INTELLECTUAL PROPERTY is a legal term that refers to creations of the mind. Intellectual property law (also known as IP law ) is used to protect inventions, brands, original works of authorship, and valuable secret information. Four types of intellectual property are patents, trademarks, copyrights, and trade secrets. Intellectual property rights are given to inventors, businesses, and authors to protect inventions, brands, valuable information, and works of authorship.
To protect your idea so someone else doesn’t steal it, you need to secure the right types of intellectual property (i.e., patents, trademarks, copyrights, and trade secrets). Otherwise, you may lose ownership of your idea.[cmtoc_table_of_contents]
Intellectual property rights
The intellectual property rights include:
- Trade Secrets,
- Copyrights, and
What does each intellectual property right protect?
The table below illustrates each type of intellectual property and what they protect.
|Type of IP||Protects||Infringement||Registration Process||Term||Comparative Costs|
|PATENTS – Utility Patent||Functional Aspects||Make, Use, Offer, Sale, Import||Yes||20 years from filing date||Expensive|
|PATENTS – Design Patent||Ornamental Features||Make, Use, Offer, Sale, Import||Yes||15 years from grant date||Moderate|
|TRADEMARKS||Brands||Use in commerce||Optional||Indefinite as long as in use||Inexpensive|
|COPYRIGHTS||Works of Authorship||Copying, Derivative works, Performance, etc.||Optional||Life plus 70 years||Inexpensive|
You must select the appropriate type of intellectual property to effectively protect your idea or device. Below, I explain how to choose the right type of IP to best protect your invention.
Multiple types of IP rights can protect an invention
Most people don’t realize that they can protect their invention using multiple types of IP rights. Yes, all four types of intellectual property rights can protect one product.
Take, for example, a can of Coca-Cola®.
The brand, “Coca-Cola” is a trademark.
The formula for the actual soda is a trade secret, while copyright law protects the artwork on the bottle.
Both (1) a design patent and (2) a trademark (i.e., trade dress) can protect the shape of the Coca-Cola® bottle.
Likewise, you can use one or more of the different types of intellectual property to protect your product.
Be open-minded when you think through the types of intellectual property that might be applicable to protect your invention.
i. Trade Secret Protection
How to identify your trade secret?
To identify the trade secrets in your idea, you need to understand the definition of a trade secret. Under trade secret law, a “trade secret” is any valuable information that is not publicly known and the owner has taken “reasonable” steps to maintain the secrecy of the information. Information, such as business plans, customer lists, ideas related to your research and development cycle can be protected by trade secrets.
You don’t submit your trade secret for approval. No government body examines, approves, or registers your trade secret. To establish your information as a trade secret, you need to treat the information as a trade secret. For example, you allow only those with a need to know to have access to your trade secret information. Disclosures should be done only under a nondisclosure agreement. When you take steps to keep information secret, that information becomes your trade secret.
When someone misappropriates your trade secret, you have to prove in a court of law that the information qualifies as your trade secret. You have to show that the trade secret information was valuable because of its secrecy, and you must show the steps you took to keep it secret. Put simply, the owner of the trade secret information must prove that the confidential information fits the definition of a trade secret given above.
Trade secret protection lasts until the information is no longer valuable, the information is not secret, or the owner no longer takes reasonable steps to maintain its secrecy.
Trade secret law specifically protects the misappropriation of trade secret information. A wrongful or nefarious act must accompany the acquisition of the information for there to be a misappropriation of a trade secret. For example, if someone acting as an imposter steals trade secret information from its owner, the owner can sue the imposter for misappropriation of trade secrets. However, if the owner voluntarily gives trade secret information to an individual without limitation, no misappropriation of a trade secret has occurred, and the owner cannot sue.
The information may also lose its status as a trade secret. This loss of rights can occur if there has been a lack of reasonable effort to keep the information secret and/or the information is de facto no longer a secret.
