Patents, Trademarks & Copyrights


Introduction

The following is a brief summary of each tool for protecting intellectual property (IP). The tools discussed are Patents, Trademarks & Copyrights.

Patents

Patents protect an idea (invention) that is embodied in a device or method.  This is different from Copyright and Trademarks.

The vast majority of patents are “utility patents”. There are also plant patents and design patents.  Only utility patents are discussed below.

Patents protect the idea for twenty years after the (effective) filing date.  Prior to 1995, the term of a patent was 17 years after the patent was issued.

The patent comprises a written abstract (summary), specification, drawings and one or more claims.  All of these items are in writing.  The text and drawings of the patent must disclose or “teach” a person skilled in the art how to make or use the idea/invention. 

The claim(s) of a patent also describe the invention.  Each claim is comprised of one or more “elements” such as (i) an elongated widget (ii) joined by a hinge or pivoting structure to a (iii) a round doodad.  There are three elements in this claim.  A device that contained a widget, doodad and hinge structure joined in the manner described above would infringe the patent.

Patents are granted by the US government.  It is necessary to apply for a patent.  There is a procedure for filing a provisional application as well as a procedure to file for a non-provisional application.  If a provisional application is filed without filing a follow on non-provisional application within 12 months of the provisional filing, the provisional application will automatically be abandoned.

A non-provisional application and an issued patent are both published.  

A patented device or method should be marked with the patent number.  A device or method that is subject of a pending patent application (even an unpublished provisional application) should be marked “patent pending”.  

Trademark

A trademark (including a service mark) is a drawing, design or word(s) or a combination of the design or words that “mark” a good or service to identify the origin, maker or provider of the good/service.

There are common law trademarks.  The trademark is created as soon as a good or service is “used in commerce” to identify the goods/services.  A common law trademark may be identified by the symbol ™.  

Trademarks may also be registered with the US government. It is necessary to apply for registration of the trademark.  Registered trademarks are generally subject to broader protection than common law marks. 

An application of trademark registration will be examined and a search conducted of the mark to see if there are any conflicting marks.  If the mark is allowed, the mark can be identified with the symbol ®.  This symbol can only be used with registered marks.

As stated above, an application for trademark registration includes a search of existing registered mark to determine if there is a conflict.  A conflict exists if it is determined that the applied for mark will cause confusion for the public in determining the origin of the good/service.  Stated differently if an applied for mark is so similar to an existing registered mark that the public is likely to be confused in determining who is the maker/provider of the product or service, the applied for mark cannot be granted.

The mark of a trademark is always an adjective, i.e., Thermos® bottle or Apple® computer.  The trademark describes the product or service of the trademark owner, i.e., Thermos or Apple corporation.  A mark cannot be registered if it comprises a generic term such as “glass” in conjunction with bottles.  A glass bottle is a generic term that describes bottles made of glass.  A mark cannot be registered if it is merely descriptive of the product, i.e., clear bottle.  The mark “clear” merely describes a characteristic of the product. There are additional rules that pertain to incorporating geographic terms in a mark or marks the comprise a person’s name.

Before a trademark is granted, it will be published. A third party has an opportunity to oppose the trademark opposition to prevent the mark being registered.  During the first 5 years after trademark registration, a third party may initiate a cancellation proceeding to cancel the registered mark.  After the first 5 year term, it may become much more difficult to attempt cancellation of the mark.

A registered trademark must be renewed at the 5 year and 10 year anniversary of trademark award/registration.  A registered trademark must thereafter be renewed at every 10 year anniversary.  Failure to renew the mark will cause it to be abandoned.

Subject to the registration renewal requirement, there is no expiration date for trademarks.  This is different than the 20 year term of a patent and the 95 year or 120 year term of a copyright.

Copyright

A copyright does not protect an idea.  It only protects the authors embodiment or application of the idea.  This is different than a patent.  Computer software can be protected by copyright, as well as by patent protection.

A copyright only protects the author’s application of the idea.  The children’s book Lassie of a small boy growing up in the country without brothers or sisters but only his collie breed dog named Lassie is copyrighted.  A story of a young boy growing up in Manhattan New York with a golden retriever breed dog named Max but without brothers and sisters would not, based on this brief characterization, infringe upon the Lassie copyright.  Here the idea is of a young boy growing up with a dog as his main or sole companion.  The two stories are two separate applications of the same idea.

There is a common law copyright that is created at the time the work (story, song, video, statute, software, etc.) is created. This copyright can also be registered with the US government.  At least one copy of the work must be supplied with the application for copyright registration.  Both registered and common law copyrights may be marked with the symbol ©.  This is different from trademarks. 

The term of a copyright varies.  For works created on or after January 1, 1978, the term is the author’s life plus an additional 70 years. For a “joint work prepared by two or more authors who did not work for hire,” the term lasts for 70 years after the last surviving author’s death. For works made for hire and anonymous and pseudonymous works, the duration of copyright is 95 years from first publication or 120 years from creation, whichever is shorter. 

Valuable Copyright Tip

A valuable tip is to always specify that the work product of what is create for you by a third party, e.g., web designer or software creator is always designated as a “work for hire”. Clearly state that you are to receive the source code of any software that you contract to have written. Also state that you retain the copyright.

Conclusion

The above is only a brief outline of each of the different tools available for the protection of IP.  The focus of this brief outline is to highlight some the differences among the different tools. Of course, another method of protecting IP is to keep it secret, i.e., a trade secret.  There is no term of a trade secret but there are very real limitations of coverage and recourse for wrongful use or disclosure.  As stated elsewhere in my articles and blog postings, I am not a fan of utilizing trade secrets as a method of protecting IP.  See Trade Secrets vs. Patenting.

Copyright David McEwing, 2019