Business Lawyers in Columbus, Ohio
By Drew Stevens - February 28, 2020 - Technology & IP
property law consists of a framework of federal laws and state laws. For owners
of intellectual property, it can be confusing at times as to the scope of what intellectual
property law protects.
intellectual property law consists of four major areas – trademarks, copyrights, patents, and trade
secrets. Here, we’ll cover these four areas, as well as a fifth major source of
intellectual property ownership – transactional law.
Intellectual Property Law in General
property owners, knowing what federal law protects and what state laws protects
can greatly aid in developing an intellectual property strategy. At times, federal
law can offer a higher, national form of protection while state law can be more
pertinent in intellectual property disputes or for intellectual property
protected at the state level.
Federal Intellectual Property Law
property laws specifically protect the registration of patents, copyrights, and
trademarks, as well as protect trade secrets. Patents and trademarks can be
registered with the United States Patent and Trademark Office, and the USPTO,
through the Patent Trial and Appeal Board and Trademark Trial Appeal Board,
also handle certain patent and trademark disputes. Copyrights are registered
with the United States Copyright Office.
State Laws Protecting Intellectual Property
owners can also look to state law. Generally, at the state level, intellectual
property protection includes trademarks and trade secrets. Each state can
approach both of these areas of intellectual property law in slightly different
ways. For example, in Ohio, trademarks are filed with the Ohio Secretary of
State and feature a much faster process than filing with the USPTO, as touched
on more below. Further, with trade secrets in Ohio, trade secret law comes from
both common and statutory law.
If you are the owner
of intellectual property that consists of creative works such as literary,
dramatic, or musical works (think movies, music, software, photography,
writing, or architecture), you need to consider a copyright. Copyright
intellectual property laws protect “original works of authorship” which are
“fixed in a tangible medium of expression.”
The owner of a
copyright, per the Copyright Act of 1976, has the exclusive right to control
the use of the copyrighted work. This extends to the major uses of a copyright
such as the distribution, performance, reproduction, and display of the work. Translated
to plain English, if you create a movie, someone else generally cannot go and
display that movie for others.
A common question
for owners of a copyright is when copyright protection actually kicks in.
Contrary to the belief of some, you do not actually have to register with the
United States Copyright Office for copyright protection to start – copyright
protection in fact attaches the minute your work is fixed in a tangible medium.
This said, there can
be incredibly powerful benefits to registering your copyright with the USCO. If
you were to bring a copyright infringement lawsuit for someone stealing or
using your copyrighted work, USCO registration can establish prima facie
evidence of the ownership of your copyright. Further, in the event you prevail
with your copyright lawsuit, copyright registration may make you eligible for
statutory damages and attorney fees.
exception to keep in mind for copyrights is the “work made for hire” doctrine.
Basically, if you are an employee of a company, and you create a copyrighted
work as an employee or within the scope of your employment, the company is the
owner of that intellectual property. Even if you are an independent contractor,
the work made for hire doctrine may still apply, depending on the terms of your
contract, and the company paying you may own the copyright.
If you are an intellectual
property owner who is concerned with protecting your brand name, your logo, or
your slogan, you should considering filing a trademark under federal or state
law. When researching whether to file a trademark, confusion can arise as to
whether federal or state laws protect owners of intellectual property and
trademarks. The short answer is that both may apply.
are filed with the United States Patent and Trademark Office and are a product
of United States federal law. A federal trademark can help protect ownership of
a number of different facets of your business, such as a name, slogan, phrase,
or logo. You may even be able to trademark things like colors, sounds, and
Federal trademark laws
can protect marks that you are currently using in commerce and marks that you
may want to use in the future. If you are currently holding your mark out to
the general public, you’ll likely want to file a 1(a) application. In order to
successfully complete a 1(a) application and have your trademark protected,
you’ll need to submit examples to the USPTO of how you are currently using your
In terms of laws
protecting intellectual property and trademarks that you may pursue in the
future, you may want to consider the 1(b) application. With the 1(b)
application, you are filing for a trademark that you are not currently using at
the time of application, but you may use in the future. Given that laws
protecting trademarks can sometimes boil down to “first come, first serve”, a
1(b) application can be critical to reserving future rights.
Once a 1(b)
application is approved by the USPTO, you have six months to demonstrate use of
the trademark. However, keep in mind that you can request a limited number of
extensions for additional six-month periods.
