• Intellectual Property: An Overview -- Trade Secrets, Patents, Copyrights, Trademarks
  • October 13, 2006
  • Law Firm: Jackson Walker L.L.P. - Dallas Office
  • Intellectual property is a creation of the mind rather than a tangible object. It includes inventions, literature, music, art, and symbols, names, images, and designs used in commerce to create goodwill and recognition. Many countries give inventors, authors, and artists rights that are protected by patent, copyright, trademark, and trade secret laws. The following information will help you determine what protection is best for your intellectual property.

    TRADE SECRETS

    • A trade secret is any formula, pattern, device, or compilation of information that is used in a business, kept secret, and gives opportunity for competitive advantage. It may be a customer or price list, chemical formula, manufacturing process, business plan, or machine design.
    • Essential in determining trade secret eligibility is the extent to which an entity guards the secrecy of the information. Those measures must be reasonable for the circumstances.

    • As long as an entity’s trade secrets are secret, they are protectable indefinitely, but unrestricted access to secrets by employees without a need to know can terminate those trade secret rights.

    • Properly written employment contracts outlining an entity’s information disclosure policy may help protect against unauthorized use of trade secrets.

    • Appropriation of trade secrets by breach of contract or confidential relationship is illegal, and may result in injunctions and monetary damages.

    PATENTS

    • A utility patent may be obtained for a 20-year term for a new and useful process, machine, article of manufacture, composition of matter, or any new and useful improvements to those items.

    • A design patent may be obtained for a 14-year term for a new, original, and ornamental design for an article of manufacture.

    • A plant patent may be obtained for a 20-year term for a new and distinct plant variety that is asexually reproduced.

    • A patent grants its owner the right to exclude others from making, using, selling, offering to sell, or importing the object of the patent.

    • The basic criteria for patentability are: (1) usefulness, (2) novelty, and (3) non-obviousness. All three must be satisfied.

    • A patentability search can help evaluate the probability of obtaining patent protection for an invention.

    • If a patent application is not filed within one year from the date the invention was in public use or offered for sale within the United States, or within one year from the date the invention was described in a printed publication anywhere in the world, the applicant may be prohibited from obtaining a patent.

    • A patent application can be filed in the U.S. Patent office only by the inventor or an agent who has been previously approved by the Patent Office.

    • Upon filing, the applicant may claim “Patent Pending.”

    COPYRIGHTS

    • Copyrights give creators certain rights in the following:

      • literary works;

      • musical works including any accompanying words;

      • dramatic works including any accompanying music;

      • pantomimes and choreographic works;

      • pictorial, graphic, and sculptural works;

      • motion pictures and other audiovisual works;

      • sound recordings; and

      • architectural works.

    • To be protectable, a work must be original and contain some creativity.

    • Individuals’ copyrights exist for the life of the creator plus 70 years.

    • Copyrights in works prepared by employees within the scope of their employment are owned by the employer, and exist for 95 years after first publication.

    • Proper copyright notice (© Owner Year) on published works advises others of a copyright claim.

    • Timely federal copyright registration gives the owner an advantage in legal proceedings. It constitutes evidence of copyright validity and of the facts stated in the certificate.
    • Registration is nearly always a prerequisite to suing an infringer and recovering statutory damages and attorney’s fees.

    • A person or entity can contract with others for preparation of a copyrightable work, and create an assignment by which that person or entity owns all rights in that work.

    • A claim of copyright infringement generally requires proof that the infringer had access to the copyrighted work, and that there is a substantial similarity between the infringing and protected work.

    TRADEMARKS

    • A trademark is a word, name, or symbol used singly or in combination to identify and distinguish the mark owner’s goods or services from those of another.
    • Conducting a pre-use trademark search can be a valuable aid in avoiding conflict with existing mark owners.

    • Reserving a corporate name, obtaining a corporate charter, or registering a domain name does not create trademark rights.

    • Application for federal trademark registration offers certain legal advantages. Registration is evidence of exclusive ownership rights.

    • To avoid loss of valuable rights, a trademark must be used correctly. For example, a trademark should not be used as a noun, a verb, or as a possessive, but it may be used as an adjective. Otherwise, the mark may become generic. 

    • A trademark may be infringed if someone, subsequent to registration by the owner, uses a word, name, or symbol that is likely to cause confusion, mistake, or deception as to the source of the marked goods or services.
    • Unregistered U.S. trademarks may be marked with “TM”; registered U.S. trademarks may be marked with ®.

    • If an owner does not enforce his or her trademark rights, they may become abandoned.