The term Intellectual Property is a specialized area of law that has been defined in numerous ways. In essence, the term refers to a creative work that is manifested in a tangible form which is subject to protection by law. These “intangible interests” can be the most valuable business assets of a company which can be bought, sold or licensed for profit. The traditionally recognized forms of intellectual property are trademarks (including, domain names that function as trademarks) copyrights, patents, and trade secrets.
A trademark is any term, design, number or combination of these elements applied to goods or services that allows the consumer to identify the source of the goods or services. A mere trademark has no inherent value. Its value is the “good will” that results from consumer association of the mark in connection with a particular company whose product or service is in the marketplace. Put another way, a trademark has no value without its good will. You could have a valid trademark that has no vaule. A service mark is a trademark, but the term refers specifically to a mark used to identify the source of one’s services. There is no legal difference between the two.
Copyright protects the expression of original works of authorship fixed in a tangible medium of some permanence. This category includes literary, dramatic, musical, artistic, certain computer programs, and semi-conductor mask works; that have been “fixed” in a tangible medium of some permanence. The concept of copyright and infringement is complex and often confusing. Absent a statutory exception such as “fair use,” one must obtain written permission from the creator of an original work of authorship to reproduce the creator’s work.
The “fair use doctrine” embodied in the Copyright Act of 1976, allows for the limited use of another’s original work of authorship including quotes, for purposes such as commentary, criticism, news reporting and scholarly reports. But for this exception, any unauthorized use would be an infringement of the author’s rights in his or her original work of authorship. With certain exceptions, copyright endures for the life of the author plus 70 years. There is no renewal and at the expiration of the term, the work goes into the public domain for all to use. Registration, while not required to perfect rights, provides public record notice of ownership and is necessary to maintain a lawsuit for infringement in federal court.
A patent is the grant of a property right by the federal Government to the inventor. The United States Constitution authorizes Congress to provide for patents to encourage useful inventions. A patent confers on its owner or “patentee” a monopoly (14 years or 20 years depending on the type of patent) to exclude others from making, using or selling the patented invention during the effective term of the patent.
There are three types of patents: (1) utility patents for new and useful processes, machines, manufacture compositions, or improvements of them – 20-year term, (2) design patents for new, original, and ornamental designs for an article of manufacture – 14-year term, and (3) plant patents for new and distinct, invented or discovered asexually reproduced plants – 20-year term. Utility patents comprise approximately 90% of all patents issued. The patentable part of an invention described in the patent application is referred to as a claim.
Unlike the nominal application fees for registration of trademarks and copyrights, obtaining a patent can be very expensive, and the invention will be disclosed and made a matter of public record in the patent application and any subsequent grant document issued. The initial preparation of an application by an attorney licensed to practice before the United States Patent Office can be up to $10,000 or more. Because of the costs involved, the inventor should address the following before embarking on this process:
(1) Hire a patent attorney with experience in the inventor’s industry;
(2) obtain a patent opinion from the attorney to determine if there are patentable claims to pursue;
(3) determine if the claims, even if arguably patentable, are not so narrow as to make them unprofitable for the duration of a patent grant; and
(4) balance the value of disclosing the invention to obtain a monopoly against the value of maintaining the secrecy of the invention, or simply placing it in the marketplace without any patent or trade secret protection.
Intellectual property is a valuable part of any business. Understanding and protecting intellectual property rights is one way that a business, big or small, can maximize its value and protect its business market. The most valuable businesses in the world have been built on the value of their inventions, creative works, or brand names and protecting the intellectual property rights associated with them. If you need assistance in establishing or protecting your intellectual property, please contact Andy Zulieve at Skelton Taintor & Abbott.
This article is not legal advice but should be considered as general guidance. You can contact us at 207.784.3200. Skelton Taintor & Abbott is a full service law firm providing legal services to individuals, companies, and municipalities throughout Maine. It has been in operation since its founding in 1853.