When to protect your idea as a trade secret rather than securing a patent?
Most inventions start as trade secrets, which provide short-term protection before the marketing of your invention. Inventors are often initially cautious about revealing their inventions to others, even their patent attorneys, and this is a good instinct to have.
Trade secret protection is not appropriate for the long-term protection of any ideas which can be readily ascertained by reverse engineering or for inventions that can be independently created. If the information can be reverse engineered or independently created, then there is no nefarious act. If there is no nefarious act that accompanies the acquisition of the information, there is generally no misappropriation or wrongful appropriation of the trade secret information. Generally, trade secret protection is not optimal for mechanical or software products since both utilize a user interface that is available to the public and can, therefore, be reverse-engineered.
Trade secret protection may be optimal and sufficient for ideas and inventions that can be used secretly and, therefore, could not be reverse engineered (e.g., recipes).
ii. Trademark protection
Your brand needs to be protected because you want to protect the investment in time and money to build up your trademarks. You do not want to invest time and money only to find out later that you have to switch to a different trademark because someone else is already using your trademark. In this instance, you would be infringing on that person’s trademark and will have to switch to a different trademark.
Trademarks protect brands. The name of the product associated with the product or service is called the trademark. Under trademark law, a trademark is anything by which customers recognize a product or the source of a product. Typically, that would be the words or names associated with the product or service. When the brand or trademark is made up of words, we refer to this as a wordmark.
Other things can serve as your trademark. For example, sounds, colors, smells, and anything else that can bring the product and/or its owner to the minds of a consumer can serve as your trademark. The most common types of trademarks are wordmarks, logos, and slogans. If the product configuration (e.g., a Coca-Cola® bottle) or packaging (e.g., Tiffany’s blue packaging) are nonfunctional and recall the product’s maker (i.e., source of the product) for consumers, the configuration can be protected and registered as a trademark.
If you are starting out, protect the wordmark first (i.e., standard character mark). Then, you can seek trademark protection for the other forms of trademarks if you have the available funds to do so and if it makes sense in your overall marketing and business strategy.
To properly protect your trademark, you should conduct a search to find out if others are using a similar mark to yours. If not, then file a trademark application to get your trademark registered.
In the table, registration of a trademark was optional because you accrue trademark rights simply by using the mark in commerce. When you sell a product or perform service under a brand, trademark law gives you common law trademark rights that you can assert against others in your small geographical region where you used the mark. Hence, to obtain trademark rights, you do not need to register your trademark, but there are significant advantages for doing so, such as nationwide rights and the right to block others from securing a registered trademark with the United States Patent and Trademark Office.
iii. Copyright Protection
Most products have one or more aspects that can be protected by copyright law. For example, the images and words on the product packaging, the label, the product itself, and the webpage can be protected with copyright. These literary and artistic works are protectable under copyright law.
The advantages of copyright registration are that it is inexpensive to secure, and the law allows you to demand attorney fees from infringers. Often, your attorney fees are more costly than your damages due to someone copying your images and words without your authorization. Hence, being able to demand your attorney fees from the infringer is significant leverage that can be used to force infringers to settle early on in the legal process. Without a copyright registration, you would have to pay your attorney fees.
Under copyright laws, copyrights protect original works of authorship that are fixed in a “tangible medium of expression.” This definition means that the authored or creative work has been written down on a piece of paper, saved on an electronic storage device (e.g., hard drive or flash drive), or preserved in some other tangible format. Examples of copyrightable works include movies, videos, photos, books, diaries, articles, and software. Copyright does not protect ideas or useful items, which is the function of patents. Although a software program is a functional item, it can be protected by copyrights due to the creativity used in the selection, ordering, and arrangement of the various pieces of code in the software.
