Business Lawyers in Columbus, Ohio
By Drew Stevens - July 27, 2020 - Technology & IP
Whether you are looking to hire contract lawyers regarding intellectual property concerns or you are seeking legal counsel for an invention or an idea , it is important to understand the different types of intellectual property.
Depending on your business or product, certain types of intellectual property may or may not apply to your intellectual property protection strategy. For example, if you are very concerned with your branding and how to protect a certain slogan, patents are not going to do you a whole lot of good.
Here, we will cover the four types of intellectual property and some of the key differences between patents, copyrights, trademarks, and trade secrets.
Perhaps the best known of the 4 types of intellectual property, patents are a product of United States federal law. A patent grants the patent holder the right to exclude competitors in the United States from using or selling the invention with the patent holder’s consent.
Patents are issued by the United State Patent and Trademark Office, and generally, a new patent has a term of 20 years. Patent come in three types: design patents, utility patents, and plant patents.
The most popular types of patents are design patents and utility patents. A design patent offers protection for the way a something looks, such as the design of a particular product like a cellphone. A utility patent offers protection for the way something works and is used, such as the way a rocket is built and is launched.
Generally speaking, a design patent can be much more cost effective to pursue than a utility patent. In terms of fees alone, utility patents include maintenance fees, while there are no required maintenance fees with design patents. Cost is also driven, in part, by the overall difference in time involved. Utility patents, start to finish, can take 1.5x to 2x as long to issue, as compared to a design patent. Further, on average, the likelihood of dealing with onerous office actions are much higher with utility patents.
The terms are different for utility and design patents. With a design patent, the owner gets 15 years. The utility patent features 20 years.
Examples of utility patents include the patents for Nintendo’s Game Boy and the super soaker. Examples of design patents include the Coca-Cola bottle, Apple’s iPhone, and the ever fashionable Croc shoe.
Finally, plant patents are exactly what they sound like. These are patents that are issued to inventors who discover or invent a distinct and new variety of a plant. The term of a plant patent is for 20 years, and during the term, the plant patent holder has the right to exclude others from asexually reproducing the plant or selling the plant in the United States. For the rose bush fans out there, the pink coral meidiland is an example of a plant patent.
Patents and Territory Concerns
In the age of globalization that most businesses find themselves competing in, it is critically important to understand that patent law is a function of the laws of individual countries. In other words, strictly speaking, there is no such thing as a world-wide patent. Just because you are able to register a patent in the United States does not necessarily mean you are able to exclude competitors in another country from using your invention.
If you have international concerns with your potential patent, consider filing an international patent application. In countries that recognize the Patent Cooperation Treaty, an international patent application can function as one application that is treated as an application in multiple countries simultaneously.
Holding a copyright for a creative work means you are granted specific rights as to the use of your copyrighted materials. When you hold a copyright, you typically have the exclusive right to reproduce the creative work, to prepare derivative works based upon the work, to distribute copies of your work, to perform the work, and to publically display your work. Some of the major copyright categories include:
-pantomimes and choreographic works
-pictorial, graphic, and sculptural works
The rights associated your copyright, and copyright law in general, stems primarily from the Copyright Act of 1976. Although certain rights arise automatically upon the creation of you work, The Copyright Act, and registration of your copyright with the United States Copyright Office, stipulate a number of rights and abilities for the copyright holder.
In terms of the length of a copyright, The Copyright Act stipulates that a copyright lasts for the entire life of the author, plus an additional 70 years (assuming the work was created in 1978 or later).
How long does it take to register a copyright
As compared to trademarks (months) and patents (months to years), a copyright is the fastest intellectual property that can be registered. Generally, the USCO advises that the average processing time for a copyright is 3.2 months. The USCO also issues statistics on processing times that distinguish between claims that do and do not require correspondence. On average, when a claim does not require correspondence, the USCO process a copyright in 2.2 months. When a claim does include correspondence, the average processing time period is 4.4 months.
What does it take to copyright a work?
If you are thinking about copyrighting a work, keep in mind the three primary requirements: (1) the work must be original; (2) the work must be fixed in a tangible form of expression; and (3) your work must be a work of authorship.
In terms of whether the work is original, this requirement differs from (and can be confused with) the novelty requirement of patents. The primary thing to remember here is that a work is original if it is an independent product of the author. In conjunction with this, unlike trademark law (which can be first come, first serve in terms of registration ) to be original and independently created does not mean you have to be first.
For example, Fred the Photographer takes a photo of the Empire State Building in 2015. Five years later, Nancy the Videographer decides to dabble in photography and also takes a photo of the Empire State Building, in 2020. They both will hold a copyright for their photos of the Empire State Building.
Examples of Major Copyright Categories
Perhaps one of the best known categories of copyrights is for literary works. Literary works include poetry, works of non-fiction and fiction, catalogs, written speeches, reports, computer programs, and certain types of websites.
