Intellectual property refers to intangible creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce. Generally, all companies own some form of intellectual property. Intellectual property protection is critical to fostering innovation.
Your intellectual property is a valuable intangible asset that should be protected to enhance your competitive advantage in the marketplace. Without protection of ideas, businesses and individuals would not reap the full benefits of their inventions. Protecting your intellectual property may seem like a difficult challenge, but it doesn’t have to be. This guide strives to inform U.S. small and medium-sized enterprises about protecting their intellectual property rights within the United States (U.S.) territory.
There are many different forms of intellectual property protection, but the vast majority fall into four categories: patents, trademarks, and copyrights and trade secrets. Patents allow their owner the right to determine who can make, use, or sell an invention. Trademarks serve as a method to communicate the source or origin of a product or service to consumers. Copyrights grant their owner with the right to determine who can reproduce or distribute a work, publicly perform and display a work, or prepare derivative works. Trade secrets protect confidential business information that is not common public knowledge.
Each category of intellectual property has different attributes and criteria for protection, so it is important to seek legal counsel when pursuing IP protections.
Within the patent category of intellectual property are 3 different types of patents: utility, design, and plant. Notably, a single discovery or invention can have multiple patents associated to it.
- Utility Patent: A utility patent protects a new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. Utility patents essentially protect inventions.
- Industrial Design Patent: In the U.S., protection for industrial designs, essentially the aesthetics of a product, are provided under the patent system. For example, NIKE can have a design patent on the stitching design of a specific shoe. To clarify, industrial design patents only protect a discovery or invention’s physical features, not a product’s functionality.
- Plant Patent: Plant patents can be granted to discovered or invented, new and distinct plant species that are asexually reproduced. The USPTO limits plant patent protections to a plant organism that expresses a set of characteristics through a genotype that can be replicated through asexual reproduction but cannot otherwise be made or manufactured. Having a plant patent affords owners the right to prohibit others from asexually reproducing the plant organism. Furthermore, owners have the right to regulate commerce involving the plants in the United States.
The public can find more clarification on the types of patent and their respective protections in the U.S. and on international filings under the Patent Cooperation Treaty (PCT) (covering patents), and Hague Agreement (covering designs).
To obtain a patent in the U.S., the inventor must file a patent application with the United States Patent and Trademark Office (USPTO). The patent application process includes (1) a written document consisting of a description and claims, (2) drawings when necessary, (3) an oath or declaration, and (4) filing, search, and examination fees. Once granted, patent protection lasts 20 years from the date of filing. Furthermore, maintenance fees are required at 3.5, 7.5, and 11.5 years from the date the patent was granted.
A trademark or service mark can come in the form of a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods or services of one party from those of others. Trademarks can build and/or protect brand recognition. Currently, common law rights on a mark can be established based solely through the use of the mark within U.S. commerce. However, obtaining a federal trademark registration for a mark used in commerce provides significant advantages. Those pursuing this type of IP can file a trademark application online with the USPTO.
The longevity of a U.S. trademark is contingent upon the trademark’s continual usage in commerce and defense against infringement. Furthermore, trademark’s must remain distinct and serve its purpose of notifying the origin (or brand) of a good. An example of a trademark that became genericized and no longer distinct is elevator, which the Otis Elevator Company lost because the mark became synonymous with the general class of products. To keep a registration alive, the registration owner must also file required maintenance documents at regular intervals. USPTO fee schedules may be found here.
Copyright in the U.S. concerns and protects “original works of authorship” from the time the works are created in a tangible form. An application for copyright registration can be submitted online to the U.S. Copyright Office. Although registration is not required for protection, it offers many benefits, including a public record of the copyright claim, evidence of the validity of the copyright when registration is made before or within five years of publication, and the possible recovery of statutory damages and attorney’s fees and costs in successful copyright infringement litigation for timely filed applications.
To register a work, you must submit a completed application form, the applicable filing fee, and a nonreturnable copy or copies of the work to be registered.
However, copyrighted works may be used by others in the U.S. if it falls under fair use. The fair use legal doctrine was created to promote expression and allow for unlicensed use of copyrighted work in specific circumstances. Some examples of fair use scenarios include criticism, news reporting, teaching, and scholarship. For more information on what situations are considered fair use, visit the U.S. copyright website.
In general, the term of a copyright is the life of the author plus 70 years after the author’s death (or last surviving author’s death if it is a joint work). For works made for hire and anonymous or pseudonymous works, the duration of copyright is 95 years from publication or 120 years from creation, whichever is shorter. (Works created before January 1, 1978, have special rules of duration). Filing fee schedules for copyright registration are available on the U.S. Copyright Office website.
Trade secrets concern a type of intellectual property that typically come in the form of processes, formulas, patterns, or methods that have the potential to create economic advantages for its owners over competitors. Trade secrets are not typically known, and their information cannot be acquired by the general public.
Trade secrets are protected in the U.S. as long as the information remains a secret, has commercial value, and reasonable steps are taken to protect the information. What is considered a “reasonable effort” to protect a trade secret may vary depending on the nature of the information you wish to protect. Some notable examples of trade secrets are the Kentucky Fried Chicken seasoning recipe and the formula for Coca Cola. Although people know about the existence of these trade secrets, they remain a trade secret because the general public does not know the contents of the secret. For businesses, implementing an effective trade secret policy for protection maintenance is advisable.
RECORDATION WITH CUSTOMS
A federally registered U.S. trademark or copyright can be recorded online through an electronic application with the U.S. Customs and Border Protection (CBP). Federal documentation may be helpful in detecting infringing imports that could get through into more than 300 U.S. ports. Recordation fee schedules, along with instructions for filing electronically, are available at the CBP website.
ENFORCEMENT OF IP RIGHTS
U.S. law provides for civil, criminal, and border enforcement of IP rights. The USPTO and partner agencies provide online tools and information for how to protect and enforce intellectual property rights, but rights holders should seek legal advice from a licensed attorney.
In the U.S., the IP rights-holder is responsible for civil enforcement of its rights. It can also report IP theft online through the National Intellectual Property Rights Coordination Center. The reporting form can be found here, along with more information.
Electronic applications, fee schedules, applicable regulations, and additional training and education are assessable through the U.S. government at these sites:
Wang IP Law Group, P.C. is a Los Angeles based full service legal firm that specializes in intellectual property law (patent, trademark, copyright, and licensing agreement), business and commercial litigation, and a wide range of other legal matters including immigration, real estate, and landlord/tenant cases. Our multilingual attorneys represent clients from all over California and internationally from China, Taiwan, Hong Kong, Japan, and Israel.
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