Broadly speaking, innovations and brands are also known as “intellectual property,” because they are a form of property that originates from a concept or other intellectual activity. Solving a problem in a new way (also known as an invention and/or a trade secret) is an example of an intellectual activity that can give rise to a property right. As another example, an intellectual property right can exist in a brand developed for marketing a product or a service.
So, what are the different forms of intellectual property, and how do you go about protecting your intellectual property? In general, the different types of intellectual property are: patents, trademarks, copyrights and trade secrets. You should be aware, however, that although there are multiple different types of intellectual property, a single product or service can embody more than one type of intellectual property.
For example, a product could include a patented feature, but could also be produced by a method that is trade secret. As another example, a product configuration could be a copyrighted work of art, but could also be the subject of a design patent. Overlaps between the different forms of intellectual property can get quite complex, so it is highly recommended that you seek the advice of a competent, experienced intellectual property expert before deciding how you will go about protecting your property.
At Smith IP Services, our focus is on obtaining patents and registered trademarks for Clients worldwide. We also provide associated services, such as, rendering patentability, infringement, freedom to operate (clearance) and validity opinions, and performing IP due diligence for mergers and acquisitions.
Following is a brief explanation of each of the general types of intellectual property (patents, trademarks, copyrights and trade secrets). Keep in mind, however, that each of these can be further subdivided, and different countries have corresponding different ways of categorizing intellectual property rights. The explanations below apply to the US, but similar types of intellectual property exist in most other countries.
In the US, patents can be obtained for utility, plant and design inventions. A patent owner can exclude others from making, using, selling or importing the patented invention.
Most common are utility patents, which are directed to the useful aspects of an invention (for example, how it works, its structure or, for a method, the steps of the method). A design patent is directed to ornamental (aesthetic) features of an article of manufacture. A plant patent is directed to a new asexually reproduced plant variety.
To obtain patent protection for an invention, a patent application is prepared and filed. Eventually, the patent application is examined by a patent examiner. After negotiation with the examiner and assuming all goes well, a patent is then granted, giving the owner the exclusive rights mentioned above. The entire process can take from many months to many years, depending on a variety of factors.
Generally speaking, a utility patent expires 20 years after its filing date, but certain circumstances can alter the patent’s expiration date. One of those circumstances is failure to pay maintenance fees after the patent is granted. If a maintenance fee is not paid, the patent can expire prior to its full twenty year term.
A trademark is a device (design, logo, brand, text, sound, color, etc.) that distinguishes a source of your product or service from those of your competitors. Trademarks for services are sometimes referred to as “service marks.” Trademarks (whether for products or services) are also sometimes referred to simply as “marks.”
In the US, as in other countries that base trademark protection on the English “common law” system, rights in a trademark are derived from use of the trademark on particular products, or in conjunction with particular services. Thus, when a trademark is registered, it is only registered for those particular products or services on which the trademark has actually been used. For this reason, special care is taken in listing the products or services when a trademark application is prepared.
An application can be filed if there is a mere intent to use the trademark on particular products or services, but registration of the trademark will not happen until there is actual use of the trademark on those particular products or services (unless the application is a Madrid Protocol application, which is beyond the scope of this explanation). After filing, the application is examined and assuming all goes well, the trademark is published for opposition by anyone who contends they may be harmed by registration of the trademark. Assuming no opposition is filed, the trademark then becomes registered.
A trademark registration must be renewed every ten years. As part of the renewal process, the trademark owner must show that the trademark is still being used on those products or services for which it was registered (or acceptable non-use must be shown, or the products or services must be canceled from the registration). A similar showing of trademark use must be accomplished between five and six years of the initial registration.
A copyright is the right to exclude others from copying an original work of authorship. The copying can be in the form of an actual physical copy, a performance of a work (such as a musical or dance performance), a re-broadcast, a derivative work or sampling, etc. Basically, if a second work includes all or a significant part of a prior work, or is otherwise derived from the prior work, that second work can infringe a copyright in the prior work. However, some forms of copying (such as, parody, news reporting, critical analysis, etc.) are excused under the doctrine of “fair use.”
Registration of a copyright is fairly straightforward. The US Copyright Office provides registration forms for physical or online filing, and the required fees are minimal. After filing, the copyright should typically become registered in due course.
Generally speaking, a copyright expires 50 years after the death of the author, although there are many caveats making it sometimes difficult to determine when a particular copyright expires. No maintenance fees or renewals are required to keep a copyright in force.
A trade secret is information that gives you a competitive edge, but is not publicly available. For example, a process for producing a product, a recipe for a food or drink, a customer list and a pricing structure can all be trade secrets. If a trade secret is improperly revealed to the public or a competitor, the trade secret owner’s recourse is to file a suit for misappropriation of the trade secret, or for violation of a confidentiality or non-disclosure agreement.
To protect a trade secret, the owner must treat it as if it is valuable secret information and take reasonable measures to prevent the secret from being revealed. For example, documents containing the trade secret should be marked “confidential” or “proprietary information,” and access to the documents should be closely controlled. When it is necessary to reveal the trade secret to other parties, those other parties should sign confidentiality or non-disclosure agreements.
Trade secrets and patents are in many ways mutually exclusive. For example, a particular product feature or method steps usually cannot be both a trade secret and protected by a patent (which requires public disclosure). However, it would be possible for one feature of a product to be protected by a patent, and for a different feature of the same product to be a trade secret.
As mentioned above, and because the issues involved are usually so complex, the determinations as to what types of intellectual property to protect, and how to go about obtaining protection for that intellectual property, should result from consultation with a reputable, experienced IP professional.