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Intellectual Property: Overlapping Types

By: Special Guest Author Tamsen Valoir, PhD.
April 2007 Corporate

Many people are familiar with patents, trademarks and copyrights, yet still do not appreciate the distinctions between these various types of intellectual property or “IP” protection.  This short article discusses the major types of IP and shows how different aspects of a product can be protected by different types of IP at the same time.

Utility Patents

Patents provide the right to exclude others from making, using or selling a claimed invention, and the right lasts from issuance until 20 years from filing.  The scope of a patent is determined from the claims, each of which is a single sentence at the end of the patent.  Patents are used to protect a huge array of commercial products, ranging from engineered seeds to business methods.

Obtaining a patent is a rigorous process, requiring examination at the Patent and Trademark Office (PTO) where the applicant must show utility (usefulness), novelty (it must be “new”) and non-obviousness (it can’t be an “obvious” variation of what is already known).  Additionally, the inventor must provide an adequate written description of the invention and must disclose the best mode-the preferred materials, methods, and suppliers.

The application process can be quite expensive, requiring tens of thousands of dollars.  That said, it is probably the broadest type of IP protection available because it allows the owner to stop infringers from making any variation of a claimed invention.

Design Patents

A design patent provides the right to exclude others from making using or selling a claimed design and the right is only good for 14 years.  It is used to protect the appearance of an article, not its structural or functional features.  Like the utility patent, the scope of design patent is determined by the claim, but only a single claim is permitted and it contains a drawing of the design.  Design patents are used in a variety of contexts, to protect designs ranging from a bottle’s shape to a ceiling fan to a sports car.

Trade Secrets

A trade secret is any secret information that a company deems of value.  It could range from a secret formula (for example the Coke® recipe) to customer lists. A trade secret can be protected forever, so long as the information does not become public. Further, there is no cost for obtaining a trade secret, beyond the security measures needed to maintain secrecy.  Trade secrets are particularly useful where a product cannot easily be reverse engineered, and therefore not easily copied.

Trademark

A trademark is a word or symbol used on goods to indicate the source of the goods.  Trademark rights may be used to prevent others from using a “confusingly similar” mark, but not to prevent others from making the same goods under a completely different mark. Trademarks may be registered with the PTO as well as at state offices, and the process is much less expensive than obtaining a patent.

The procedure for obtaining a federal trademark is much easier than that of obtaining a patent.  All that need be shown is actual use in commerce, that the mark is not confusingly similar to another mark, and is not descriptive, nor generic.  A trademark can last forever, as long as the owner takes steps to control the quality of the goods associated with the trademark, and to prevent the use of the mark from becoming generic.  Aspirin, for example, used to be a brand name for a acetylsalicylic acid (ASA), but it is now used generically to describe any ASA containing product.
Federal registration is not required for trademark rights to exist-they come into being on first use of the mark in commerce, but registration is quite valuable because it affords certain procedural protections, such as incontestability after five years.

Copyright

Copyright is a form of protection provided to authors of “original works of authorship,” and can attach to any form of expression in a “fixed” medium, such as books, DVDs, software an the like.  Copyright provides an exclusive right to copy, distribute, to prepare derivative works, or to perform or display the copyrighted work.

Copyright is generally available for the life of the author plus 70 years.  For an anonymous or company work, the copyright lasts for a term of 95 years from the year of its first publication or a term of 120 years from the year of its creation, whichever expires first. Copyrights are registered by the Copyright Office without examination, and registration is inexpensive, although there is a mandatory deposit requirement.   Registration gives the holder procedural advantages in court, as well as statutory damages.

Intellectual Property Overlap

These various forms of IP can all be used to protect different aspects of the same products.  As a simple example, a drug may have a patent on the actual drug molecule, but a later developed slow release formulation may be kept a trade secret.  The brand name is protected by trademark and the advertisements by copyright.  A unique pill shape may even be protected by design patent.

As another example, consider a new computer game with a piano interface that teaches basic piano skills.  The software and graphics are protected by copyright the moment the code became “fixed” in a tangible medium, allowing the owner to prevent unauthorized “copying.”  The special piano-like keyboard sold with the game may be protected by trade secret, but if a patent is also applied for, any trade secrets therein will disappear when the patent application is published at about 18 months.  The issued patent will allow the owner to prevent competitors from making any piano-like controller that falls within the scope of the patent claims.  The owners will protect both the game name and its logo by trademark.  Because all of the IP rights are geographically limited to the US, the owner may also file for trademark protection overseas.  Trademark protection is a nice complement to the copyright protection, because trademark infringement can easily be seen at glance, whereas reviewing the source code for evidence of copying may be more a more daunting task for a court.

Thus, these various forms of intellectual property overlap and the different types of protection can be used to simultaneously protect different aspects of the same product.  Consult your attorney for a complete discussion of how to use the various forms of IP to protect your products.

Table 1.  Comparison of Types of Intellectual Property Protection

Type of Intellectual Property Ease of Ownership or Registration Length of Protection Scope of Protection App’n
Fee
(U.S. $)
Utility Patent Difficult 20 years Right to exclude others from making, using & selling invention ~ $1000
Design Patent Medium 14 years Right to exclude others from making, using & selling design ~ $200
Copyright Registration Easy Individual: life + 70 years Business:  95 years from publication or 120 years from creation, whichever is shorter. Exclusive right to reproduce, display & create derivative works ~ $30
Federal Trademark Registration Medium Perpetual as long as in commercial use, quality maintained, and not allowed use as a generic term Exclusive use of mark and “confusingly similar” marks ~ $375
Trade secret N/a, Only requires reasonable precautions  to keep secret Perpetual as long as it is kept a secret Right to stop others from using trade secret only if improperly taken N/a, Security costs only

1) The Application fee does not include legal expenses, which can be significant for patents, nor maintenance fees.



About the author

Tamsen is a partner in the Houston office of Baker & McKenzie, LLP. She has a JD and LLM in Intellectual Property, a doctorate in molecular biology from Rice University, and her practice is primarily in intellectual property in the area of biotechnology. She can be contacted at tamsen.valoir@bakernet.com

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