6 Intellectual Property
Learn what patents, copyrights, trademarks, and trade secrets protect under U.S. law, how ownership and infringement differ, and how licenses and assignments affect the use of intellectual property.
Kinds of intellectual property
Intellectual property (IP) law protects different kinds of intangible assets. A single product can involve several kinds of IP: a new mechanism may be patented, its manual copyrighted, its brand name protected as a , and its secret manufacturing process protected as a . Each category has different rules for ownership, protection, , and licensing.
The first step in managing or using IP lawfully is to identify which rights may apply and who owns them. Ownership can depend on authorship or inventorship, employment, and written agreements.
protection and ownership
A gives its owner a time-limited right to exclude others from specified acts involving an invention. It does not itself give the owner permission to make or sell the invention.
Utility patents cover useful processes, machines, manufactures, or compositions of matter. Design patents cover ornamental designs for articles, and plant patents cover certain new plant varieties. protection generally requires an application to the U.S. and Office (USPTO) and satisfaction of legal requirements such as novelty and nonobviousness.
Inventors are generally the initial owners, but they can assign rights to another person or organization. Employment agreements and other contracts can affect ownership, so the circumstances and relevant documents matter. A owner can some or all rights—for example, for a particular product, territory, or period—without transferring ownership.
generally involves, without authorization and during the term, making, using, offering to sell, selling, or importing the patented invention in the United States. Whether a product or process infringes depends chiefly on comparison with the ’s claims. A competing product may fall within those claims even if its maker developed it independently.
Utility and plant patents generally last up to 20 years from the relevant filing date. Design patents generally last 15 years from grant.
For example, a company that owns a on a particular pump mechanism may a manufacturer to produce pumps under agreed terms. A competing product may infringe if it falls within the claims, even when developed independently.
and creative works
protects original works of authorship, including books, music, photographs, films, and software, when they are fixed in a sufficiently permanent form. It protects the creator’s expression, not the underlying idea, fact, method, or system.
protection generally begins automatically upon fixation; registration is not required for to exist. However, registration or refusal is generally required before an owner of a U.S. work can bring an lawsuit.
The author is usually the initial owner. Exceptions include qualifying employee works created within the scope of employment and certain specially commissioned works that meet statutory conditions; these works may be owned by the employer or commissioning party. A written can transfer ownership, while a authorizes specified uses. Owning a physical copy, such as a painting or book, does not by itself transfer .
owners have exclusive rights that include reproducing and distributing copies, preparing adaptations, and, for specified kinds of works, publicly performing or displaying them. generally occurs when someone exercises a protected right without permission, subject to statutory limits and defenses such as fair use. A can specify the permitted material and uses, duration, territory, payment, and whether the permission is exclusive.
For example, buying a photograph does not automatically give a business the right to reproduce it in advertising. The business may need a from the owner.
Trademarks and consumer identification
A is a word, phrase, symbol, design, or other indicator that helps consumers identify and distinguish the source of goods or services. rights generally arise through use in commerce and are tied to the goods or services and the market in which the mark is used. Federal registration can provide important nationwide benefits, but it does not give the owner control over a word in every context.
The person or business that owns and uses the mark for its goods or services is typically the rights holder. A can be licensed, but the should identify authorized uses and address quality control so the mark continues to signal consistent source and quality. Unlike and rights, rights can potentially continue as long as the mark remains in use and the owner maintains its rights.
generally involves unauthorized use of a mark in a way likely to confuse consumers about the source, sponsorship, or affiliation of goods or services. Courts assess the circumstances, including the similarity of the marks and how related the goods or services are.
For example, a new café name that resembles an established restaurant’s name may create a likelihood of confusion if customers could think the businesses are connected.
Trade secrets and confidentiality
A can be valuable business, technical, or other information, such as a formula, process, customer list, or software code. It must derive economic value from not being generally known or readily ascertainable by proper means, and its owner must take reasonable measures to keep it secret. Protection depends on maintaining secrecy; unlike patents, trade secrets generally do not require government registration.
Ownership may belong to the person or organization with rightful legal or equitable title, or a in the secret. Practical safeguards can include limiting access, using confidentiality agreements, and securing files and facilities. A company can secret information subject to confidentiality and use restrictions.
Misappropriation generally involves acquiring a through improper means, or improperly disclosing or using it. Independent discovery and lawful reverse engineering are generally not improper means. If information becomes public or is readily ascertainable through proper means, it may lose trade-secret protection.
For example, a restaurant may protect a valuable, nonpublic recipe by restricting access and requiring employees who receive it to keep it confidential. If the recipe becomes publicly known, trade-secret protection may no longer apply.
Comparing rights, licenses, and assignments
The categories of IP protect different subject matter and use different general routes to protection and assessment:
Patents: Protect claimed inventions or designs; protection generally involves an application and grant by the USPTO. The concern is unauthorized activity within the claims.
Copyrights: Protect original expression fixed in a medium; protection generally begins automatically upon fixation, while registration supports enforcement. The concern is unauthorized exercise of an exclusive right.
Trademarks: Protect brand identifiers for goods or services; rights generally arise through use in commerce, and federal registration is available. The concern is likely consumer confusion.
Trade secrets: Protect valuable information kept secret through reasonable measures. The concern is improper acquisition, use, or disclosure.
A grants permission to use IP under agreed conditions; an transfers ownership. A well-drafted identifies the protected material or rights, permitted uses, duration, territory, payment, sublicensing rules, and confidentiality duties where relevant. For use, it should also address quality standards. A cannot grant broader rights than the licensor holds.
Different IP rights can coexist in one product, so permission to use one component may not authorize use of the others. Identifying the applicable rights and their owners is therefore important when managing or using IP.