Other popular categories include musical works and dramatic works. Dramatic works include a theatrical performance or play, whether performed via movie, stage, television, or radio. With musical works, keep in mind that the lyrics to a song are protected as a musical work, not as a literary work.
Trademark law and procedure primary comes from the Lanham Act. The Lanham Act specifies that trademarks, service marks, collective marks, and certifications marks are all included within the definition of a “mark”.
A trademark is a name, slogan, or word that is used by a person or a business to identify and distinguish certain goods offered to the public as originating from such person or business. A service mark is used to distinguish the services of a person/business. For an example of a trademark for goods, the trademark for “Hasbro” is used to distinguish the company’s goods of board games. An example of a service mark would be for “Accenture”, used to distinguish the company’s myriad business services.
Certification marks are typically used to indicate certain aspects associated with the production or origin of certain goods or services, such as to certify a specific origin, indicate certain characteristics, or that the goods/services that were produced by certain people.
As between filing for a trademark/service mark verses a certification mark, a certification mark is much more time intensive. One of the core requirements for registration of a certification mark is that you must set up and specify the framework that governs the use of the certification mark. The rules must include, among other factors, what the requirements are for goods/services to use the certification mark, the process for how to determine whether the goods/services have met such requirements, and the procedures for resolving disputes as to whether certain goods/services meet the foregoing requirements.
Examples of certification marks include “SWISS” to distinguish chocolate and chocolate products that originate from the geographic region of Switzerland and the “K” symbol to distinguish certain food products that that meet the requirements of the Mosaic Code, for Orthodox Jewish use.
A collective mark is used by a collective membership organization, such as a professional society, fraternity, or union. An example of a collective mark is for “CPA” to indicate membership in the Society of Certified Public Accountants.
Common Law Trademark Rights vs Registered Trademarks
A frequent question that arises with trademark law is what happens when you do not register your trademark with the USPTO?
Under United States law, when you do not register a mark with the USPTO, but you hold the mark out to the public as a trademark owned by you, you have what is referred to as common law trademark rights to your mark.
Often times, trademark issues can come down to first to register with the USPTO and first use in commerce. In very narrow circumstances, a common law trademark may trump that of a registered trademark, if the common law trademark can be proved to be used in commerce in a certain geographic area prior to the registered mark. That said, the common law trademark may only be used to preclude usage of the registered mark in the specific geographic area in which the common law trademark was first established.
Benefits of Registering a Trademark with the USPTO
If you have a mark that you use for your goods or services, you may want to strongly consider registering the trademark with the USPTO, as there are several benefits for such registration. Registering with the USPTO effectively gives nationwide notice of the trademark and ownership, thereby cutting down on potential trademark infringement in the future. Other benefits include being able to bring federal lawsuits, incontestability status after five years, being able to pursue lost profits, triple damages, and attorney fees, and of course, using the ® symbol.
Trademark application filing fees, as of the date of the publication, run between $225 and $400, depending on the type of application. Most lawyers will recommend the TEAS Plus or TEAS RF application. There is not tax on the application fees.
Say that you’re a business that has certain information that you strongly prefer to keep secret, as such information offers some sort of competitive advantage. Such information could quality for protection as a trade secret.
A trade secret is any kind of information that is used by a business that is valuable and secret to the point that it affords certain economic advantage over competitors. At a high level, for something to be classified as a trade secret and qualify for trade secret protection, the information must be valuable, must not be known to the public, and must be the subject of reasonable efforts to protect its secrecy.
Trade secrets can include formulas, certain business processes and methodology, customer lists, pricing lists, confidential documents, recipes, financial information, patterns, programs, devices, and techniques. Famous examples of trade secrets include the Kentucky Fried Chicken recipe and the formula for Coca Cola.
Enforcing Trade Secrets
Trade secret rights are usually enforced through litigation. One of the most important steps to take to protecting your trade secrets is to address them in your contracts. Depending on your business and the scope of your trade secrets, this might include your contracts with your service providers, vendors, employees, and independent contractors. Having a good contract that includes and captures your trade secret concerns means that, in addition to misappropriation of trade secrets claims, you can also bring claims for breach of contract.
How Different Types of IP Can Work Together
Although trademarks, patents, copyrights, and trade secrets are all different forms of intellectual property, they can all work in conjunction with one another to protect a product or a service. Any good IP lawyer will advise you that multiple intellectual property protections may be a sound strategy.
For example, consider the mobile phone. The brand would be protected by a trademark. Utility patents might cover the semiconductor circuits or the power control. Design patents would cover the way the phone looks. A copyright might be registered for the source code for the phone’s software. Finally, certain ways of assembling the phone or arranging its functionality may be covered by a trade secret.
Columbus Intellectual Property Lawyers
Our firm has years of experience in advising and counseling on a variety of intellectual property issues and scenarios. Contact us today if you feel we can be of further assistance.