Intellectual property: patents & trademarks
In today’s knowledge-based economy, the products of human creativity and innovation often represent the most valuable assets of individuals and organizations. Unlike physical property (e.g., land, buildings, equipment), these intangible creations of the mind require special legal frameworks for protection. This body of law is known as intellectual property (IP) law.
Intellectual property encompasses the creative products of the intellect and normally includes inventions, symbols, literary works, artistic expressions, designs, and proprietary business information. For engineers, scientists, entrepreneurs, and creative professionals, understanding intellectual property is essential for protecting innovations, respecting the rights of others, and navigating the commercial landscape.
The importance of intellectual property protection cannot be overstated. Without legal mechanisms to protect creative works and innovations, inventors would have little incentive to invest time and resources in research and development. Competitors could simply copy new products without bearing any of the development costs. The intellectual property system balances the interests of creators, who deserve to benefit from their work, with the interests of society, which benefits from the dissemination of knowledge and creative works.
This section examines the four primary categories of intellectual property protection available in the United States: patents, trademarks, copyrights, and trade secrets. Each category serves a distinct purpose and offers different types of protection for different types of intellectual creations.
Overview of intellectual property protection
The nature of Intellectual Property
Intellectual property differs fundamentally from physical property in several important ways:
- Intangibility: Intellectual property has no physical form. A patent protects an idea for an invention, not the physical device itself. A copyright protects the expression of ideas, not the paper on which words are printed.
- Non-exclusivity of use: Physical property can only be used by one person at a time. If you are driving your car, no one else can drive it simultaneously. Intellectual property, however, can be used by multiple parties simultaneously. Many people can read the same book, use the same patented process, or recognize the same trademark at the same time.
- Ease of replication: Physical property is difficult and expensive to replicate. Intellectual property, particularly in the digital age, can often be copied instantly and at virtually no cost. This ease of replication makes legal protection especially important.
Categories of protection
A number of options are available to individuals and organizations who wish to protect their intellectual property from being claimed or misused by others. There are four primary protection categories used to offer varying degrees of protection to intellectual property owners:
| Category | What It Protects | Duration | Registration Required? |
|---|---|---|---|
| Patents | Inventions and discoveries | 20 years (utility) | Yes |
| Trademarks | Brand identifiers | Indefinite (with use) | No (but recommended) |
| Copyrights | Creative expression | Life + 70 years | No (but recommended) |
| Trade Secrets | Confidential business information | Indefinite (if secret) | No |
Choosing the right protection
The appropriate form of intellectual property protection depends on the nature of the creation:
- Inventions and processes → Patents
- Brand names and logos → Trademarks
- Written works, music, art, software → Copyrights
- Confidential business information → Trade Secrets
In some cases, multiple forms of protection may apply to a single product. For example, a software application might be protected by:
- Copyright (for the source code and user interface)
- Patent (for novel algorithms or processes)
- Trademark (for the product name and logo)
- Trade secret (for proprietary techniques not disclosed in the patent)
Patents
A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office (USPTO). A patent gives the patent holder the right to exclude others from making, using, selling, offering for sale, or importing the patented invention.
It is important to understand what a patent does and does not provide:
What a Patent Provides
- The right to exclude others from practicing the invention
- A limited monopoly on the invention for a specified period
- The ability to license the invention to others
- The ability to sue infringers for damages
What a Patent Does Not Provide
- The right to make, use, or sell the invention (other patents or regulations may prevent this)
- Automatic enforcement (the patent holder must actively enforce their rights)
- International protection (patents are territorial)
Patent terms and territorial scope
Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States. In special cases, the term is measured from the date an earlier related application was filed. The patent term is subject to the payment of maintenance fees at specified intervals.
Maintenance fees
To keep a utility patent in force, the patent holder must pay maintenance fees:
- 3.5 years after grant
- 7.5 years after grant
- 11.5 years after grant
Failure to pay maintenance fees results in the patent expiring before the end of its 20-year term.
Territorial limitations
U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. A U.S. patent provides no protection in foreign countries. Inventors seeking international protection must file separate patent applications in each country where protection is desired, or use international filing systems such as the Patent Cooperation Treaty (PCT).
Types of patents
There are three types of patents available in the United States:
Utility patents
Utility patents may be granted to anyone who invents or discovers any new and useful:
- Process — A method of doing something, such as a manufacturing process or a business method
- Machine — A device with moving parts or circuitry that performs a function
- Article of manufacture — A manufactured item without moving parts
- Composition of matter — Chemical compositions, including pharmaceuticals and new materials
- Improvement — Any new and useful improvement of the above categories
Utility patents are the most common type of patent and provide the broadest protection for inventions.
