Protection for Your "Million Dollar Idea"
by Mila S. Leonard

  
The phrase “intellectual property” is an umbrella term that denotes the field of law geared towards the protection of your ideas, inventions and creations.  There are three categories of intellectual property (IP) created by statute and recognized in the law: patents, copyrights, and trademarks.  While IP law is extremely detailed and complex, there are some basic principles that can have practical application for you as you run your business, write a book or finish the invention that will make life easier for everyone (and your pocketbook, too). 

Patents

A patent is generally associated with an invention or process.  The categories of patentable material, and other procedures governing the application process and qualifications for a patent, are contained in Title 35 of the United States Code.  In the not-so-recent past, if an invention or process did not fall squarely within one of the categories in the Code, there was no way to obtain a patent for the invention.  But recently, these categories have been “expanded” and patents have been granted for inventions that not long ago would have been turned away.  Among them, patents have been granted to an algorithm and a business method for tracking client accounts.

Issuance of a patent from the U.S. Patent and Trademark Office (U.S. PTO) grants a property right to the inventor for 20 years from the date on which the patent application was filed (subject to some exceptions).  This right is, as the statute states, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States.  The patent does not grant the right to make, sale, use, or offer the invention for sale, but instead grants the right to exclude others from using, making, selling, offering for sale or importing the invention.

The time from filing to receiving a patent is somewhat lengthy and typically takes 18-20 months.  The total cost of obtaining a patent will vary depending on the type of patent for which you are applying, the detail required in the application and other factors that will become apparent as the application process moves along.

The bottom line?  Don’t be discouraged from filing an application with the U.S. PTO simply because you are unsure if your invention/process falls within one of the statutory categories.  That ground-breaking patent may be yours for the taking with some time, effort and money.

Copyrights

A copyright protects “original works of authorship” including literary, dramatic, musical, pictorial and artistic works such as poetry, novels, songs, and computer software.  Protection is also given to architectural works created on or after December 1, 1990, or an architectural work that was unconstructed and embodied in unpublished plans or drawings on December 1, 1990.  Among the rights granted to the copyright owner by the Copyright Act (found in Title 17 of the U.S. Code), are the exclusive right to reproduce or distribute copies of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly. 

Registration is generally voluntary—your work is automatically protected by copyright the moment it is created and fixed in a tangible form.  But we recommend that you register your work for a number of reasons:

·         Registration places the facts of your copyright on the public record, and you will receive a certificate of registration. 

·         Registration is required before you can file an infringement suit for works of U.S. origin. 

·         If registration is made within 3 months after publication of the work or prior to an infringement of the work, statutory damages and attorney’s fees will be available to you as the copyright owner in court actions.  Otherwise, you will be limited to an award of actual damages and profits. 

·         If registration is made before or within 5 years of publication, it will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate.

·         And, finally, registration allows you to record the registration with the U.S. Customs Service for protection against the importation of infringing copies.

 The requirement of a copyright notice was eliminated effective March 1, 1989 when the U.S. adhered to the Berne Convention.  The form of notice for visually perceptible works should contain all three of the following elements:

1.     The copyright symbol © , or the word “Copyright,” or the abbreviation “Copr.”; and

2.     The year of first publication of the work; and

3.     The name of the owner of the copyright in the work (an appropriate, recognizable abbreviation is acceptable.

For example: © 2000 John Doe

As with registration of your copyright, we recommend placing a copyright notice on your works because the notice informs the public that the work is protected.  Additionally, in the event that your work is infringed, a proper notice of copyright will prevent the infringer from asserting a defense of innocent infringement in mitigation of actual or statutory damages (subject to an exception).

Trademarks

A trademark (™) is a distinctive word, name, logo or phrase that is used to identify the source of the goods and to distinguish them from the goods of others.  A trademark can also consist of a sound, smell, color or shape that makes a non-functional object unique and distinguishable.  Common examples of trademarks include Nike apparel, the sound of a Harley-Davidson motorcycle, and Safeway supermarkets. 

Trademark law (found in Title 15 of the U.S. Code) prevents others from using a similar mark (or phrase, etc.) which would confuse consumers.  It also allows you to recover money damages from someone who used the mark knowing that someone else already owned it.  It does not, however, prevent others from selling the same goods or services under a clearly different mark.

To register a trademark with the U.S. PTO, you (as the mark’s owner) must first put the mark into use “in commerce that Congress may regulate.”  This means that the mark must be used on a product (or service) that crosses state, national or territorial lines.  When the U.S. PTO receives an application, the first step is to look at whether the trademark is the same or similar to an existing mark used on similar goods or services; whether the mark is on the list of prohibited or reserved names; whether the mark is generic; and whether the mark is distinctive enough to qualify for protection.  The mark must pass these requirements before the application can proceed on toward successful registration.

Conclusion

While trademark, copyright and patent laws generally do not overlap, there are some cases where a design may be subject to patent, trademark and copyright protection all at the same time.  Cook Schuhmann & Groseclose, Inc. can help you figure out which category, or categories, of intellectual property law offers the best protection for your idea or invention.  We can also help you enter into licensing agreements and enforce your intellectual property rights.

© 2000 CS&G, Inc.