Intellectual Property Primer: The Difference Between Patents, Copyrights and Trademarks

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On April 26 every year, the World Intellectual Property Organization celebrates World Intellectual Property Day in order to promote discussion of the role of intellectual property (IP) in encouraging innovation and creativity. IP refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce. IP is protected in law by patents, copyright and trademarks, which enable people to earn recognition or financial benefit from what they invent or create. With the upcoming celebration of World IP Day, we thought it would be a good time to present a few IP basics and perhaps eliminate some of the confusion related to common terms.

Patents
A patent is a property right granted by the U.S. government to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted. By granting the inventor a temporary monopoly in exchange for a full description of how to perform the invention, patents play a key role in developing industry around the world. Once the owner of an invention has been granted a patent in any particular country, they then have the legal authority to exclude others from making, using, or selling the claimed invention in that country without their consent, for a fixed period of time. In this way, inventors can prevent others from benefiting from their ingenuity and, ultimately, sharing in profits from the invention, without their permission.
A patent may be applied for only in the name(s) of the actual inventor(s). “Utility” patents are provided for a new, nonobvious and useful:
• Process
• Machine
• Article of manufacture
• Composition of matter
• Improvement of any of the above
In addition to utility patents, encompassing one of the categories above, patent protection is available for ornamental design of an article of manufacture or asexually reproduced plant varieties by design and plant patents. The following cannot be patented: laws of nature; physical phenomena; abstract ideas; literary, dramatic, musical, and artistic works (these can be copyright protected-see below); and inventions that are not useful (such as perpetual motion machines) or that may be offensive to public morality.
To determine if an invention has been publicly disclosed and thus is not patentable, a search of all previous public disclosures including, but not limited to previously patented inventions in the U.S., should be conducted. A search of foreign patents and printed publications should also be conducted. The process of obtaining the grant of a patent begins with the preparation of a specification describing the invention. That specification is filed at a patent office for examination and ultimately a patent for the invention described in the application is either granted or refused. It is highly recommended that an IP lawyer be engaged for the performance of a patentability search. An advance patent novelty search by a lawyer also helps determine whether an invention is novel and whether it is worth pursuing patent protection. The lawyer can also perform a patent infringement search to determine whether the invention will infringe someone else’s patent. After a patent application is filed, the United States Patent and Trademark Office will conduct a search as part of the official examination process. A U.S. patent protects an invention in the U.S. only. Under the Patent Cooperation Treaty, an inventor can file a single international patent application in one language with one patent office in order to simultaneously seek protection for an invention in up to 117 countries throughout the world. Utility and plant patents are granted for 20 years. Design patents last for 14 years.

More information on the patenting process can be found at http://www.uspto.gov.

Copyright
Copyright is a form of protection grounded in the U.S. Constitution and granted by law for original works of authorship fixed in a tangible medium of expression. Copyright covers both published and unpublished works. Copyright protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way in which these things are expressed. Copyright protection occurs the moment the work is created and fixed in a tangible form that it is perceptible either directly or with the aid of a machine or device. Copyright registration is voluntary and a legal formality intended to make a public record of the basic facts of a particular copyright. It is only necessary to register in order to file a lawsuit for infringement of a U.S. work. The Berne Convention provides rights harmonized at an international level with many other countries without a requirement for national registration. Many choose to register their works because they wish to have the facts of their copyright on the public record and have a certificate of registration. In the United States, the Library of Congress officially registers copyrights which now last for the life of the author plus 70 years. No one else can profit or copy an idea without permission during this time period.

More information on copyrights can be found at http://www.copyright.com.

Trademark or Service Mark
A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. Goods are physical commodities used in interstate commerce. Goods can be natural, manufactured, or produced.
A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Services are intangible activities, which are performed by one person for the benefit of a person or persons other than himself, either for pay or otherwise.
Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application. However, owning a federal trademark registration provides several important benefits:
• Public notice of the claim of ownership of the mark;
• A legal presumption of ownership of the mark and the exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
• The ability to bring an action concerning the mark in federal court;
• The use of the U.S. registration as a basis to obtain registration in foreign countries;
• The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
• The right to use the federal registration symbol®; and
• Listing in the United States Patent and Trademark Office’s online databases.
Rights to use a mark are claimed by the use of “TM” (trademark) or “SM” (service mark) designation which alert the public to the claim of a “common-law” mark. No registration is necessary to use a “TM” or “SM” symbol and these symbols may be used even if the USPTO refuses to register a mark. Those symbols put people on notice that there is a claim to the rights in the mark, although common law does not convey all the rights and benefits of federal registration. The federal registration symbol “®” may only be used after the USPTO actually registers a mark. The registration is valid as long as all post registration maintenance documents are timely filed at prescribed dates during the years after registration is granted.
Most applicants use an IP lawyer for legal advice regarding use of their trademark, filing an application, and the likelihood of success in the registration process. Using an IP lawyer can save future costly legal problems by conducting a comprehensive search of federal registrations, state registrations, and “common law” unregistered trademarks before an application is filed because not all trademarks are federally registered. Key considerations in filing an application are the depiction of the mark and the identification of the goods and/or services to which the mark will apply.

More information on trademarks and service marks can be found at http://www.uspto.gov/trademarks.

Trade secrets are also a form of IP. Trade secrets are methods, skills or techniques that are not known to the public and that give the organization practicing them an advantage in their trade. Owners of trade secrets seek to protect trade secret information from competitors by instituting special procedures for handling it, as well as technological and legal security measures, which are often in the form of non-disclosure agreements with employees and business partners.
More information on trade secrets can be found in the C3 Advisors article, “Trade Secrets: Protective Measures Every Business Should Know About.” For a copy of the article, contact Deb Deutsch at debd@c3advisors.com.

C3 Advisors, LLC
April 17, 2014

C3 Advisors converges the three essential business elements—Process, People and Technology—to help businesses thrive, not just survive, by improving profitability and reducing risk. Our services help our clients improve process optimization, people integration and technology maximization.
Process Optimization focuses on establishing formalized operational functions that facilitate increased productivity, mitigate risk, and provide the foundation for optimal profitability.
People Integration addresses staffing and workforce issues that are critical to the success of continually cost efficient, low risk, and productive processes.
Technology Maximization ensures the ROI on a technology investment is fully realized through complete use of systems functionality and business intelligence.

We have specific expertise in post-acute healthcare, technology and service companies. Please visit our website at http://www.c3advisors.com and for direct information about how C3 Advisors, LLC can assist your business, please call us at (630) 510-3181 or e-mail us at debd@c3advisors.com.
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