You automatically have a copyrighted product in your creative expressions at the time they are fixed in a tangible medium of expression. The copyright lasts for a very long time. For any work created on or after January 1, 1978, the term of copyright protection is the entirety of the author’s life plus seventy years after the author’s death. For works made for hire as well as anonymous and pseudonymous works, the duration of copyright is ninety-five years from publication or 120 years from creation, whichever is shorter.
Copyright does not need to be registered, but registration does have significant advantages. You can file your copyright application at www.copyright.gov. Importantly, if your copyright is registered, your attorney fees can be shifted to the infringer as discussed above, and you can ask the judge to award statutory damages. Statutory damages allow a court to impose liability on an infringer for up to 150,000 dollars, even if the damages are significantly less than that amount.
Related article: Gray market goods for copyrighted products no longer illegal
iv. Patent Protection
Two types of patents are:
- Utility Patent (Function) and
- Design Patent (Aesthetic).
Under U.S. patent laws, a utility patent protects a useful machine, process, manufacture, and composition of matter. A design patent protects the ornamentation (i.e., appearance, looks, shape, etc.) of a product.
The following discussion will help you to identify which type of patent (i.e., utility or design patent) is optimal to protect your invention. Similar to the discussion above about securing multiple types of IP rights for your product or invention, you might be able to obtain both a utility and a design patent to protect your invention.
How to determine which type of patent is better for your invention?
Utility and design patents are different. You need to know which one to obtain to protect your invention.
If, when you describe your invention to others, you describe the invention in terms of its function or utility, a utility patent application would be the best type of protection.
If the invention is described in terms of its aesthetics, a design patent application would be the best type of protection. The design patent protects the ornamentation, sculpture, pattern design, layout, and other aesthetic features of a product.
Sometimes, you will explain your product by using words that describe both function and aesthetics. In that case, you may be able to get both types of patents. However, if funds are limited, you may have to choose one of the two types of patents that are better suited for your invention. Seek competent patent counsel in this instance since a patent attorney would be best able to help you make the right decision.
Utility patent basics:
To get a utility patent, you need to apply for a patent with the USPTO. If you start to market your product without applying for the patent, then eventually (i.e., after one year), your idea will be dedicated to the public.
The term for a utility patent is generally 20 years from the filing of your nonprovisional patent application and starts immediately when the patent office issues your patent.
To learn more about the patent process, read these other articles:
- Steps in the patent process and costs
- 4 steps in the patent process
- Patent Process: Invention to Patent Granted (Comprehensive)
- Patent process timeline and major milestones
- Patent process, overall steps and procedures
- Overview of patent process
Design patent basics:
To get a design patent, you need to file a design patent application with the USPTO. If you start to market your product without applying for the registration, then eventually (i.e., after one year), your idea will be dedicated to the public.
The term for a design patent is 15 years from the grant date of your design patent.
Situations where you might want to seek a design patent:
Design patents are useful only in a few cases. Why? If the infringer changes the look of the product so that it does not look like what is shown in the design patent, then there is no design patent infringement. The following is a non-exhaustive list of situations where a design patent might be useful.
Situation 1: To block the importation of overseas manufacturer overruns
Design patents are useful for blocking the sale of counterfeits, the importation of overrun (i.e., excess production), or reject products that have been manufactured overseas for the inventor. These imports will be identical to the drawings in the design patent, and if imported into the United States, they may be blocked by Customs. If these products do enter into the United States, the importers, distributors, users, and manufacturers may be sued for infringement.
Situation 2: Products sold in sets
Design patents are also useful for products sold in sets (e.g., furniture) because buyers must purchase products that look like the original product to maintain the complete sets. By obtaining a patent on these types of products, you can block others from selling products that look like your product covered in the design patent.
Situation 3: Large market leaders
Design patents may also be useful for large manufacturers. For example, Apple, Inc. obtained several design patents for various parts of the iPhone, including the housing and the arrangement of the icons on the phone’s screen.
The author, James Yang, is a patent attorney in Orange County, California. Contact James to schedule a consultation and discuss your invention.