Intellectual Property | Patents, Trade Secrets, Copyrights, and Trademarks – Selecting the Right Protection for Your Intellectual Property Assets

David W. Nagle Jr.

By David W. Nagle Jr. and Terry L. Wright

Understanding and protecting your intellectual property assets is an important part of the research and development process. Although most researchers and investigators have a general understanding and awareness that patents and/or other forms of intellectual property exist, they may not fully appreciate which forms of intellectual property apply in which circumstances.

They may also not fully understand when and how to apply for and/or protect their intellectual property assets. Since timing is often critical, researchers and investigators need to engage with intellectual property professionals, such as university tech transfer personnel or private intellectual property attorneys, early in the research and development process.

Terry L. Wright

Patents protect useful, novel and nonobvious inventions.

Patents protect inventions in the form of processes, machines, articles of manufacture, and compositions of matter. The grant of a patent allows the owner to exclude others from making, using, offering for sale, selling or importing the invention in the U.S. during the term of the patent.

Since the government is essentially granting limited monopoly rights when an inventor obtains a patent, an inventor must typically go through a rigorous and lengthy examination process before the U.S. Patent and Trademark Office (“PTO”) and must satisfactorily show that the invention is useful, novel and nonobvious. Meeting the utility requirement is not difficult, as most inventors do not undertake the process of inventing something that is not useful. To satisfy the novelty requirement, the PTO generally requires that the invention not be disclosed or used publicly before the filing of a patent application. There are some exceptions to this rule that allow an inventor a grace period to file a patent application, but it is typically recommended that an inventor file a patent application before disclosing an invention publicly. Finally, an inventor must also demonstrate that the invention is nonobvious, which is a subjective determination as to whether the invention is sufficiently different from existing technology.

If the inventor can successfully navigate through this rigorous examination process, a patent is granted. Most patents have a 20-year term (provided that periodic maintenance fees are paid), but design patents only have a 15-year term.

Trade secrets refer to information that is not generally known or reasonably ascertainable by others.

Unlike patents, trade secrets are not registered at all. To have a protectable trade secret, the information (1) must have economic value that derives from the information not being generally known or readily ascertainable, and (2) is subject to reasonable efforts by the owner to maintain its secrecy. For example, recipes and manufacturing processes often meet these requirements and are considered trade secrets. If a third party then misappropriates the trade secret (such as by employee theft or other nefarious means), the owner would have a claim for misappropriation of the trade secret. However, trade secrets will not prevent or protect against someone independently discovering the information or by reverse engineering the information. Trade secrets can be protected for as long as the information remains secret and protected by the owner.

Copyrights protect original artistic and literary works, including computer programs.

Copyrights protect a broad spectrum of original artistic and literary works including: written works; works of the visual arts, such as paintings, drawings, graphical works, movies; and sculptural works. Furthermore, there is a protectable copyright interest in computer programs, which extends to all of the copyrightable expression embodied in the program (or the code), but does not protect the functional aspects of a computer program (which may be protectable by patent).

To be copyrightable, an artistic or literary work needs to be original. In other words, the work needs to have some creative element added by the person or entity claiming the copyright. At the same time, ideas are not copyrightable. For example, the idea for a story cannot be protected by copyright, but once an individual authors the story, the resulting literary work is protected by copyright. Similarly, the idea for a computer program cannot be protected by copyright, but once an individual creates the source code, it is protected by copyright.

The owner of a copyright has certain exclusive rights. Specifically, only the owner of a copyright, or someone acting with the permission of the owner, is allowed to: (i) reproduce the work; (ii) prepare “derivate works” based on the work; (iii) distribute copies of the work; (iv) perform the work; and (v) display the work. In short, the owner of a copyright controls all commercial uses of the work.

A work is protected by copyright from the moment of creation. In other words, there is a valid and existing copyright once an individual creates an original work. However, to enforce a copyright against an infringer, the owner of the copyright has to seek and obtain a registration before a lawsuit can be filed, which can be obtained through the U.S. Copyright Office. Although registration is not required until a lawsuit is to be filed, it is highly recommended to seek a registration in advance because, if the copyright is registered prior to an infringement, the copyright owner can recover certain monetary damages and attorneys’ fees that would otherwise not be recoverable in an infringement lawsuit.

Finally, copyrights often have very long terms of protection. As a general rule, for works created today, copyright protection lasts for the life of the author, plus an additional 70 years. In the case of an anonymous work, a pseudonymous work, or a work made for hire, the copyright endures for a term of 95 years from the year of its first publication or a term of 120 years from the year of its creation, whichever is shorter. Trademarks indicate the source of a product or service.

Trademarks identify an individual or entity that produced, sponsored, or endorsed a product or service.

Almost anything may serve as a trademark, provided that it performs this source-identifying function. A trademark may be comprised of: a word or words; designs; shapes of containers or other trade dress (such as the Coke® bottle shape); or even a color (pink home insulation) or sound (NBC chimes). Trademarks may be divided into various categories, such as trademarks for use with goods, service marks for use with services, and certification marks for certifying that goods are made by members of a particular union or trade association or come from a particular region. However, the terms “trademark” and “mark” are commonly used to refer to any type of trademark.

A primary goal of trademark law is to avoid consumer confusion. Trademark law protects both consumers and sellers by avoiding situations where the marks of two sellers are so similar that a consumer familiar with one mark might believe that products or services marketed and sold under the other mark are produced by or associated with the owner of the first mark. Trademark protection helps to ensure that a consumer making a purchase is not deceived as to the source of the products or services. This protects consumers, who get what they think they are getting, and protects sellers from competitors who might unfairly sell products or services using a mark that is likely to be confused with an earlier mark.

Trademark rights arise from use of the mark in commerce. To obtain rights to a mark, one must normally sell products or services under the mark, and protection for the mark is normally available only in those geographic and economic areas where the mark is in use. However, through a federal registration of a trademark with the U.S. Patent and Trademark Office, a mark may be protected throughout the U.S., regardless of where the mark has been or is currently being used.

David W. Nagle Jr., Member, is cochair of Stites & Harbison PLLC’s Intellectual Property & Technology Service Group; and Terry L. Wright, Member, practices in the Intellectual Property & Technology Service Group.

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These comments are intended only to provide a general introduction to intellectual property

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