Originally wrote by James Bunts. Updated by J.D. Houvener 4/10/2019.
As you probably guessed, a LOT! … well, at least to an Intellectual Property (IP) Attorney like me.
From where I stand, the differences are MASSIVE. But to you, these terms may seem like legalese that all blends together…
Plus, with social media, news outlets, non-attorney “experts” and do-it-yourself gurus publishing videos/blogs/articles all over the internet, there is no doubt a lot of misinformation out there about IP that I hope to set straight for you here.
Intellectual Property (IP) comprises the 4 main areas of law we will cover today:
- Patents (Title 35 United States Code)
- Trademarks (Title 15 United States Code)
- Copyrights (Title 17 United States Code)
- Trade Secrets (Title 18 United States Code)
So, you’ve started a business (or at least done some serious planning) and are now looking to try and stand out among competitors and find ways to be different.
A great place to start is by analyzing the intellectual property you and your team have created.
I’ve created a VERY simple chart which shows the core 8 differences between these four areas of IP.
This chart gives you some quick answers with links to help you begin to explore each area in more detail should you wish to do so.
In addition, here is a video that explains the different types of intellectual property for more visual learners. Enjoy! 🙂
What is Sought to Be Protected?
This first inquiry is king… Once you determine what it actually is that you want protection for, the rest is easy.
So… whaddya got? 🙂
The Answer: Inventions are sought to be protected!!!
Patents grant the inventor an exclusive right, or monopoly, for a limited time on the claimed subject matter disclosed in the issued patent.
In fact, patents are such a big deal (along with copyright) that they were called out in the U.S. Constitution by our founding fathers:
Article 1, Section 8, Clause 8 of the United States Constitution grants Congress the power “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”
At the time of the Founding Fathers, the term “science” was more closely related to the term “natural philosophy” or “knowledge” of today while the term “art” was more closely related to the terms “craft” or “technique” of today.
Restating Article 1, Section 8, Clause 8 with a focus on patents:
Congress is to promote the progress of useful arts, by securing for limited times to inventors the exclusive right to their respective discoveries.
A Patent is like a SHIELD: it is a right to exclude others from making, using, offering for sale, selling the invention throughout the United States or importing the invention into the United States.
The patent system can be viewed as a reward arrangement to those who discover things that will be useful to the nation.
Patent-eligible subject matter is intended to include “anything under the sun that is made by man.” Chapter 35 of the United States Code specifies that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
Process patents are those that claim ownership over a specific method or process. The way the claims are usually laid out is as a series of steps, and if not performed in that manner and in that way, someone will not be infringing. Consequently, these tend to be more difficult to enforce.
An example of a process is the method for making cereal. This one is OLD SCHOOL… circa 1895!
This is likely the most popular of all invention types. Machine inventions (also called apparatus inventions) claim physical features, elements and the functionality they provide for one or more users.
But just because they are the most popular, doesn’t mean they are all simple! Take a look at the example below:
An example of a machine is the ice rink resurfacing machine, aka Zamboni.
Don’t forget that improvements make up the BIGGEST group of issued patents out there today. It’s true that you don’t have to come up with the earth-shattering, ground-breaking technology – just a subtle improvement on the current tech is all you need!
An example of an improvement to an article of manufacture is the improvement in paper-bag machines.
You can see in the green highlighted area Claim #1 which starts out saying, “In a paper-bag machine…” meaning they didn’t come up with the paper-bag machine at all! They found a way to
“adapt [the paper bag] to carry the folded paper beyond the front edge of the main folding blade…”
“Claim 2” goes on to claim the specifics regarding the cooperation of the main folding blade and the finger to “form the diamond fold…”
Composition of Matter
This third type of patent is when you have a molecular combination of elements that forms completely new substance. This can be solid, liquid, gas or plasma. Classically, this type of patent is for new pharmaceuticals.
An example of a composition of matter is acetyl salicylic acid, aka Aspirin.
You can see that the chemical formula must be shown along with how each element bonds or is joined with the others at a molecular level.
It is also common to describe and claim the method of forming such a combination/compound/mixture/amalgam. In this case, they go on to state:
“…A mixture prepared from fifty parts of salicylic acid and seventy five parrts of acetic anhydride is heated for about two hours…”
Additionally, business methods may be patent eligible, such as the method and system for placing a purchase order via communications network, aka Amazon’s 1-Click.