Design patents
Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. Design patents protect the appearance of an article, not its function.
Key characteristics of design patents:
- Protect ornamental (aesthetic) features only
- Term of 15 years from grant (for applications filed on or after May 13, 2015)
- No maintenance fees required
- Cannot protect functional features
Examples of design patents include the distinctive shape of a Coca-Cola bottle, the design of smartphone icons, or the ornamental appearance of furniture.
Plant patents
Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant. This includes:
- Cultivated sports
- Mutants
- Hybrids
- Newly found seedlings
Plant patents do not cover:
- Tuber-propagated plants (such as potatoes)
- Plants found in an uncultivated state
- Plants reproduced by seeds
Requirements for patentability
To obtain a patent, an invention must meet several requirements:
The patent application process
Obtaining a patent involves several steps:
- Invention disclosure — Document the invention thoroughly
- Prior art search — Search existing patents and publications to assess novelty
- Prepare application — Draft claims, specifications, and drawings
- File application — Submit to the USPTO with required fees
- Examination — USPTO examiner reviews the application
- Office actions — Respond to examiner’s rejections or objections
- Allowance — If approved, pay issue fee
- Grant — Patent is issued
The process typically takes 2-4 years and can be expensive, often costing $10,000-$30,000 or more in attorney fees and filing fees.
Trademarks
A trademark is a word, name, symbol, device, or combination thereof that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. Trademarks serve several important functions:
- Source identification: Trademarks tell consumers who makes a product. When you see the Apple logo on a computer, you know it was made by Apple Inc.
- Quality assurance: Trademarks represent a consistent level of quality. Consumers rely on trademarks to make purchasing decisions based on past experiences with the brand.
- Advertising function: Trademarks serve as a focal point for advertising and marketing efforts. They embody the goodwill and reputation of a business.
Types of marks
Several types of marks are recognized under trademark law:
- Trademarks: Identify and distinguish goods (products). Example: “Nike” for athletic shoes.
- Service marks: Identify and distinguish services rather than goods. Example: “FedEx” for delivery services.
- Certification marks: Indicate that goods or services meet certain standards. Example: “UL” certification for electrical safety.
- Collective marks: Indicate membership in an organization. Example: “CPA” for Certified Public Accountants.
- Trade dress: The overall commercial image or look and feel of a product. Example: The distinctive shape and color scheme of a Tiffany & Co. box.
Trademark strength
Trademarks are categorized by their distinctiveness, which affects the scope of protection:
- Fanciful marks (strongest): Invented words with no meaning other than as a trademark. Examples: Kodak, Xerox, Exxon.
- Arbitrary marks: Common words used in an unrelated context. Examples: Apple (for computers), Amazon (for retail).
- Suggestive marks: Suggest qualities of the product without directly describing it. Examples: Coppertone (for suntan lotion), Netflix (for streaming video).
- Descriptive marks (weak): Directly describe the product or its qualities. These are protectable only if they acquire “secondary meaning” through extensive use. Examples: “Sharp” for televisions, “Best Buy” for retail.
- Generic terms (not protectable): Common names for products cannot be trademarked. Examples: “Computer” for computers, “Aspirin” (which was once a trademark but became generic).
Trademark rights
Trademark rights arise from use of the mark in commerce, not from registration. However, federal registration provides significant advantages:
Common law rights (without registration)
- Protection limited to geographic area of actual use
- Harder to enforce
- No presumption of validity
Federal registration benefits
- Nationwide constructive notice of ownership
- Legal presumption of validity
- Right to use ® symbol
- Ability to bring suit in federal court
- Basis for foreign registration
- Customs recordation to block infringing imports
Scope of trademark protection
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.
Courts consider several factors when determining likelihood of confusion:
- Similarity of the marks
- Similarity of the goods or services
- Strength of the plaintiff’s mark
- Evidence of actual confusion
- Intent of the defendant
- Sophistication of consumers
Trademark duration and maintenance
Unlike patents and copyrights, trademark rights can last indefinitely as long as the mark continues to be used in commerce and is properly maintained.
Maintenance requirements
- File Declaration of Use between 5th and 6th year after registration
- File renewal application every 10 years
- Continue actual use of the mark in commerce
Loss of trademark rights
Trademark rights can be lost through:
- Abandonment — Non-use for three consecutive years creates a presumption of abandonment
- Genericide — When a trademark becomes the generic name for a product (e.g., “escalator,” “thermos”)
- Naked licensing — Licensing without quality control