Thomas Legal Solutions

A BRIEF INTELLECTUAL PROPERTY PRIMER


There are four basic classes or "flavors" of intellectual property, each of which is treated very differently, having its own policy justifications, body of law, regulatory framework and procedures, etc.  The four basic intellectual property classes are:  (1) trademark, (2) patent, (3) copyright, and (4) trade secret.


TRADEMARK


Branding is of critical importance to all businesses, so I discuss trademarks and service marks (collectively “marks”) here first.  A mark is a word, phrase, image, etc., used to sell and to offer for sale goods and/or services in commerce.  The basic test for whether or not use/protection of a mark is possible or advisable is that two marks used for similar goods and/or services in the same market segment/channel must not be “confusingly similar” to one another.


While it is possible to obtain limited protection for marks under individual state filing systems, or automatically through common law rights based on actual usage, most businesses of any size should seek a federal registration for their mark(s).  The same is true for most web-based businesses which seek to serve a national market (i.e. not limited to a particular city or region). 


PATENT†


A utility patent is a government-granted right, for a limited time, to prevent others from using a product or process (or an improvement) which is (a) new, (b) useful, and (c) non-obvious to one with “ordinary skill in the art.”  Businesses with substantial research and development efforts should (in addition to implementing strong trade secret policies, discussed below) implement a policy to regularly – and at least at intervals of every few months – interview their research and engineering staff to learn whether they have either conceived of or “reduced to practice” any inventions satisfying the three-part test for patentability.


Where a promising invention has been conceived of, but not yet reduced to practice, management should strongly consider allocating resources sufficient promptly to reduce the invention to practice and seek a patent for it, to ensure maximum protection.  Likewise, engineers and researchers should be instructed to maintain complete, up-to-date laboratory/engineering notebooks, consecutively numbered, with continuous, dated entries, and no pages (or portions of pages) left blank.  Properly maintained lab/engineering notebooks can serve as strong evidence to establish rights and priority to an invention, in the event of any dispute.


COPYRIGHT


Copyright affects “works of authorship” (which may include works which are literary, musical (including lyrics), dramatic, choreographic (principally dance), pictorial/graphic/sculptural, cinematic, audiovisual/multimedia and architectural, as well as computer software, and “mask works” for integrated circuits).  For over two decades, the United States has been a signatory to the Berne Convention, which ensures that copyright protection attaches to a work of authorship automatically, from the moment of its creation, independent of any official filing, or even inclusion of a copyright notice.  However, authors should include a standard copyright notice on all works of authorship which are of more than ephemeral interest/importance, in the following form:


Copyright © [Year of first circulation/ publication] [Name(s) of author(s)]


(Note that audio recordings are technically not “copies” but rather “phonorecords” so that the “Copyright ©” designation should be replaced with “Phonorecord ” instead.)


Authors should also consider federal registration with the Copyright Office for certain critical works of authorship.  Federal registration is required before you will be allowed to sue for infringement and/or claim statutory damages, and there are certain other procedural advantages to registration as well.


TRADE SECRET†


A trade secret can be thought of as anything which has economic value, and which is not generally known to the public or (critically) one’s competitors.  As in the case of trademarks, virtually all businesses will have intellectual property which they should attempt to protect as trade secrets.  Even relatively non-“technical” traditional businesses will have trade secrets in the form of customer lists, supplier lists, business plans, internal market studies/projections and strategy documents.  Though virtually all states have passed some form of the Uniform Trade Secrets Act, trade secrets are still largely governed by and dependent on contract law.  That is to say, they rely for their protection on businesses implementing policies requiring that all employees and contractors sign airtight agreements regarding non-use, non-disclosure and assignment of inventions.  It is important to have these in place early on, before any actual work is done or intellectual property created, whenever possible. 


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† NOTE REGARDING TENSION BETWEEN PATENTS AND TRADE SECRETS – Certain inventions may be subject to protection either through patent registration or as trade secrets.  These two areas of law are quite distinct, and are in many ways diametric opposites of one another, in that trade secret protection requires maintaining strict secrecy for an invention, while applying for a patent generally requires “laying open” the invention to the public, i.e. publication, and this is often (though not universally) true even if the patent application is ultimately rejected.  Please note that while patents can be very valuable, the decision to file for a patent, rather than continue to maintain an invention as a trade secret, should first be explored with competent counsel.


 

Copyright © 2011 Terry L. Thomas