As you can tell, the “drawings” are not physical parts or items (as there are none!). Instead, there is merely a flow chart showing the information that is input or output from each functional box. Business methods (which inherently use software to be performed on a computer) follow the same methods. Here is the claim set for the same patent:
Note: upon reading the entirety of the first claim, you can see there actually has to be SEVERAL moving parts in order for there to be an infringing action. It isn’t (as media has framed it) as simple of an invention as they would have liked it to be.
Furthermore, there are plant patents for specially cultivated species of plants. P27475P2 “Ecuadorian Sativa”
For MUCH more about plant patents, requirements and process check out my blog about How to File a Plant Patent.
A major feature of design patents is the very careful arrangement of shapes and dashed lines and solid lines. What is in dashed lines is NOT claimed, but what is in solid lines IS being claimed. In the above, it’s the shape of the screen that is being claimed in this D618,677 patent.
A significant distinction for patents compared to other types of intellectual property is that the published patent documentation must enable someone of ordinary skill in the art to make and use the invention.
A patent is not enforceable until it has passed examination from the United States Patent and Trademark Office (USPTO) and has been issued.
Essentially, if you have created something you can use, it is possibly patent eligible. To get the patent, your idea must be new (cannot have already existed) or an obvious combination of existing art (to someone of ordinary skill in the art).
The Answer: Art is protected by copyright!!!
Yes, the many, many, many ways that artists express themselves… This is the VAST domain of copyright law.
Restating Article 1, Section 8, Clause 8 with a focus on copyrights, Congress is to promote the progress of science by securing for limited times to authors the exclusive right to their respective writings.
17 U.S.C. § 102 specifies that:
“copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”
Examples of works of authorship include the following categories:
- literary works
- musical works and Lyrics (separately)
- dramatic works, including any accompanying music
- pantomimes and choreographic works
- pictorial, graphic, and sculptural works
- motion pictures and other audiovisual works
- sound recordings
- architectural works.
An example of a copyrighted work is The Happy Birthday Song, which only recently passed into the public domain in 2016.
A copyright provides the owner of the copyright the exclusive right to reproduce and distribute copies, prepare derivative works and perform or display the work publicly.
To author an original work, a person must have independently created the work and the work possesses with at least some minimal degree of creativity. The author does not need to register the work in order to have the copyright (such as when posting pictures or video to the internet), but the author must register the copyright to sue another party for infringement.
The Answer: Trademarks protect brands!!!
A trademark is a word, name, logo, symbol, device or combination thereof, used to identify the source of goods or services to prospective purchasers.
Thus, trademarks allow prospective customers to weigh the reputation of the manufacturer of the goods or provider of the services. Unregistered trademarks fall under common law while registered trademarks enjoy certain advantages under the Lanham Act.
An example of a trademarked name is “NIKE,” used to identify clothing, footwear, etc. along with the “swoosh” logo. A “device” trademark could include sound, smell or color.
Examples of a sound mark include the MGM lion roar and the Lucasfilm THX theme.
While trademarks can certainly take a wide variety of forms, trademarks cannot be the essence of the product. For instance, smell marks are available, but the perfume Chanel No. 5 is trademark ineligible as it is the essence of the product.
Characteristics of a product’s packaging, such as color or shape, can also be trademarked if those features identify the source of the goods.
Additionally, specific labels, wrappers, containers, or advertising materials could be protected under trademark. In exceptional circumstances, the subject matter of a design patent can subsequently be protected under trademark protection, as in the case of Coca-Cola’s bottle having a “distinctively shaped contour” that was well-known in the market.
Although fonts cannot be trademarked, infringement could still occur when trying to imitate a trademark’s unique typeface, such as used by Coca-Cola.
A slogan or catch phrase, such as “The Greatest Show on Earth,” can also be trademarked and enforced only after acquiring secondary meaning in the market.
As trademarks acquire secondary meaning in the mark and notoriety with consumers, the marks become a valuable business asset to the mark owner that can be leveraged to create revenue through licensing agreements.
Trademarks make it easier for consumers to quickly identify the source of a given good and differentiate between similar products.