Another key point to
understand in protecting intellectual property and trademarks is the class
system for filing trademarks. When you file a trademark, try and think of
taking all possible services and products that exist and dividing them into
forty-five different classes. Depending on a business owner’s services or
products, you may want to file in a particular class or even multiple classes.
For example, say you
run a technology company that offers certain consulting services, including an
app. To file a trademark for the app, you would file in international class
009. For the overall technology services offered by your company, you may file
in class 042. And finally, for the consulting services aspect, you may also
file in international class 035.
State Law and Trademarks
Trademarks can also
be filed at the state level. One of the more important distinctions between the
state trademark and the federal trademark is the geographic scope. With a
federal trademark, the scope of the trademark protection extends across the
national level. With a state trademark, you are just protected for the particular
state in which you file a trademark.
In contrast to the
federal trademark application, a state trademark application can be approved in
a fraction of the amount of time it takes for registration of a federal
trademark, depending on your state’s laws. In Ohio for example, a state
trademark can be approved in a matter of weeks.
applications can also be much simpler than their federal counterparts. A number
of states, including Ohio, feature applications that are not more than a few
pages. In Ohio, Ohio Secretary of State Form 555 is three pages and only asks
for basic information regarding the trademark and the owner of the trademark.
The filing fee for a State of Ohio trademark is also a fraction of the federal
filing fee. If you are concerned about your protected intellectual property at
a state level, a state trademark can be a cost effective and efficient
A cornerstone of ownership
of intellectual property, patents can be a tremendous asset for any growing
company. When you have a patent, you have the legal right to exclude
competitors from making, selling, using, or importing your invention for a
specified period. Holding a patent can equate to a certain competitive
advantages or ability to monetize your invention, including in the form of
licensing your patent to others.
To be able to patent
your invention, it must be novel, nonobvious, and useful. To meet the novel
requirement, your invention has to be substantially different from anything in
the public knowledge. This generally includes anything available on the open
market or anything that has been previously patented.
To be considered
nonobvious, your invention must be viewed as surprising or unexpected from the
perspective of someone who is skilled in the particular field of your
invention. This can be a particularly confusing requirement, and whether your patent is nonobvious can
come down to an interpretation by your assigned patent examiner.
A patent protects
owners whose inventions are useful. To be useful, the invention must provide
some practical benefit and be operable. In other words, at least in theory, your
invention must work.
Types of Patents
Federal law protects
different types of patents in different ways. The two main types of patents –
utility patents and design patents – have different characteristics and periods
generally protect the way your invention functions and how it is used. Utility
patents are available when you create a process, a machine, a manufacture, a composition
of matter, or an improvement of an existing idea. Utility patents generally are
good for up to 20 years, starting on the date when you first file the patent
Design patents help
protect the way an invention looks. Design patents are primarily mean to
address ornamental, non-functional features of your invention. Federal law
protecting design patents stipulates that design patents are good for 14 years,
starting from the date the design patent is first granted.
A common question we
field is whether federal or state laws protect trade secrets. The answer is
both, but only really as of fairly recently. Up until a few years ago, state
law was the primary forum for the protection of trade secrets. However, the
Defend Trade Secrets Act, passed in 2016, created a definition for trade
secrets at the federal level and a right of action for trade secret
Federal Laws Protect Trade Secrets
Under the DTSA, the
definition of a trade secret is quite broad. This includes “all forms and types
of financial, business, scientific, technical, economic, or engineering
information, including patterns, plans, compilations, program devices,
formulas, designs, prototypes, methods, techniques, processes, procedures,
programs, or codes, whether tangible or intangible, and whether or how stored,
compiled, or memorialized physically, electronically, graphically,
photographically, or in writing if (A) the owner thereof has taken reasonable
measures to keep such information secret; and (B) the information derives
independent economic value, actual or potential, from not being generally known
to, and not being readily ascertainable through proper means by, another person
who can obtain economic value from the disclosure or use of the information.”
The DTSA also goes
into detail regarding what constitutes misappropriation. One case of misappropriation
occurs when there is an acquisition of a trade secret where the acquisition is
known (or there is reason to know) to have occurred by improper means.
Another example of
misappropriation is where disclosure or use of a trade secret occurs without
express or imposed consent by a person who (i) used improper methods to acquire
knowledge of the trade secret; (ii) acquired the trade secret where the person
was required to maintain confidentially of the trade secret or limit the use of
the trade secret; or (iii) derived the trade secret from or through a third
person who was required to maintain confidentially of the trade secret or limit
the use of the trade secret.
