Intellectual Property (IP) can be defined as a category of intangible rights protecting products of the human intellect. The extent to which companies utilize and rely upon their IP varies with the company and by industry. IP laws also vary by country and sometimes regionally. This article presents a few things every company should know about IP in the United States.
1. What are the different types of IP?
Generally speaking, there are four types of IP: patents, trademarks, copyrights and trade secrets.
- Patents – A patent is a property right granted by the U.S. government to exclude others from making, using, offering for sale or selling an invention throughout the United States or importing the invention into the United States for a period of time in exchange for the applicant’s public disclosure of the invention through the patenting process.
- Trademarks – A trademark is a word, phrase, symbol, design, color, scent or any combination thereof that identifies and distinguishes the source of goods of one business from those of others. A service mark identifies and distinguishes the source of a service rather than goods, but the term “trademark” is often used to refer to both. Examples of trademarks include the name Coca-Cola, the shape of the Coca-Cola bottle, McDonald’s golden arches, the color pink in connection with Owens-Corning’s fibrous glass insulation and Lucasfilm’s sound of “an oscillating humming buzz created by combining feedback from a microphone with a projector motor sound” (also created by a Jedi’s weapon of choice).
- Copyrights – A copyright protects original works of authorship, including literary, dramatic, musical and artistic works such as poetry, novels, movies, songs, computer software and architecture, against unauthorized copying. Copyright protection is conferred the moment the work is created and fixed in a tangible form; however, registration with the U.S. Copyright Office is recommended for a number of reasons. For example, registration establishes a public record of the copyright claim and may entitle the copyright owner to additional damages for infringement.
- Trade secrets – A trade secret is confidential information, such as a formula, process, design, instrument, pattern or compilation of information, by which a business can obtain an economic advantage over competitors or its customers. A trade secret derives independent economic value from not being generally known or readily ascertainable. Trade secret laws protect owners from the disclosure or unauthorized use of the trade secret, either by another to whom the secret has been confided under conditions of confidentiality or by someone who has obtained access to the secret by improper means. Trade secret protection does not prevent a third party from independently discovering or developing the information or duplicating and using the information once it is discovered. Examples of well-known trade secrets are the formulas and recipes for Coca-Cola soft drink, Mrs. Field’s Chocolate Chip Cookies, KFC’s 11 herbs and spices, WD-40 lubricant and Thomas’ English Muffins (to get those nooks and crannies!), as well as Google’s search algorithms and data center operations and the metrics behind The New York Times Best Seller List.
2. How long do IP rights last?
The term of a U.S. patent is generally 20 years from the date a non-provisional patent application is filed. A trademark can last as long as the mark is used properly in connection with the good or service. The term of a copyright is set by statute and depends upon the circumstances under which the work was made but typically lasts for several decades. A trade secret can be perpetual, in principle, as long as the trade secret has competitive value and is not uncovered by others.
3. What should I consider when choosing a name for my company, product, or service?
Several criteria can, and should, go into selecting a brand name. Whether there is a preexisting user and the potential strength of the name as a trademark should be among those criteria. The more distinctive a mark is, the greater its potential to be a strong trademark. There is a spectrum of distinctiveness, running from a “fanciful” or inherently distinctive term at one end of the spectrum, such as “Kodak,” which did not exist prior to its adoption, to a “generic” term such as “Camera” at the other. The more descriptive of the underlying good or service the mark is, the weaker it is as a trademark. Descriptive brands are easier to market but harder to protect because descriptive terms do not fulfill the trademark’s essential function to distinguish the product or service.
4. Does having a patent allow a company to make or use its invention?
No. A patent is an exclusionary right. Others may have patents that cover some aspect of (or “dominate”) your invention. If this is believed to be the case, and your company is using or plans to use the invention in its business, a patent attorney should be consulted to make the legal determinations necessary so that an informed business decision can be made as to how the company should proceed.
5. How do I determine what kind of IP my company may have?
If you have an established business, it is likely that your company already has one or more forms of IP that you may or may not be aware of. You may hire an IP attorney to conduct an IP audit to assess what IP assets your company has and their relative value to the company based on its current and future business objectives. An IP audit may also reveal potential risks to your company’s IP assets that could result in costly litigation with employees or third parties. Regardless of the company’s stage of growth, an IP audit can be a valuable business tool to help management make informed decisions as it seeks to effectively manage company assets.
This article is public information and has been prepared solely for education and entertainment purposes to contribute to the understanding of U.S. intellectual property law. The article reflects only the personal views of the author, is not individualized legal advice and does not reflect the views of Saliwanchik, Lloyd & Eisenschenk, P.A.
Saliwanchik, Lloyd & Eisenschenk is an intellectual property law firm that focuses on procurement and licensing of domestic and foreign patents and trademarks. It has a vibrant practice in the life sciences and engineering. Firm clients include local companies such as Axogen, Invivo and Pasteuria Bioscience, as well as international companies, such as DowAgrosciences, Hyundai Electronics Industries, LG Innotek, Merck Serono and many prestigious universities, such as the University of Florida, the University of South Florida, Oxford University and the University of Hong Kong. The firm assists members of the local and worldwide innovation community in developing strategic IP plans and securing domestic and international patent and trademark protection.
Glenn Ladwig, a partner at Saliwanchik, Lloyd & Eisenschenk, concentrates his practice in biotechnology and pharmaceutical patent law, including patent prosecution and licensing. Mr. Ladwig is a Registered Patent Attorney, Board Certified as an expert in Intellectual Property Law by the Florida Bar, and is a Certified Licensing Professional. His clients include individuals, universities, research institutions and companies, and he has served as in-house intellectual property counsel for a publicly-traded biopharmaceutical company. A graduate of Stetson University College of Law, Mr. Ladwig also has an undergraduate degree in biology from Saint Leo University and two master’s degrees from the University of Florida Colleges of Medicine and Pharmacy. Mr. Ladwig is on the Board of Directors of BioFlorida, the statewide trade association for the bioscience industry and is former co-chair of the organization’s Northeast Chapter.