It appears that “top 5” or “top 10” lists are quite popular here on IP Watchdog. Allow me this opportunity to jump in with a list of my own. Please enjoy, in no particular order, seven of the most common misconceptions about intellectual property. Yes-seven.
1. Intellectual property is boring. My super grown up intellectual property attorney response to that is “NU-UH!” But seriously. Boring? Really? How could the Yoda patent, the Playboy Bunny, zombie video games, and the Coca Cola recipe be boring? OK, the MPEP is a little dry, the TMEP isn’t exactly a page turner, and Title 17 reads like…well…a statute. And maybe there won’t be a “Law and Order: Patent Transactions” this season on NBC, but the subject of IP is actually pretty interesting and we have some really fun case law. Think about it- intellectual property rights surround some of the most important aspects of our daily lives- from Apple’s patents to Coca-Cola’s trade secret to McDonald’s trademark to Michael Jackson’s copyrights. I think the “boring” accusation stems from a tendency to focus on the underlying documentation that creates the right, as opposed to what the right is granted for. This is like looking at the legal description in the deed to a house and relying only on that to make a decision whether to buy or not. It’s the same with IP- the documentation may be highly technical, wordy, and confusing at times but look at what the document is for as opposed to what it says. To prove my point, take a look at this patent. Have a little listen to this trademark and try not beam from ear to ear. And behold one of the coolest copyrighted works of all time. (Sorry- you’ll have sit through an advertisement before the video starts. But you’ll be glad you did.) Fun, innit? If you want boring study Tax Law next time you’re waiting you’re in line at the DMV.
As an aside, and somewhat related to the boring concept, is the idea that intellectual property practitioners are all basement-dwelling nerds. OK, maybe we’re a little nerdy in some ways, but I swear I do not live in a basement, my summer reading did not include the cheat guide to World of Warcraft, and I have NEVER been to Comicon. So what if I have the blueprints to the Millennium Falcon on my office wall and my favorite TV show is “How it’s Made”? You gotta admit some of the stuff we get to do and see in our professional lives is pretty freaking cool. The seediest infringement cases. The bleedingest edge of technology. The next rival to the power of McDonald’s logo or Coca-Cola trade secret. I wear my nerd moniker proudly.
2. Intellectual property operates in a vacuum. There is a tendency to think of IP as this nebulous, weird, confusing body of law that operates in its own sphere and whose practitioners rarely travel outside their own little IP bubble. Actually, it’s just the opposite. Perhaps more than any other flavor of law, intellectual property issues pop up all the time. In fact, there isn’t much that the IP laws don’t bleed into at least occasionally and we IP kids have our sticky little fingers in nearly everything. For example, intellectual property licensing agreements can be some of the most complex contracts out there, a patent portfolio acquisition can trigger antitrust scrutiny, copyright infringement can be a criminal act, and some of the most notorious probate cases of our day involve copyrights. Try to think of some area of law that IP doesn’t play in occasionally. I couldn’t come up with anything. Even maritime law and eminent domain issues pop up from time to time. Word to the wise- have a nerd on speed dial.
3. A patent does not equal a trademark does not equal a copyright does not equal a trade secret. Intellectual property is a body of law governing intangible assets-creations of the mind, if you will. The four main sources of intellectual property protection are patents, copyrights, trademarks, and trade secrets. There is a tendency to want to treat them as the same because they are all under the umbrella of “intellectual property”. Don’t. They are completely separate and distinct entities and each has a different set of laws governing it. It is all too common that I see a person applying a copyright infringement theory in a trademark case, alleging a granted patent in their business name, or swearing that their invention is copyrighted. The truth is that just about the only thing the various forms of IP have in common is the fact that they are intangible assets. The rules pertaining to copyrights, trademarks, trade secrets, and patents have very little, if anything, to do with each other, especially with infringement and damages issues. The take home lesson is pay attention to, and don’t deviate from, the unique laws governing the particular flavor of IP you’re dealing with.
4. Patents are the bestest bestest most super dee duper form of IP you can get. Well, they can certainly be the most difficult and expensive rights to acquire, and with the recent passage of the America Invents Act, they promise to be an even bigger *ahem* challenge, but the truth of the matter is that the best form of intellectual property for you depends on your goals. At least in theory, you are pursuing a registered patent, trademark, or copyright, or are guarding your trade secret like Fort Knox because it inherently has, or you expect it will have, some monetary value to you in the future. With that in mind, the best form of IP you can get is not only what is permitted by the body of law it qualifies under, but is also the flavor that will give you a return on your investment. For example, it may not be worth it to pursue patent protection and it may be better to focus on building a strong brand instead. The misconception that the patent is the holy grail of intellectual property still mystifies me. The truth is that the best form of IP is whichever works best with your business model. Coke’s most valuable IP asset is a trade secret. McDonald’s has its trademark. For Lady Gaga it’s her copyrights. So, if your IP practitioner tells you your dog washing machine is so old that the broad claim will be 37 lines long, resist the urge to cry. You may have a viable trademark for your dog washing business and a best-selling how-to book on the subject.