State Laws Protect Ownership of Trade Secrets
At the state level,
most states have adopted or have implemented modified versions of the Uniform
Trade Secrets Act. As the name suggests, one of the main goals of the UTSA was
to establish fair and uniform standards and definitions of trade secrets and
protection of trade secrets.
Ohio is one of the
states that has adopted the UTSA. The definition of a trade secret is codified
in Ohio Revised Code section 1333. Ohio law defines a trade secret in a similar
manner as what is found in the DTSA in that the trade secret must derive
economic value from not being generally known and is the subject of efforts to maintain
Further guidance on
trade secrets has come from Ohio case law, most notably from the Ohio Supreme
Court. Ohio laws state a six-factor test in determining whether certain
information is a trade secret. The six factors include:
1. The extent to
which the information in question is known outside the business.
2. The extent to
which the information is known to those inside the business.
3. The precautions
taken by the owner of the trade secret to guard the secrecy of the information.
4. The savings
effected and the value to the holder in having the information as against
5. The amount of
effort or money expended in obtaining and developing the information.
6. The amount of time
and expense it would take for others to acquire and duplicate the information.
Transactional Intellectual Property
By now, hopefully
you have gathered that intellectual property protects a variety of components
of a company’s IP portfolio like patents, copyrights, trademarks, and trade
For some businesses
though, protecting the company’s intellectual property might occur most often
through the contracts that it enters into with a variety of groups, such as
vendors, suppliers, partners, and employees. Here, one of the most powerful
forms of intellectual property protections occurs with well drafted provisions
that touch on ownership of intellectual property, scope of confidentiality and
proprietary information, and licensing.
Intellectual Property Rights and Software
To better illustrate
this, let’s examine two versions of a software development agreement. With a software
development agreement that is favorable for the developer, intellectual
property rights may be defined very broadly. Typically, this would include
something like all registered and unregistered rights, including but not
limited to all patents, copyrights, trademarks, trade secrets, and other
intellectual property rights in any jurisdiction in the world.
We would then take
that broad definition of intellectual property rights and combine that with
another broad definition, this time for what constitutes work product. The
definition for work product would include the actual software itself, the
ultimate deliverables, and any documentation related to the work product.
developer-friendly software development agreement then basically states that
all right, title, and interest to the work product and intellectual property is
owned by the developer. The agreement then licenses
the work product, deliverables, and intellectual property rights to the
customer, but the customer does not actually own any of the above.
The end result is
that all of the intellectual property rights stay with the developer, and this
gives the developer an incredible amount of leverage should the customer breach
the software development agreement, by for example, failing to pay the
Now, contrast this
with a customer-friendly version of the software development agreement. The
customer version would also want to have the broad definitions contemplated
above for intellectual property rights and work product. However, this time,
the agreement states that all of the work product and intellectual property
rights are owned by the customer.
Such ownership would
include having the agreement stating that all work product and associated
intellectual property rights are irrevocably, and in perpetuity,
transferred to the customer. This would also include classifying the work
product as “work made for hire” under the Copyright Act.
The end result this
time around is that, generally, regardless of agreement termination or
developer issues, the work product and intellectual property rights are owned
by the customer. This would likely enable the customer to take the software to
another developer for work in the event the original developer is failing to
meet its obligations and milestones.
Intellectual Property Law and Employment
illustration of transactional intellectual property protection lies in a
well-drafted employment agreement. A good employment agreement will go into
great detail regarding what intellectual property is owned by the employer. At
minimum, the agreement should state that all inventions, techniques,
modifications, designs, and works that are created, conceived, or developed by
the employee are property of the employer when:
1. any of the above
were developed while the employee was performing his or her duties for the
2. any of the above
were developed using any of the employer’s resources, such as office space,
technology, equipment, or facilities; or
3. any of the above
is based upon any of employer’s confidential or proprietary information.
Having a proper
definition for confidential and proprietary information is also crucial. At
minimum, this definition should include operations information, any computer
code, trade secrets, pricing, customer lists, products and services specifications,
and all financial information.
employment agreement should make clear that when the employee leaves the
company, the employee is contractually obligated to return all company
property. This includes things like all company documentation and records,
laptops, and hard drives.
Protect Intellectual Property at your Company
Working to protect
your intellectual property can entail addressing multiple aspects of your business,
including filing for traditional intellectual property registrations and rights
and improving your contracts. Contact one of our Columbus intellectual property
lawyers in the event you feel that your company’s approach to intellectual
property needs assistance.