Trademark law provides remedies for infringement when a mark conflicts with the phonetic sound, appearance, meaning or commercial impression of another trademark. While registering a trademark is not required to obtain protectable rights, registering a trademark provides significant advantages over common law rights alone.
The advantages of registration include a legal presumption of your ownership of the mark, the ability to record your U.S. registered mark with U.S. Customs and Border Protection to prevent importation of infringing foreign goods, the right to use the federal registration symbol ®, the ability to bring an action concerning the mark in federal court and the use of the U.S. registration as a basis to obtain registration of the mark in foreign countries.
4. Trade Secrets
The Answer: Valuable Information is protected by trade secret law!!!
In essence, trade secret law exists to allow companies to maintain some information that is earned/gained through experience (or dumb luck) and even allow for a legal mechanism to enforce against any individual who breaches that trust.
The “breaching” of the trust, i.e. spilling of the beans is called “misappropriation” in legal parlance.
Trade Secret Misappropriation has laws on the books in EVERY state. However, most every state has adopted the uniform trade secret statute, and the federal government has now instituted the Federal Defend Trade Secrets Act (2016) [18 U.S. Code § 1836] which defines a “trade secret” very carefully as:
Don’t miss the sub-parts (a) and (b) which provide the basis for a trade secret:
- The owner of the trade secret must be taking “reasonable measures to keep such information secret”
- It is valuable economically on its own
One of the biggest things that many people don’t know is that the TYPE of information is generally unrestricted, meaning it doesn’t have to be the secret recipe or some very technical information that is complex and mysterious.
The information can be quite boring. It could be as simple as a customer list, vendor list, sell-sheet or script.
How Long Do they Last?
As mentioned above, there are 3 main types of patents available: utility, design and plant patents. Here are is duration of each in turn:
Utility Patents: 20 years from the date of filing. That means the earliest priority date. A priority date is the date in which inventor-ship is borne.
Since the passage of the America Invents Act (2013), whichever inventor files first wins the race and is awarded with patent rights. This means that if a later-filing inventor files the same or similar invention, it’s the EARLIEST filing inventor that wins.
Design Patents: 15 Years from the date of issuance. So once the USPTO “allows” the invention to pass, the inventor (and any assignees) has 15 years of exclusivity.
Plant Patents: Same as Utility Patents
Unbelievably, the answer could be forever. Of course, it is unlikely that this will be the case, as the business would need to exist forever. The premise makes sense though, as trademarks represent brands, products and slogans and are symbols of a business/enterprise. They live and die with the underlying business.
An artistic work is granted copyright as soon as it is fixed in tangible form. Once registered with the Library of Congress, 70 years + the life of the author is QUITE generous.
The reasons are mainly due to the fact that artwork generally takes a little longer than utility/design patents to be able to be monetized. It may take decades before the artwork begins to turn a profit due to the nature of art. Therefore, the lawmakers wanted to be sure the artist/estate gets rewarded for the ingenuity.
Much like trademarks, a trade secret may remain in force as long as the secret does. In other words, as long as the business’ information is a part of what makes the company special/gives them a competitive edge and meets the definition of a trade secret (see above), it will exist.
What Type of Law Governs Each?
Patents are governed solely under Federal Law. There are no state laws that create or enforce patent rights.
At a high level, patents are awarded for inventions that are novel and non-obvious by the USPTO and are enforced in federal court as well as the Patent Trial and Appeal Board. The Federal decisions are appealable to the Federal Circuit and the Supreme Court.
What Government Body? The United States Patent and Trademark Office (USPTO)
Trademarks are protected under both state and federal law as wordmarks, logos, design marks, service marks and certification marks. Among others are ways to create and protect symbols which represent a company, product and brand.
Every state has some trademark law on the books. These state-level trademarks have varying levels of authority, but all of them suffer from the limitations of enforcement within their own borders.
So much of commerce these days is “interstate,” meaning customers are purchasing products and services in states that are unrelated to the state in which the products or services are originating. In other words, whenever a company does business out of state (sells, hires employees, markets, etc.) they are competing in interstate commerce, and should seek FEDERAL trademark protection.
