As discussed in our first post in this series, there are 4 main types of IP: patents, trademarks, copyrights, and trade secrets. All are valuable and all are different. In our previous post we urged you to “USE” your IP – that is, understand it, secure it, and enforce it.
Today we are focusing on understanding the key differences between these 4 types of intellectual property, and how you can determine which type(s) are the best fit for your needs.
The Four Types of Intellectual Property
Broadly speaking:
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- Patents protect inventions and innovations and can be obtained for “any new and useful process, machine, manufacture, or composition of matter”. Patent protection typically extends for 20 years following the filing of the application (certain types of patents, for example, design patents, have shorter terms). To be effective, patents must be filed with the United States Patent and Trademark Office (the “USPTO”).
- Trademark rights protect IP such as brand names, logos, and slogans, and can protect either word marks or design marks. Trademark rights arise from usage, not registration. That is, simply by being the first user of a mark you gain some rights of ownership. However, marks that rely solely on usage (so-called “common law” marks) provide a very limited scope of protection. By contrast, marks that are both used and registered with the USPTO provide a much broader scope of protection and are easier to enforce against other potential users. Trademark rights can be continued for as long as the mark is in use (for a federal registration, that use must be in inter-state commerce).
- Copyrights provide protection to original works of authorship, such as literary, artistic, or musical creations. Specifically, the Copyright Act of 1976 defines a copyright as “”original works of authorship fixed in any tangible medium of expression.” As with trademarks, copyrights arise from use, but registration with the U.S. Copyright Office makes enforcement easier. Generally, copyright protection extends for the life of the author plus 70 years; however, works created by an employee in the course employment can be protected by copyright for 95 years from the year of its first publication or a term of 120 years from the year of its creation, whichever is shorter.
- Trade Secrets preserve valuable business information, such as formulas, processes, or customer lists, and are only protected so long as they remain confidential. There is no system to register a trade secret – rather, protection relies on your actions to protect the information. As with a trademark, a trade secret can be protected for an indefinite period, so long as it remains secret.
One Idea; Multiple Intellectual Property Implications
It is important to note that what, at first glance, appears to be a single piece of intellectual property may have different aspects of IP protection. Assume, for example, that you have developed a proprietary piece of software. The name or logo you give you to the software would need trademark protection, while the source code itself would be entitled to copyright protection as an “original work of authorship”. The process or functionality of the software could qualify for either patent protection or trade secret protection. Unfortunately, patent protection and trade secret protection are fundamentally incompatible.
If you trademark only the name, a person could design similar software under a different name without repercussion. A copyright would protect the source code, but only exactly as it is written. If similar code could be developed and still perform the same essential functions, a copyright would not protect you. Nor would a copyright protect you from an individual making use of your name or logo.
When it comes to protecting the essential function of the software, either a patent or trade secret protection may be best. As stated above, however, you cannot have both. This is because patent law requires disclosure – the application must describe the invention in such a way that someone with ordinary skill in the field would understand how to make and use the invention. By contrast, trade secrets must be kept secret in order to enjoy protection.
Which IP is the Best IP?
There is no one answer as to which is “better”; rather, it is dependent on your particular goals and circumstances. Patent applications can be time consuming and expensive, and a patent offers protection for a maximum of 20 years. However, patents do protect against reverse engineering and independent development – that is, once you have a patent, even someone independently developing a similar concept could not use it. By contrast, trade secrets do not protect against independent development or reverse engineering, only against misappropriation, but the protection extends indefinitely. Maintaining a trade secret is an immediate and comparatively inexpensive process (requiring only the costs of confidentiality and security measures) and provides protection so long as the information remains a trade secret.
IP protection is a rich tapestry of potentially interconnected moves. When you need assistance determining which method or methods are best for the protection of your IP, or in obtaining such protection, the team at Way Law is here to help!