16.Intellectual Property

COURSE POINTS

• There are 4 main Intellectual Property (IP) categories: Patents, Trademarks, Copyrights and Trade Secrets.
• Patents allow for monopoly practice of an idea in return for disclosing it for the public good.
• Trademarks help create your brand and identity. They can be a picture, graphic or set of words or phrases
• A copyright protects authors of “original works of authorship” by making it illegal for someone else to copy and use it as their own.
• Trade Secrets are important information that companies keep secret to have a competitive advantage.
• US patents have a duration of 20 years from the first filing.
• US Trademarks can be registered or not and have an unlimited duration as long as properly used and maintained
• US Copyrights are valid from the moment of creation to 70 years after the authors death (if created after Jan 1, 1978)

DISCUSSION

Intellectual Property (IP) has value. Every checklist from company evaluations to investment due diligence has at least a couple of bullet points on your companies IP. For the purposes of this post, I will focus on the US since that’s what I know and deal with daily. As you have guested, from reading my other posts, I am not a lawyer but I deal with IP pretty much everyday. So, I have some experience sorting through the complex morass of legal jargon and I have filed ten patents and two trademarks. If you have questions or don’t understand something, drop me a line and/or consult a legal professional.

PATENTS

From a filing and prosecution perspective , patents are the most complex form of IP you will have to deal with. The reason is that you, as the inventor, have to explain your invention so that someone having ordinary skill in the art can reproduce it. Another burden is that the invention has to original, which means that there is no other prior art that explains what you want to patent. There is also a burden of obviousness as well as breaking the known laws of physics. In the US, you have to be the first to invent something not the first to file, which means if there is a dispute about an invention date, then you need documentation that proves when you invented something.

The United States Patent and Trademark Office (USPTO) also has clear guidelines as to what must be contained in a patent and how specific sections need to be written. See Exploring Further for the link.

PATENTABLE SUBJECT MATTER

Under 35 U.S.C. § 101, the categories for patentable subject matter are broadly defined as any process, machine, manufacture, or composition of matter, or improvement thereof. The supreme court interrupted this to mean that subject matter for a patent was to”include anything under the sun that is made by man.” This broad statement does have limitations. According to the court, the laws of nature, physical phenomena, and abstract ideas are not patentable. Aside from that, pretty much anything else is (Taken from Cornel Law reference below).

TYPES OF PATENTS

The two most common types of patents are apparatus or method patents. There are various others, such as chemical structures but I won’t get into those since for the majority of us, apparatus and/or method will cover it.

• Apparatus: An apparatus or system is a machine, set of machines that perform a useful, novel function. They can be anything from a better toaster, to a satellite or a nuclear reactor. Think of an apparatus as something physical.
• Method: A method patent details a process to create or do something useful. The trick with these is that the method order and the method are protected. This means that if someone deviants from the method order and can still make it work, then you are out of luck.

Sometimes, apparatus (or system) and methods are combined in one patent to broadly protect the combined use.

PARTS OF A PATENT

Patents have several import parts. Each part serves a specific purpose and must adhere to specific criteria. These parts include:

1. Abstract: A short summary of what the patent is about. It’s really not relevant to the legal definition of what the patent does but is helpful for a general idea.
2. Specification: Contains the background and preferred embodiment of the invention so that someone with ordinary skills in the art can recreate the invention. The specification is a critical component but secondary to the claims.
3. Drawings: Along with the specification, the drawings detail the preferred embodiment and any other relevant information that will aid in the reproduction of the invention.
4. Claims: Claims are the most important part of a patent. Claims are what is being protected and come in two flavors: independent and dependent. An independent claim is said to stand on it’s own, which means that, along with the specification, the claim describes either an apparatus or a method that can be created. A dependent claim depends on an independent claim to support the creation of the combined apparatus or method.

Patents take a while to prosecute and create. In some cases, inventors will file a provisional patent application that officially records at filing date. A provisional patent application does not require the same level of detail nor format as a full patent application. The advantage is that you can file early while working on the full application. A provisional patent application must be converted into a full patent application within one year.

TRADEMARKS

Trademarks are words, symbols, or phrases that are used to identify a particular manufacturer or seller’s products for the purposes of distinguishing them from other products. When the word, symbol or phase is used to distinguish a service, it’s called a service mark. Some well known trademarks include: Coca-Cola, Nike, Pepsi, NFL, etc. The whole point of trademarks is so that a company or person can build and maintain an identity so that consumers can easily identify different products and services. Trademarks can be registered with the USPTO or not.

CRITERIA FOR A TRADEMARK

Since the whole purpose of trademarks is to identify different products and services, they need to be distinctive and non-confusing from other marks. In broad terms, trademarks fall into four categories: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic. Each category has specific rules, which I will not get into. The thing to remember is that trademarks or service marks are meant to be associated with some product or service so people can relate that back to the company that provides the product or service. The more distinctive and unique, the better.

COPYRIGHTS

Whenever an author (or coder) creates an original work that is in a fixed, tangle form (like an article or source code), it becomes the immediate property of the author. For example, as I create this article in a fixed tangle form, I automatically own the copyrights. As the author, I can choose to do with those rights as I see fit. Bestowing or selling copyrights is at the sole discretion of the copyright holder.

LOGISTICS

Since copyrights are established automatically when the work is in a tangle form, no registration with the copyright office is required. In fact, since 1989, you don’t even have to mark that the material as copyrighted. In practice, it’s always a good idea to identify that the work is copyrighted by adding the word Copyright, the date and the owner. That way, there is no confusion.

FAIR USE

Fair use of copyrighted material is a bit tricky. In general, fair use is primarily designed to allow the use of the copyrighted work for commentary, parody, news reporting, research and education. There are several tests that are applied to determine fair use. These include:

1. The purpose of the use: If the work is used for educational or non-profit means, then it’s probably OK.
2. The nature of the work: Is it purely facts or someones creative writing. More factual works are easier to fairly use.
3. The amount of the work used: This is kind of subjective and usually determined by a judge.
4. The effect of the use on market or profit: This is basically do you compete in the marketplace with the copyrighted work. If so, then it’s probably not fair use.

TRADE SECRETS

The last piece of IP is the trade secret. This can be anything that a company uses to gain a competitive advantage. As the name implies, the company keeps this information secret so competitors don’t use it. Trade secrets are the least protected type of IP from a legal point of view. Usually, trade secrets are protected by Non-Disclosure Agreements (NDAs) and the limitation the company puts on who knows the information.

A COMPREHENSIVE APPROACH

Most companies have all four kinds of IP. There is no hard and fast rules as to what you should patent, trademark, copyright or keep secret. In general, companies patent physical objects or processes to make things, trademark a logo or saying, copyright all their manuals and websites and keep secret a wide variety of formulas or knowledge that gives them a competitive edge.

THINGS TO DO

1. Look up a famous trademark. How long has it been in use? What is the legal definition of it? How does that compare to what you see.
2. Look up one of your companies patents. Read through the claims. How close are the claims to the title or abstract? After reading the claims and specification, write a couple of paragraphs on how you would create the invention.
3. Do a search for a famous trade secret. Why do you think it’s a trade secret? How do you think the company protects it? Write a paragraph on your thoughts.
4. Invent something simple. How would you go about patenting this invention? What prior art might you have to deal with?