Intellectual Property

In the United States, intellectual property is protectable in the form of patent, trademark, copyright and trade secret. Patents protect the functional features of processes, machines, manufactured items and compositions of matter. Trademarks protect words, names, symbols, and logos. Copyrights protect writings, photos, music, works of art, and computer programs. Trade secrets protect, well, secrets of the trade.

Intellectual Property Comparison


 Patent Application Process

A patent can provide protection of an invention to the patent holder for a period of about 20 years. A patent is a grant by the U.S. Patent and Trademark Office (USPTO) that allows the patent owner to exclude others for a limited period of time from making, using, or selling an invention or from importing it into the U.S. Likewise, a patent owner has the right to decide who may use the invention during the time period in which it is protected, or he may sell the right to the invention to someone else. Therefore, it can be quite lucrative to seek patent protection for inventions that are not necessarily intended to be manufactured or used by the inventor or company owner itself.The first step in securing a patent is filing a patent application. The application contents are critical in defining the scope of protection should a patent be awarded on the invention, and it generally contains: the title of the invention; an indication of its technical field; background; description of the invention in clear language and enough detail that an individual with an average understanding of the field could use or reproduce the invention; drawings (if necessary to understand the parts of the invention, how the parts work together, or how the invention works overall); and the claims, which is the key information that determines the extent of protection of the invention granted by the patent office.In general, an invention is patentable if it is (1) Novel: contains at least some new characteristic that is not known in the body of existing knowledge in its technical field; (2) Nonobvious: shows an inventive step that could not obviously be deduced by a person with average knowledge of the technical field; and (3) Patentable: meets the basic criteria for patentability.

 Provisional Patent Application

A provisional patent application (PPA) is usually filed to preserve the priority date for patent protection of an invention. PPAs are not examined for content and no patent is granted on the basis of a provisional application. Rather, the PPA starts the clock on a 12-month period in which an inventor can file a regular, nonprovisional application and claim the benefit of the filing date of the provisional application.

The benefits of filing a PPA versus a nonprovisional application at the outset depend on the stage of the invention and intentions of the inventor, but they generally include: (1) Inventor can take up to a year to assess whether the invention will sell before committing to the higher cost of filing and prosecuting a regular patent application; (2) a “Patent Pending” notice can then be used to deter others from infringing on the invention; and (3) a later nonprovisional application for the same invention can claim the benefit of the filing date of the PPA, yet the PPA is preserved in confidence while the inventor considers whether to pursue a nonprovisional application.

The only requirement for a PPA is that it must adequately describe how to make and use the invention. That is, a provisional patent application must include a description of how the invention works, but it is not necessary to include many of the other application parts, including claims, that are required for a nonprovisional application. A provisional patent application consists of text (the ‘specification’) and drawings that describe how to make and use your invention. This is generally a brief document written in plain English, with none of the arcane language used in regular patent applications. Likewise, drawings submitted in the PPA can be informal as long as they—in conjunction with the written statement—show how to make and use the invention.

 Nonprovisional Patent Application

Unlike a provisional patent application, a nonprovisional application is the application that can result in a patent. To apply for a U.S. patent, the inventor–or the inventor’s attorney–files a nonprovisional patent application with the USPTO. To obtain a patent, the application must follow technical conventions and contain words and drawings to clearly: (1) demonstrate how to make and use the invention, (2) explain why the invention is different from all previous and similar developments (known as the prior art), and (3) precisely describe what aspects of the invention deserve the patent (the patent claims). This patent application will be examined by the USPTO, and will likely result in discussion between the applicant (or the applicant’s attorney) and the USPTO patent examiner.

If the application is eventually allowed, the applicant makes a payment for issuance and the patent is granted.

Trademark Application Process

U.S. Trademark Registration

Registering your trademark(s) with the USPTO is highly recommended. Generally, a business’ trademark is protected in the U.S. as soon as it is first used in commerce, even without registration. However, an unregistered mark’s rights will be very limited in geographic scope unless it is federally registered and granted nationwide protection. Trademark registration is one of the most beneficial forms of intellectual property protection for a company operating in commerce.

Companies may also-and it is suggested they do so for greater protection-register multiple marks, such as brand name, logo, stylized name, and different marks for different aspects of the company. Trademark protection may be granted for any number of aspects beyond just basic words, such as pictures comprising a logo, numbers, symbols, words in certain colors or other styles of typography.

Since brand names are critically important to a successful product, having solid domestic and international trademark protection can enhance the value of a business. Not only does trademark protection bolster the credibility of a company or product in the consumer public’s eyes, it adds value to the company’s asset portfolio, which may prove significant from startup through exit.

The costs related to trademark protection depend on how many marks and in what countries the company chooses to register. In the U.S., the fee for filing a trademark registration application is $275 per class. Trademarks are registered in different ‘classes’ depending on the product or service rendered, so, for example, trademarks for electronics and trademarks food service are different class registrations. It is recommended that marks are registered in as many applicable classes as possible to gain the most protection possible.

International Trademark Registration

When a company plans to expand internationally, registration is recommended in any country where the company plans to do business. Each country has distinct trademark laws and registration requirements, but the Madrid Protocol is an international agreement that allows companies to submit one registration application to the USPTO while simultaneously registering for any of the 86 member countries. The fee for a trademark application under the Madrid Protocol is $100 per class (in addition to the $275 per class U.S. fee), plus additional fees for each designated country.

Copyright Protection

Copyright law gives the creator of an original work protection from unauthorized use by others. Copyrightable material is any original creation in a fixed form that has some minimal level of creativity. This obviously includes literature, music, and movies, but may also be available for other tangible productions, such as original websites, designs, or written materials (pamphlets, etc.).Basic copyright protection is granted the moment the work is produced in a tangible form, but copyright registration is recommended to enhance the owner’s ability to stop others from copying and to strengthen the ability to litigate one’s rights.

The prime benefit of copyright registration is that timely registration creates a legal presumption that a copyright is valid and, if registration is completed prior to infringement by another, the registered copyright opens the door for the owner to recover damages from an infringer without proving actual monetary harm- an option not available if the material is unregistered.

The fee for registering with the U.S. Copyright Office is $35 per electronic registration. Since copyright registration is easy and inexpensive, it is recommended that any potentially copyrightable materials be registered.

Trade Secret Protection

There is no formal registration-type process for securing rights to a trade secret, as that would defeat the value of the IP itself: the fact that it is a secret. Generally, a trade secret may consist of any formula, pattern, device or compilation of information that is used in a business and that may give an advantage over competitors who do not know the trade secret. If the valuable IP-or any portion of it-is unlikely to be identified or deduced through use or deconstruction of an invention, it might be a good idea to keep that portion a trade secret rather than detailing it to the public in a patent application or otherwise.

Most importantly: Trade secrets must be secret. Anything that is public knowledge or general known in an industry cannot be claimed as a trade secret. Anything that is completely disclosed by the marketed goods cannot be a trade secret. Only people who are pledged or otherwise obligated to secrecy should know the details or even the existence of a trade secret.