This article serves to provide a general introduction to intellectual property and how it can be important for your business. Intellectual property, or “IP,” is not property in the same sense as real property or chattels; it is not tangible. However, one can buy and sell IP just like other property, just as one might sell a house.
So what are we talking about when we refer to intellectual property? Intellectual property rights are a collection of rights primarily governed by patent, copyright, and trademark law. Each of these rights serve to motivate inventors and authors to continue to create IP by providing limited protection against copying of trademarks, inventions, and works of authorship. For example, without patent protection, inventors would keep inventions secret, or eschew research and development altogether, for fear that others would copy their inventions and take profits that otherwise would be reaped by the original inventor.
A trademark is any name or symbol indicative of a source of origin of a product or service. It should not surprise you to learn that your business already has a trademark — your business name, and most likely also the brand name of your product or service. A trademark is one of your most valuable business assets, because it represents who you are and how consumers recognize your business. Trademarks are perhaps also the most recognizable form of IP. You can hardly drive down a major road without encountering a sign for a McDonalds® restaurant or a sign advertising Coca-Cola® brand soda. Many consumers purchase goods and services based on name recognition alone.
There are two means by which you can protect your trademark from being copied. The first is through state trademark laws. Each state offers trademark protection based on the use of the trademark in that state. The second (and more effective) means is to register the trademark. In the U.S., a trademark is registered through the U.S. Patent and Trademark Office (USPTO), which provides nationwide protection. Registered trademarks offer advantages over non-registered trademarks. Once a trademark is registered, no other entity can use any name or mark that is identical to or is likely to cause confusion with your registered trademark, anywhere in the U.S. An exception arises where the other entity proves that it was using its trade name or mark prior to your trademark registration, in which case the other entity might have limited rights to use their name or mark in their geographic location.
Patents are another form of IP that protect inventions from being copied. A utility patent provides protection for any new and useful invention such as a new machine, article of manufacture, computer program, or process; a design patent protects new ornamental designs (e.g., the aesthetic appearance of manufactured goods, computer icons, graphical user interfaces, etc.); a plant patent protects new asexually reproducing plants (e.g., roses). All patents include a description of the invention as well as one or more claims that define the legal metes and bounds of the invention applied for. Determining these bounds accurately is important, because a patent provides a limited but powerful monopoly on what is claimed. That is, a patent prevents anyone other than the owner from making, using, selling, or importing an item, or performing a process, that is encompassed by its claims. Those acts would be considered patent infringement. A claim drafted too broadly may be invalid for attempting to encompass what is old or obvious. A claim that is too narrow may be ineffective against competitors making minor modifications to the invention.
To obtain a U.S. patent, a patent application must be filed with the USPTO, where it will be examined by an examiner to ensure that the claimed invention is new, useful, and nonobvious. Examination typically involves careful negotiation between the applicant and the examiner. Due to the complex legal requirements of patent applications, most inventors obtain the services of a registered patent attorney.
Once the USPTO issues a patent, the patent owner may negotiate a license with competitors, or sue infringers for an injunction and/or monetary damages. Because claims are generally drafted to encompass something broader than a specific commercial product, patents can provide broad protection against competitors who might simply try to make minor changes in an effort to avoid the patent. Say you invented a chair on roller skates and applied for a patent based on this invention. If a competitor then marketed a chair on roller blades, they might still infringe your patent depending upon how broadly the claims are drafted.
Copyrights are a third form of IP that protect the expression of ideas (but not the ideas themselves) from being copied. A copyright exists the moment an author fixes an expression in a tangible medium. The moment an author writes words on paper, an artist paints a picture on canvas, a sculptor chisels into marble, or a software developer hits the save button, the author of the work automatically has copyright protection without doing anything further. The author can also choose to register the copyright with the U.S. Copyright Office. As with trademarks, copyright registration provides certain benefits, such as the right to statutory damages and attorneys fees if there is copyright infringement. Nuances of copyright law can be very complex, so authors generally seek advice from a competent attorney for advice regarding specific factual situations.
This article has only presented a very brief introduction to the various forms of intellectual property. For more information or for intellectual property assistance, please contact the authors.
Ross Dannenberg & Jordan Bodner, www.BannerWitcoff.com, are partners with the Washington, D.C. office of Banner & Witcoff, Ltd., an intellectual property law firm. The views expressed in this article are solely those of the authors, and should not be attributed to Banner & Witcoff, Ltd. or any of its clients. THIS ARTICLE IS NOT LEGAL ADVICE, NOR DOES IT ESTABLISH AN ATTORNEY-CLIENT RELATIONSHIP WITH ANYONE. Seek advice of counsel to discuss your own situation. Our contact info is below.