How to protect your Intellectual Property
Patent Trademark Copyright
The most well-known intellectual property types are copyrights, patents, trademark; however, these three are easily confusable. Even though some similarities are shared, they have distinctions and serve different purposes when it comes to intellectual property protection.
A patent protects an invention. A patent for an invention is granting a legal right to the inventor to exclude other people from making, using, offering for sale, or selling the invention in the United States. There are three types of patents:
- Utility patents– any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement. Utility patents are the most common type of patent.
- Design patents– a new, original, and ornamental design for an article of manufacture; and
- Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new plant species.
The term of a new patent is twenty years from the date on which the patent application was filed in the United States, however, it would not be enforceable until the day of issuance. The U.S. patent grants are effective only within the United States.
- Source of Law
Patents in the United States are governed by the Patent Act (35 U.S. Code). The significance of granting exclusive legal rights for inventions has been recognized in the U.S. Constitution. In Article I, section 8, the U.S. Constitution: “Congress shall have power . . . 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. aw is the regime exclusively governed jurisdiction of the U.S. federal law .”
To be patentable, an invention must be statutory subject matter, novel, useful, and non-obvious.
Statutory Subject Matter
In the U.S., the standard to determine what can constitute a patentable subject matter is quite broad. Section 101 of the Patent Act identifies that processes, machines, articles of manufacture, and compositions of matter, are the four types of inventions that are patentable. If an invention does not fall within one of these four categories, the invention is not patentable (such as music, literary works, software or digital data structures which are not combined with computer-readable media).
Moreover, other than falling within one of these four statutory classes, an invention also cannot be one of the judicially created “exceptions”. Recent case law has identified three different exceptions, which are namely abstract ideas, laws of nature, and natural phenomenon.
In order to be patentable, an invention must be considered as new or novel. Section 102 of the Patent Act requires that no certain public disclosure has not been made prior to the patent filing. According to the statute, an invention will not normally be patentable if it was:
- known to the public before the applicant filed for patent protection;
- described in a printed publication before the applicant filed for patent protection; or
- described in a published patent application or issued patent that was filed before the applicant filed for patent protection.
However, a one year grace period is granted by the statute, which serves as an exception. If there is a first public disclosure or offer for sale of an invention, the inventor must file the patent application within one year after the date set above, otherwise, the inventor will lose all right to obtain patent protection on the invention.
The patent law also requires that the invention must of useful to be patentable, which means the invention should have a useful purpose. In most cases, this requirement is easy to meet thought it may be a little more complicated for computer and other electronic technologies. Moreover, the requirement is also critical in the case filing of pharmaceutical or chemical compound for patents.
Section 103 of the Patent Act requires that, other than fulfilling the novelty requirement set above (which is the pre-condition of non-obviousness), the invention must also be non-obvious in order to be patentable. This is one of the most difficult determinations in the patent law, and rejections will be easily made by the patent examiner based on the non-obviousness ground. Non-obviousness requires an invention sought to be patented should not have been obvious to a person that have ordinary skill in the type of technology used in the field of the invention. Moreover, the statute also requires that the invention not be obvious at the time before the application was filed.
- Filing Process
Generally, patents require filing with the United States Patent and Trademark Office (“PTO”). The organization also contains information regarding the laws and regulations. A patent filing is complicated, which requires a detailed and sophisticated application process and possibly a prior art search.
Under the patent law, a provisional application is a legal document filed in the PTO, that establishes an early filing date, but does not mature into an issued patent unless the applicant files a regular non-provisional patent application within one year. After a provisional application is filed, an alternative to filing a corresponding nonprovisional application is to convert the provisional application to a nonprovisional application by filing a grantable petition under 37 C.F.R. 1.53 (c) (3) requesting such a conversion within 12 months of the provisional application filing date.
Trademark typically protects brand names and logos used on goods and services, helping people identify goods or services from a particular source, such as Google, Apple, and Coca-Cola. The application must meet many legal requirements before the trademark can be registered. Trademarks have no specific set term and remain valid as long as the trademark holder continues using them in commerce.
A mark which is registered with the federal government should be marked with the ® symbol. Unregistered trademarks should be marked with a “tm”, while unregistered service marks should be marked with a “sm”.
