Types of Intellectual Property

Introduction

We could write a 300-page book on protecting you IP, it depends on your product and brand and technology as to what risks exist to you and the methods you could take to protect yourself. In this section, we will be focusing on the four main types of intellectual property. They are:

  • Trademarks
  • Patents
  • Copyrights
  • Trade Secrets

Trademark

A trademark is any word, phrase, symbol, design, or combination of these that identifies your goods or services. You become a trademark owner when you start using your trademark with your goods or services.  Registering your trademark with the United States Patent and Trademark Office means that you create nationwide rights in your trademark. 

In your trademark application, you may select from four possible filing bases, Section 1(a) Use in commerce basis, Section 1(b) Intent-to-use basis, Section 44(e) Foreign registration basis, and Section 44(d) Foreign application basis. In addition to the filing basis, you must also establish a registration basis, either use in commerce under Section 1(a) and a foreign registration under Section 44(e).

All trademark fees are calculated on a per class basis, making fees higher for goods or services that fall into more than one class.

There are two application forms that each have specific requirements.  The factors used to calculate the filing fee for an initial application are (1) Number of marks, (2) Number of classes, (3) Application filing option selected (TEAS Plus and TEAS Standard).

If filed in the U.S., your trademark registration will not protect your trademark in a foreign country.  Trademarks are territorial and require separate filing in each country where protection is sought.

There is an International Registration that allows trademark owners to register their trademarks in multiple jurisdictions filed through the WIPO International Bureau.

Patent

A patent is a government authority or license conferring a right or title for a set period, especially the sole right to exclude others from making, using, or selling an invention. There are three types of patents:

Application Process

There are four steps to the patent process:

  1. Determining the type of intellectual property protection that you need
  2. Determining if your invention is patentable
  3. Determine what kind of patent is needed
  4. Prepare for application strategy

Provisional Patent Application

A Provisional Patent Application allows you to file without a formal patent claim or any disclosure statement.  

There is a 12-month pendency period that cannot be extended from the date the provisional application is filed, and a provisional application can be filed up to 12 months following an inventor’s public disclosure of the invention.

A provisional application must include the filing fee and a cover sheet identifying: application as a provisional application for patent; name(s) of all inventors; inventor residence(s), title of the invention, name and registration number of attorney or agent and docket number (if applicable); correspondence address; and any U.S. Government agency that has a property interest in the application.

The provisional application papers (written description and drawings, filling fee and cover sheet can be filed electronically using EFS-Web or filed by U.S. Mail.

Nonprovisional (Utility) Patent Application

A Nonprovisional (Utility) Patent Application is considered the “regular” utility patent and is filed and then reviewed by the USPTO and then granted.  

This application is available online through the USPTO’s electronic filing system, through delivery by U.S. Mail, or hand delivery to the office in Alexandria, Virginia.  Effective November 15, 2011, applications filed by hand-delivery or mail will require an additional payment of $400 for a non-electric filing fee. 

The application must be submitted in English or be accompanied by a translation in the English language, and must include a specification, including a description and a claim, drawings when necessary, an oath or declaration, and the prescribed filing, search and examination fees. 

USPTO Patents are only effective in the U.S. and there is no “international patent” that will protect an invention across country borders.  An inventor who wishes patent protection in other countries must apply for a patent in each of the other countries or in regional patent offices. 

Copyright

A copyright is a form of protection provided by U.S. law to the authors of “original works of authorship” fixed in any tangible medium of expression.  The manner and medium of fixation are virtually unlimited. 

Under the 1976 Copyright Act, the copyright owner has the exclusive right to reproduce, adapt, distribute, publicly perform, and publicly display the work. 

No publication, registration, or other action in the Copyright Office is required to secure a copyright, rather, a copyright is secured automatically when the work is created or captured for the first time. 

Although registration with the Copyright Office is not required to secure protection, it is highly recommended for several reasons. 

The length of a copyright depends on when the work was created, published, and/or registered.  Duration also depends on whether the work was created by one or multiple individuals, as an employee or at the direction of another person or company. 

There are copyright registration tutorials made available on Copyright.gov, including a standard application, single application, group of published and unpublished works, short online literary works, etc.

STOPfakes.gov is a one-stop shop for U.S. government tools and resources on intellectual property rights, including copyright. 

Trade Secret

A trade secret is information that has either actual or potential independent economic value by virtue of not being generally known, has value to others who cannot legitimately obtain the information, and is subject to reasonable efforts to maintain its secrecy. 

All three of these elements are required for something to be considered a trade secret.  If any of these elements ceases to exist, the trade secret will also cease to exist.

Otherwise, there is not limit on the duration of time a trade secret is protected.

The Economic Espionage Act of 1996 addresses the criminalization of theft of trade secrets.  These crimes are prosecuted by the DOJ and are punishable by fines or imprisonment.

The Defend Trade Secrets Act of 2016 addresses the misappropriation of a trade secret.  U.S. courts can protect a trade secret by (1) ordering the misappropriation to stop; (2) that the secret be protected from public exposure; (3) ordering the seizure of the misappropriated trade secret.

Trade secret protection is a complement to patent protection.  As patents expire, the protection of the invention also expires.  Trade secrets keep information like data, client lists, and software confidential when a patent expires. 

The USPTO released an informative video in 2017 that provides a brief introduction on what trade secrets are, why they should be protected, and the importance they hold as intellectual property.

To establish a trade secret, every company should have a written policy in place about how employees and stakeholders handle confidential information.  This is vital due to the fact that employees are often the source of revealed trade secrets, whether it be for personal gain or inadvertently. 

Working with third parties or outside vendors should constitute a confidentiality agreement to ensure that trade secrets are protected through the transfer of information that is necessary to conduct business.

Trade secrets contribute to a company’s edge in the marketplace and should be protected as so.  Keeping certain information confidential can drive innovation and increase profits by attracting investors who are interested in your intellectual property.

Unlike other forms of IP, trade secrets do not require legal registration to be legally protected.  Instead, an internal classification system should be used to determine what information should be kept private from competitors and outside entities.