Thus, federal trademark registration is sought after by most modern businesses that exist online and have services/products that (even if not currently) have plans to expand to multiple states in the U.S.
What Government Body? The United States Patent and Trademark Office (USPTO)
Copyrights are registered only at the federal level.
The US Copyright Office houses all of the copyright records.
Interestingly enough, there is NO government body that awards “trade secrets” to any companies. The secrets are “trade secrets” by virtue of their ability to be enforced under a misappropriation statute (as seen above).
However, there are both state and federal statutes on the books for trade secret misappropriation.
Is there Common Law?
Common law has many definitions, but in this sense, the question is basically: Do any rights arise based on performing of activity in commerce/use without registration or any legal action being taken or by virtue of some inaction?
No. Patents MUST BE FILED in order to secure exclusive rights. There are no rights that vest in any inventor without filing with the USPTO.
Yes. Companies that use a name in conjunction with commerce and can provide evidence that products and/or services are associated with a specific name/logo and are not confusingly similar to another prior name/logo are awarded rights as of the FIRST use date.
Yes. Immediately when an artist records their origination expression in fixed tangible means, they have copyrights to that recording. The (later) registration is prima facie evidence of this creation process and the ownership therein.
Maybe. If the information that is gathered is inherently trade secret. By virtue of a prior relationship (employee-employer), a trade secret can be created by the act/process of defining the information that has trade secret value/significance.
Pre/Post Registration Markings
Okay, so you’re getting serious about IP. By just seeing something that has rights, how do you know if it’s been registered/patented?
You see all the time “Patent Pending”, which simply means that there are no rights that are associated with that product (At least not at the time of manufacturing the physical product). However, by the time you are holding the product, it very well could have issued, and there could be enforceable rights against any making, using, selling or importing of that patented product.
Once granted, patents simply bear the name “Patented”. Typically, a manufacturer will indicate the patent number next to it: “Patented 10,110,001”. You can tell if it’s a design patent if there’s a “D” in the patent number: “Patent No. D476,001”.
There is a bit of cost associated with searching and applying for registration, so there may be some resistance to seeking registration right away.
However, even before registering, you can claim some ownership of the mark by telling customers/clients/3rd parties that you intend on seeking this logo/work mark to be your trade mark. You do this by indicating (™).
This should be done immediately upon selection of a compelling design/mark.
Once registered, you will use the ® to indicate that your trademark is actually registered.
Like patents, if you can prove that a party was on notice of your rights/prospective rights in a mark and continued using/infringing, you can seek additional damages in federal court.
Before registering for copyright protection (see above), you can simply indicate that you have ownership and control of a piece of work by writing “Copyright, [Company Name] 2019”. This indicates and puts people on notice that you own the artistic expression and that you’re making a claim that no one has the right to reproduce it without your permission.
Once registered, you can indicate the work with a © that indicates that you own the registered copyright.
To a third party, there is no marking a trade secret. If a third party was reading the trade secret… it wouldn’t be a trade secret any more, right?
Okay, but INTERNALLY, the markings are quite important. They can be anything that signifies that this information is supposed to stay within the company. Such as “proprietary,” or “confidential” or “trade secret.” 🙂
Having intellectual property rights bestows on its owner the ability to be the ONLY one in the market (at least for a while – see the “how long do you have rights” section above).
Give to inventors the exclusive right to make, use, sell or import into the US.
Give to owners the ability to exclude any other business from using their mark (or any other confusingly similar mark) in commerce for the class of goods/services they sell in commerce
Give owners the exclusive right to the circulation/distribution/access/control of their recorded artwork.
Give exclusive control to the owners of valuable information as long as it remains secret
So, there you have it! A comprehensive explanation of the differences (and similarities) of the four major types of Intellectual Property (IP).
- Patents protect the functionality & design of an invention.
- Trademarks protect the brand.
- Copyrights the artwork.
- Trade secrets the information.
Do you have any other questions? What did you think of the article? Please let me know in the comments below!
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Include legal note. “Legal Note: This blog article does not constitute as legal advice. Although the article was written by a licensed USPTO patent attorney there are many factors and complexities that come into patenting an idea. We recommend you consult a lawyer if you want legal advice for your particular situation. No attorney-client or confidential relationship exists by simply reading and applying the steps stated in this blog article.