Intellectual property is intangible property that is derived from human intellect/innovation, has value and is protected by law. The main intellectual property rights in the United States are: patents, trademarks, copyrights and trade secrets.
A patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent grants the inventor the right to exclude others from using their invention.
Patent protection derives from the federal Patent Act codified in Title 35 of the United States Code, as amended by the Leahy-Smith America Invents Act (AIA). Patent protection is authorized by the U.S. Constitution, in Article One, section 8, clause 8, which states: “The Congress shall have power … To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries…” There is no common law patent protection in the United States.
Types of Patents
In the United States, patents are obtained by filing an application at the US Patent and Trademark Office (USPTO). The USPTO issues three distinct types of patents: utility patents, design patents and plant patents.
- Utility patents. These protect any novel, useful, and non-obvious process, machine, article of manufacture, or composition of matter, or any improvement of any of the foregoing. The term of a utility patent depends on its filing date: (1) for patent applications that were pending or still in force on June 8, 1995, the patent term is the longer of either 17 years from the issue date or 20 years from the earliest filing date; and (2) for applications filed on or after June 8, 1995, the patent term is 20 years from the earliest filing date.
- Design patents. These protect new, original, and ornamental designs. The term of protection of a design patent is 14 years from the date of issue. In some other jurisdictions, design patents are known as registered designs.
- Plant patents. These can be issued for distinct and new varieties of plants which have been asexually reproduced. The term of a plant patent is the same as that of a utility patent.
Multinational Patent Filing and Protection
The United States is a party to the World Intellectual Property Organization (WIPO) and the Paris Convention of 1883. This means that a United States patent applicant may be entitled to priority rights based on the filing of a patent application for the same invention in a foreign country within the preceding 12 months.
In addition, the United States is a party to the PCT. Under the PCT, an applicant can initially file a single application in the Receiving Office of a PCT contracting state to begin a coordinated multi-jurisdiction patent application process. This PCT filing has the effect of establishing a priority date respected by each of the PCT contracting states and, as of 2004, automatically designates all of the PCT contracting states as jurisdictions in which patent protection may be pursued. The applicant then receives an additional 18 months in which to prepare and file its patent applications directly in all, or a subset, of the designated PCT contracting states.
Trademark law protects the rights of businesses that use distinctive names, designs, logos, or slogans to identify and distinguish their products and services. This protection can last as long as the business uses the trademark in commerce.
Trademarks are protected under federal statutory law under the Lanham Act. Owners can obtain federal registrations for their trademarks in the USPTO. Trademarks also are protected under state statutory and common law. Owners can obtain registrations in the state trademark offices of many states where protection is sought.
If possible, trademarks should be federally registered, as federal registration provides the registrant with several advantages, including presumptions of ownership and the exclusive right to use the mark throughout the United States on or in connection with the goods and services listed in the registration.
A federally registered United States trademark must be: (1) distinctive (either inherently or through acquired distinctiveness); (2) non-functional; and (3) used in commerce (to identify the source of a good or service). Types of protectable marks include: (1) words, (2) logos, (3) symbols, (4) designs, and (5) trade dress, such as product packaging. An internet domain name can be registered as a trademark with the United USPTO under certain circumstances.
Protection lasts ten years and is renewable indefinitely in ten-year increments if the mark continues to be used in commerce.
Owners of federally-registered marks should always use the traditional ® designation. Registrants who fail to give notice of registration may not be able to collect profits or damages for infringement unless the defendant had actual notice of registration.
Multinational Trademark Filing and Protection
The Madrid System is a multinational trademark filing and registration system operating under the provisions of two international trademark treaties, the Madrid Agreement and the Madrid Protocol. The United States is a party to the Madrid Protocol, but not the Madrid Agreement. Under the Madrid System, a trademark owner can seek to register its mark in nearly 100 countries using a single international application filed in its home country’s trademark office that is forwarded to WIPO’s International Bureau.
Under the Paris Convention of 1883, trademark filings in a signatory country that are made within six months of filing in another signatory country are treated as if filed on the date of the original filing. A qualified foreign applicant who owns a valid registration from the applicant’s country of origin can obtain a United States registration on the basis of that foreign registration, also subject to certain conditions.
Copyrights are granted for original creative expressions produced by composers, artists, designers, programmers and other authors. Copyright does not protect ideas and facts, only the manner in which those ideas and facts are expressed.
Under the federal Copyright Act of 1976, copyright automatically vests in protectable works on creation and an author is not required to register a copyright to obtain legal protection for the work. However, with certain limited exceptions, copyrighted works must be registered to bring an infringement action in court. Registration is required to obtain other benefits, such as evidentiary advantages in infringement litigation and the availability of statutory damages and attorneys’ fees.
A work is protected if it is original and fixed in a tangible medium of expression. The different protectable works include: (1) literary works; (2) dramatic works, including any accompanying music; (3) musical works, including any accompanying words; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and audiovisual works; (7) sound recordings; and (8) architectural works.
Duration of Rights
For works created by an individual on or after January 1, 1978, the term of a copyright, whether registered or unregistered, is the duration of the author’s life plus an additional 70 years. For a joint work prepared by two or more authors on or after January 1, 1978 that is not a work made for hire, the term of copyright is 70 years after the last surviving author’s death. For works made for hire and works created anonymously or pseudonymously, the term is the shorter of 120 years from the date of creation or 95 years after first publication.
For works created before January 1, 1978, the term varies between 70 years and 120 years from the publication of the work, depending on: (1) whether the work was registered, or its copyright renewed; (2) when and whether it was published; and (3) when it was created. For unpublished works created before January 1, 1978, the term is life plus 70 years if not published before 2003, or until 2048 if published between January 1, 1978 and January 1, 2003.
For registered or unregistered works first published on and after March 1, 1989, use of the traditional copyright notice, is optional. However, use of the copyright notice is often beneficial and provides certain additional evidentiary advantages in litigation.
United States Protection of Foreign Works
The United States Copyright Act extends protection to unpublished works without regard to the nationality or domicile of the author. As a result of the various copyright treaties to which the United States is a party, the United States Copyright Act protects published works authored by foreign nationals and domiciliaries if they comply with certain requirements.
In the United States, protected confidential information is generally referred to as a trade secret.
Trade secrets are protected in the United States at the federal level under the Economic Espionage Act, which was enacted in 1996 and significantly amended on May 11, 2016 by the Defend Trade Secrets Act of 2016 (DTSA). Until the DTSA, private enforcement of trade secrets was governed exclusively by state law. The DTSA supplements but does not preempt state law.
All states, except New York, as well as the District of Columbia and the United States Virgin Islands, have adopted a version of the Uniform Trade Secrets Act (UTSA).
Generally speaking, a party’s confidential information is protected as a trade secret if: (1) the information is not generally known or ascertainable (that is, secret); (2) the party derives economic value or business advantage from the fact that the information is secret; (3) the party takes reasonable efforts to preserve the information’s secrecy.
There is no registration procedure for trade secrets, nor is there any legal notice that must be attached to trade secrets. However, the owner should mark all trade secrets as “secret” or “confidential” to show an effort to preserve secrecy. Protection lasts until the information is publicly available or until the owner no longer derives economic value or business advantage from its secrecy.
United States Protection of Foreign Trade Secrets
Protection in the United States of the trade secrets of foreign owners is the same as for the trade secrets of domestic entities.