5. Your work is done when the application is filed. Actually, your work is just beginning when you have your filing date. Contrary to popular belief, your IP is not automatically worth money just by virtue of its existence or once the application is filed. And even if your application turns into granted rights, those rights alone will not suddenly become a money tree. It is important to be diligent about your application when it is pending, but the bulk of your work will begin when you get your copyright certificate, your trademark registration, or your letters patent, or lock the safe with your secret formula inside. This is because you must constantly use, manage, and protect your rights. For example, without proper marketing no one will know about your IP. Without proper licensing or sales, no one will buy it. Without proper diligence, infringers can steal it without consequence. Remember that IP rights are like any other piece of property- they require use, maintenance, upkeep, care, and protection or you run the risk of losing them forever. Now that I think about it, the application is probably the easiest part of building your IP portfolio.
6. Granted rights prevent infringement. Nope. Not even a little. Your rights are what you are protecting, not what prevents infringement. All they do is give you some recourse if someone actually does infringe. A registered trademark or a copyright certificate or letters patent is not a magic wand that will somehow prevent others from infringing your IP. In fact, the more popular your IP is, the more people will want to copy it or just steal it outright. Just as you put a scarecrow in your fields, a lock on your door, and a dog in your junkyard, so too, must you work constantly to ferret out and prevent infringement. This goes back to the enforcement concept I mentioned in number 5. It is true that granted rights may act as a deterrent in some cases, but that’s about it. Incidentally, if someone ever does invent that magic no-infringement wand, I’ll write the patent for free in exchange for a working prototype. Same goes for an accuracy improvement for my Magic 8 Ball. But I’m not holding my breath.
7. Anybody can write a patent if they go to law school. Not true. A Juris Doctorate or a license to practice law is not a requirement to write or prosecute patents. What you need is an undergraduate degree in one of the hard sciences (biology, chemistry, one of the flavors of engineering, physics, some types of computer science, etc.) If you were an art history major you are tough out of luck. The hard science degree qualifies you to sit for the patent bar examination (a soul sucking experience that will drain the lifeblood out of you until you are nothing but a hollow shell. OK, I kid- but seriously-it’s not an easy exam. Spend the money on a good review course and practice practice practice!) If –natch when- you pass the exam, you are called a patent agent. You are permitted to write and prosecute patents before the United States Patent Office. No JD required! If you do have a JD and a license to practice law in any jurisdiction in the United States you are a patent attorney. You get to write and prosecute patents plus you get do lawyer-type things like argue in court, give legal advice, and you also get to play with copyrights and trademarks (if you so desire). But take note- a hard science undergraduate degree is not required to practice copyright or trademark law.
So that’s my list. Why 7 you ask? No reason. It’s just how many I came up with. And these are just the ones my clients, friends, fellow lawyers, and even random strangers ask me most often. Maybe my next list will be the twelve weirdest questions I’ve been asked as a lawyer. The hard part with that one will be limiting it to only twelve.
Join the Discussion
9 comments so far.
Beth HutchensSeptember 26, 2011 11:56 am
@Suzanne Thanks! I forgot about the “Application = rights” phenomenon. Good call. I see it all the time in trademark, too.
Suzanne A. SprungerSeptember 25, 2011 10:07 pm
Thank you for your consistently entertaining – and informative! – columns. I would like to add one more to your list:
8. Confusing published patent applications with granted patents. This is an astonishingly common mistake: at least one Ph.D. scientist who appears in patent litigation as an expert witness doesn’t seem to be able to tell the difference, despite the fact that granted patents have “United States Patent” at the very top of the first page, in the largest boldest print that would fit, while published applications have “Patent Application Publication” at the top instead, in similarly eye-catching big letters. And the numbering system for granted US patents is completely different from that for published applications. Maybe we should suggest that the pdfs for granted patents should have a different background color from the published applications, since supposedly intelligent people seem incapable of distinguishing the two otherwise.
Beth HutchensSeptember 25, 2011 12:50 am
@Steve- Well met. If you’re referring to the AIA- I can narrow it down to one problem- it passed. *sigh*
@David That’s kind of you to say. Thanks! I’ll certainly check out your article. Thanks for the link!
David PostolskiSeptember 24, 2011 08:59 pm
Bravo Beth, love this post, like myself your style is perfection and entertaining. Check out my post Torchwood: Miracle FDAy and the Advancement of Innovation, http://tinyurl.com/3dwle62
From one fellow patent attorney to another and from one person to another who is also passionate about innovation and the industry please enjoy!.
Steve MSeptember 24, 2011 05:50 pm
I know! I know!
How ’bout someone doin’ a List of the Top 10 Worst Provisions of the Patent Act.
. . . so many to choose from.
Beth HutchensSeptember 23, 2011 03:56 pm
Thanks, EG. I certainly hope Chutes and Ladders made your list. LOL! I guess I should glean from the responses I’m getting here and on Twitter that a post RE “The Top 12 Weirdest Things I’ve Been Asked as a Lawyer” is a moral imperative! Guess I’ll roll that one out this year at some point. 😀
EGSeptember 23, 2011 03:47 pm
A very entertaining list about IP. My college alumni magazine recently did section on the “Top Ten [Whatever].” My patent attorney brother Mark and I did one on the Top Ten Board and Card Games. Lots of fun.
Beth HutchensSeptember 23, 2011 02:52 pm
Thanks so much, Jake!
JakeSeptember 23, 2011 01:45 pm
I’m glad you don’t think it is boring… It would make for a terrible career for you if you did! I learn more from you on these areas than I have ever thought about knowing.