- Source of Law
Trademarks are governed by both state and federal law. Originally, state common law used to provide the main source of protection for trademarks, while in the late 1800s, the U.S. Congress enacted the first federal trademark law. Since then, federal trademark law has consistently expanded, taking over much of the ground initially covered by state common law. The main federal statute is the Lanham Act, which was enacted in 1946 and most recently amended in 1996. Thus, to obtain the greatest protection for a mark, it is almost always advisable to register the trademark, either with the federal government, if possible, or with a state government for more limited protection.
To serve as a trademark, the mark must be distinctive, which means it must be capable of identifying the source of a particular good. To determine whether a mark is distinctive, the courts group marks into four categories based on the relationship between the mark and the underlying product: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic.
An arbitrary or fanciful mark is a mark that bears no logical relationship to the underlying product. For example, “Apple” bear no inherent relationship to the underlying products it provides, which are computer and other electronic devices. Arbitrary or fanciful marks are inherently distinctive and are given a high degree of protection.
A suggestive mark is a mark that evokes or suggests a characteristic of the underlying good, thus, additional exercise of imagination is needed to associate the word with the underlying product. For example, “Coppertone” is suggestive of sun-tan lotion, but itself does not specifically describe the underlying product it sells. Like arbitrary or fanciful marks, suggestive marks are inherently distinctive and are given a high degree of protection.
A descriptive mark is a mark that directly describes, rather than suggests, a characteristic or quality of the underlying product, which can be directly perceived by the consuming public in a way. For example, “Holiday Inn,” describes some aspect of its underlying product or service as hotel rooms. Unlike arbitrary or suggestive marks, descriptive marks are not inherently distinctive and are protected only if they have acquired “secondary meaning.” Secondary meaning occurs when the consuming public primarily associates that mark with a particular identifiable producer, rather than the underlying product.
A generic mark is a mark that describes the general category to which the underlying product belongs. For example, the term “Apple” is a generic term for apples, one type of fruits. Generic marks are entitled to no protection under trademark law.
- Filing Process
Acquiring rights to a trademark can be acquired in one of two ways: (1) by being the first to use the mark in commerce; or (2) by being the first to register the mark with the PTO.
Use of a mark
This generally means the actual sale of a product to the public with the mark attached. This priority is limited, however, to the geographic area which the products or service are sold or located.
Register with the PTO
Unlike use of a mark in commerce, registration of a mark with the PTO gives the applicant the right to use the mark nationwide, even if the actual sales are limited to occur in only a limited area.
Copyright protects original artistic or literary aspect of work such as for example literary, musical and dramatic works, pantomimes, choreographic works, pictorial, graphic and sculptural works, sound recordings, motion pictures and other audio visual works, computer programs, compilations and database compilations, derivative works, architecture, songs, etc. Copyright gives its owner the exclusive right to make copies of creative work, usually for a limited time. Copyright only protects the copy of the work itself other than it being a protection of the idea contained within the work. Fair use is the right to use a small part of the copyrighted work under certain conditions without permission of the copyright owner. The term copyright is the life of the author, plus seventy years in the U.S.
- Source of Law
Copyright law in the U.S. is governed by federal statute, namely the Copyright Act of 1976. The Copyright Act prevents the unauthorized copying of a work of authorship. Copyrights can be registered in the Copyright Office in the Library of Congress, however, it is not mandatory to register a work with the Copyright Office in order to be copyrighted, nor is it necessary to include a copyright notice. Nevertheless, the Copyright Act does provide additional benefits to those who register with the Copyright Office.
Unlike a patent or trademark, the degree of creativity necessary to qualify for a copyright is very modest. Essentially speaking, any original work that involves some originality in selection or arrangement can be copyrighted.
- Filing Process
As what has been set above, although it is not necessary to register a work with the Copyright Office in order to be copyrighted, nor to include a copyright notice, copyright registration and the use of a copyright notice is recommended for obtaining extra protection.
Copyrights may be filed with the U.S. Copyright Office following certain procedures listed on its websites. Copyrights are more accessible to file than patents and trademarks.
The information you obtain at this site is not, nor is it intended to be legal advice. You should consult an attorney for advice regarding your individual situation. We invite you to contact us and welcome your calls, letters, and electronic mail. Contacting us does not create an attorney-client relationship. Please do not send any confidential information to us until such time as an attorney-client relationship has been established.
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