Intellectual Property, A Primer
Intellectual Property, A Primer
by E. Milton Wilson
SCORE of Hawaii
A SCORE counselor at times may receive a question about some aspect of so-called intellectual property (IP). Rather than saying, “Sorry, but that is outside my area of expertise,” in many cases you can point the client towards a potential solution to their needs. The Federal IP web sites are excellent and will supply information that will answer the vast majority of client questions. These, and other appropriate sites, are listed below, along with a very brief summary of the fundamentals of the IP area. Always keep in mind that a specialization within the legal profession is that of Patent Attorney and it is essential that you inform the client that (1) you are not a lawyer; (2) the information you are supplying is of a generalized nature as could be found in lay publications and templates; and (3) if written documents are required, or if any litigation is involved, clients should engage the services of a licensed Patent Attorney or other legal counsel as appropriate.
SCORE Sites (Good summaries by patent attorneys of the Phoenix and Tucson Chapters)
http://tenonline.org/sref.df1.html
http://tenonline.org/sref/jp1.html
U.S. Government Sites
www.uspto.gov (National site for all forms of IP)
www.copyright.gov (National site for copyright information only)
www.uspto.gov/web/offices/tac/doc/basic (Basic facts on trademarks)
www.uspto.gov/patft/index.html (Search of U.S. patents)
The Sub-categories of Intellectual Property
Patents – There are two basic forms of patents, Utility and Design. (There are also Plant Patents, but these will be ignored here.) The first named is the most common and concerns inventions related to one of the following: a process, a machine, a means of manufacture, a composition of matter, or an improvement of an existing idea. A Design Patent is issued for a new and original design that is to be used as an ornament for a manufactured article; it does not improve the functionality of the article. A patent is issued by the U.S. Patent and Trademark Office (USPTO) and allows the patent holder to maintain a legal monopoly for a defined period (20 years after the application date for a Utility Patent and 14 years from the date of issuance for a Design Patent) on the use and development of an invention. A Utility Patent must offer something new and novel, and be non-obvious. The USPTO must establish that the inventor has devised a new development in at least one or more of its claimed constituent elements as of the date of conception. With more than 7 million U.S. patents now having been issued, this novelty is far more difficult to achieve than the average amateur inventor realizes. There have been a number of above average inventors approach SCORE for business advice, but unless you are
quite familiar with the world of inventions, you probably should not comment on whether you think the proposed idea is patentable. If you can cite a product you have seen physically, or might have noticed in an ad or media publication, and it is at all similar to the proposed idea, you will be doing the client a favor by informing him or her of this fact so that further investigation might be made as part of their legally required search for proof of novelty.
Trademarks – A trademark or a service mark is a distinctive word, phrase, logo, graphic symbol, or other device that is used to identify the source of a product or of a service. It is used to distinguish it from competitors. Some examples of trademarks are Microsoft for software, Coca-Cola for beverages, and SCORE for business counseling. The mark can be more than just a word, with shapes, letters, numbers, sounds, colors, and even odors falling within the protection of the trademark system. When competing businesses adopt similar names or logos, the rules for resolving these disputes favor whichever business can prove it was first to use the name on a category of goods within a geographic area. Trademark laws are generally considered a subset of unfair competition laws. While you can attempt to defend your trademark through proof of its use over the years, it is far safer to register the mark with the State or Federal government. In the latter area, again it is the USPTO that handles this; it may be done electronically for a fee of $325. The main combined site or the trademark only one listed above are both quite excellent. The duration of a Federal registration is now ten years and it may be renewed indefinitely for additional ten-year periods by timely filings.
Copyrights – This area of IP is probably more misunderstood than any other element of intellectual property. The U.S. Constitution itself states that Congress can pass laws that, for a limited time, protect writings “to promote the progress of science and useful arts.” Laws enacted have greatly expanded the definition of “writings” and generally concern “original works of authorship fixed in any tangible medium of expression.” Works are generally considered to include literary works (books, articles), performing arts works (a play), sound recordings (a song), serials and periodicals (newspapers and magazines), and visual arts (a painting or sculpture). Software is now included within these protection laws, but it is an area of increasingly complex litigation and SCORE clients should properly be referred to a specialist attorney if they seek advice in this area. Works that contain no originality cannot be protected. Formulas, standard calendars, rulers, and scientific tables are examples of items that cannot be copyrighted (adding some original art to a calendar would make it protectable however). Titles, slogans, ideas, and symbols also cannot be protected. When a work is able to be copyrighted, the process is essentially automatic. As these words are being placed within this SCORE document (and provided that I am not considered a Government employee), protection is given to the words and the way that they are arranged. The reason to seek Federal Registration is to give other persons notice that you have and claim a copyright; it serves as an officially dated record of your claim in case there is a later infringement (unapproved copying) of your work. It also gives you additional protection from the U.S. Customs Service against the importation of copies of your copyrighted work. Generally the cost for registration is now $35 and protection is given for the life of the author plus 70 years.
The “circle c” puts the world on notice that you claim a copyright, usually used in this form: © Copyright 2008 E. Milton Wilson.
