Understanding Intellectual Property Basics

Intellectual property is probably best thought of (at least in general terms) as creations of the mind that are given the legal rights often associated with real or personal property. The rights that are given are a function of statutory law (i.e., law created by the legislature). These statutes may be federal or state laws, or in some instance both federal and state law govern various aspect of a single type of intellectual property. The term intellectual property itself is now commonly used to refer to the bundle of rights conferred by each of the following fields of law: (1) patent law; (2) copyright law; (3) trade secret law; (4) the right of publicity; and (5) trademark and unfair competition law. Some people confuse these areas of intellectual property law, and although there may be some similarities among these kinds of intellectual property protection, they are different and serve different purposes.

What is a Patent?

A patent for an invention is the grant of a property right to the inventor, issued by the Patent and Trademark Office, which is a non-commercial federal entity and one of 14 bureaus in the Department of Commerce. There are three very different kinds of patent in the United States: (1) a utility patent, which covers the functional aspects of products and processes; (2) a design patent, which covers the ornamental design of useful objects; and (3) a plant patent, which covers a new variety of living plant.

Each type of patent confers “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. It is important to note, however, that patents do not protect ideas, but rather protect only tangible or identifiable structures and methods.

Prior to June 8, 1995, a United States patent on an invention had a duration of 17 years from the grant of the patent. As a result of the Uruguay Round Agreements Act, which was enacted by Congress to satisfy international treaty obligations, the patent term for utility patents is now 20 years from the date on which the application for the patent was filed in the United States. Under some circumstances it is possible to obtain a 5 year extension to the patent grant, but this is rare, unless your invention relates to a pharmaceutical composition. Design patents, unlike utility patents, have a 14 year term from date of issuance.  Historically, design patents were quite weak, but as the result of an important decision from the United States Court of Appeals for the Federal Circuit in the Fall of 2008, design patents are now much stronger and should be considered an important part of a patent portfolio when your invention relates to a product.

What is a Copyright?

Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. Copyright law generally gives the owner of a copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.

The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. In order to prevent the making and using of the machine one would have to seen patent protection. Copyrights are registered by the Copyright Office, which is a part of the Library of Congress.

What is a Trade Secret?

A trade secret is any valuable business information that is that is not generally known and is subject to reasonable efforts to preserve confidentiality. A trade secret will be protected from misappropriation from exploitation (through state law) by those who either obtain access through improper means or who breach a promise to keep the information confidential.

Trade secret misappropriation is really a type of unfair competition. Remedies for infringement of a trade secret include damages, profits, reasonable royalties, and an injunction. Some statutes also provide for enhanced damages and attorneys fees in certain circumstances.

What is a Trademark?

Generally speaking a trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are commonly used to refer to both trademarks and service marks.

Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the Patent and Trademark Office.

What is Trade Dress Protection?

Trade dress is the totality of elements in which a product or service is packaged or presented. These elements combine to create the whole visual image presented to customers and are capable of acquiring exclusive legal rights as a type of trademark or identifying symbol of origin. Because trade dress includes all factors making up the total image under which a product or service is presented to customers, it potentially covers almost all aspects of appearance. Things that have been held protectable under the category of trade dress include: (1) the shape and appearance of a product; (2) the shape and appearance of a container; (3) the cover of a book or magazine; (4) the layout and appearance of a business establishment such as a restaurant; (5) the theme and look of a line of greeting cards; and (6) the recognizable shape of an automobile.

What is the Right of Publicity?

The “right of publicity” is the inherent right of every human being to control the commercial use of his or her identity. Please note these carefully chosen words. It is the right of “every human being,” not the right of every person. In many contexts we could substitute the phrase “every human being” with the word “person,” but it is important to remember that the right of publicity is an individual right. When the word “person” is used in the law we most often define “person” to include corporations or other similar entities. This is not the case with the right of publicity. The right of publicity does not protect the persona of a corporation, partnership, institution or other similar entities; it protects only the human identity.

Infringement of the right of publicity can be triggered by any unauthorized use in which the plaintiff is “identifiable.” A plaintiff is identifiable by name, nickname, stage name, pen name, picture, photograph, voice (particularly a distinctive voice) or any object closely identified with a person. An unpermitted commercial use where the plaintiff is identifiable triggers a prima facie case of infringement of the right of publicity.


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Join the Discussion

2 comments so far.

  • [Avatar for Gene Quinn]
    Gene Quinn
    August 20, 2009 11:54 am

    Jr. Examiner-

    You are right about trademarks. Trademarks cannot be disassociated with the good or service they are linked to. Any attempt to sever the link between good/services and trademark results in the trademark being abandoned.

    Trade dress is usually not registered protection, although you can obtain a registered trade dress. Trade dress protection usually falls under 1125(a) of the Trademark Laws, which does not require a registered trademark to be liable for the creation of likely confusion. You should not view trade dress and design patents as mutually exclusive. A design patent covers the ornamentation of a useful product. That same ornamentation could, also be protected by trade dress. Trade dress cannot, however, protect functional aspects. A design patent could protect functional aspects. So you really should think about having both design patent protection and trade dress protection.

    I will try and write something longer in the weeks to come. This is a good question and deserves fuller attention.

    Thanks for reading.


  • [Avatar for Jr. Examiner]
    Jr. Examiner
    August 20, 2009 11:35 am

    Do you think you could write a blurb about the differences between a design patent and trade dress? I know that trademarks aren’t a “right in gross” and that patents are a monopoly, but it seems like there is a lot of overlap between the two. Also, why would you ever want a design patent for a limited term if you could get similar protection via trade dress potentially forever? Just curious. Like the blog.