Additional Resources
For more information about trademark law:
1. https://www.uspto.gov/trademarks/basics/what-trademark
2. https://www.uspto.gov/trademarks/basics/strong-trademarks
3. https://www.uspto.gov/trademarks/basics/why-register-your-trademark
4. https://www.uspto.gov/trademarks/search/likelihood-confusion
For more information about patent law:
1. https://www.uspto.gov/patents/basics/general-information-patents
2. https://www.uspto.gov/patents/basics/types-patent-applications/provisional-application-patent
3. https://corporate.findlaw.com/intellectual-property/watch-out-for-statutory-bars-don-t-lose-patent-rights-before-you.html
For more information about copyright law:
1. https://www.copyright.gov/what-is-copyright/
2. https://www.copyright.gov/circs/
For more information about trade secret law:
1. https://www.nolo.com/legal-encyclopedia/trade-secret-basics-faq.html
2. https://hbr.org/2013/11/filing-for-a-patent-versus-keeping-your-invention-a-trade-secret
IDEA ventures can also contact the IDEA Legal Officer at idealegalofficer@gmail.com for more information or receive assistance regarding intellectual property protections.
Robin Chu
Legal Officer
