Intellectual Property 101:
An Overview of IP Concepts
By Haley Finch
What do a machine, logo, book, and recipe have in common? Answer, they are all types of intellectual property( IP). The core areas or categories of IP protection are patents, trademarks, copyrights, and trade secrets. This article contains an overview of each. Federal laws provide the framework for each of these core areas, with state laws providing supplemental or overlapping causes of action for copyrights, trademarks, and trade secrets. 1
1. PATENTS
Utility patents provide the right to exclude others from making, using, offering to sell, or selling a new and useful invention for a limited duration, whereas design patents protect the ornamental design of an article, also for a limited duration. Nearly 3,000 patent applications have been filed by North Dakota inventors, ranging from a specialized wrench to a wheat variety, as well as a livestock movement monitoring system and method of use. 2
To obtain a patent, an inventor must file an application with the United States Patent and Trademark Office( USPTO) 3. The USPTO will examine the application and issue a utility patent if the application claims a novel, nonobviousness, useful invention with patentable subject matter, or a design patent if the design satisfies novelty, originality, ornamentality( nonfunctional), and nonobviousness.
Patent-eligible subject matter includes“ any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof....” 35 U. S. C. § 101( emphasis added). Generally, the laws of nature, abstract ideas, and natural phenomena are considered ineligible and cannot be patented. In fields such as software and biology, significant disputes can arise as to whether the patent is drawn to patent ineligible abstract ideas or natural phenomena.
The novelty requirement under § 102 is not met if the claimed invention was disclosed in“ prior art”– a legal term of art referring to anything that came earlier and was publicly available. The claimed invention must also be“ nonobvious” under § 103. Here, courts consider whether
18 THE GAVEL a person of skill in the art( POSITA) 4 would find the invention as a whole obvious based on the differences between the claimed invention and the prior art existing at the time of the invention, as well as other“ secondary considerations” such as unexpected results and skepticism with the art.
The enforceable scope of the patent is limited to specifically enumerated claims at the end of the patent document. A person may be liable for infringement if she / he makes, uses, offers for sale, or sells a product, system, composition, or process / method that embodies all the elements of at least one of these claims. Two main defenses an alleged infringer may put forward as counterclaims are noninfringement and invalidity. Noninfringement argues the accused instrumentality falls outside the scope of the claims. Invalidity argues the patent is invalid because it does not meet one or more of the statutory requirements and, thus, the USPTO should not have granted the patent. 5
2. TRADEMARKS
The Lanham Act, 15 U. S. C. 1051 et seq., protects words, names, logos, etc. that serve to identify and distinguish the nature and source of goods or services in commerce.
A person does not need to register her / his mark federally or with a state to receive protection or bring suit for trademark infringement. That said, successful federal registration through the USPTO provides a presumption the trademark is valid and offers a wealth of advantages in commerce and litigation. 6
An owner of a mark may bring suit for trademark infringement if she / he believes another person is using the same or similar mark to identify competition goods. The prominent test for trademark infringement assesses whether a reasonable consumer is“ likely to be confused” as to the origin of the goods or services. 7
3. COPYRIGHTS
Unlike patents, ideas themselves are not copyrightable. However, an author’ s particular expression of an idea is protectable. Books, movies, drawings, songs, and other creative works often come to mind when thinking about what qualifies for copyright protection.
The Copyright Act, 17 U. S. C. A. § 101, et seq., protects a work fixed in a tangible medium of expression and exhibiting a modicum of originality. Such protection attaches as soon as the work is“ fixed” or rendered into a medium. Generally, a copyright lasts for the life of the author plus 70 years. 8 However, durations of copyright protection vary depending on the type of the work.
Registration federally with the copyright office or with a state agency is not required to receive protection; however, registration puts others on notice of the protected work and is needed prior to filing an infringement action.
Ownership of a copyright provides the copyright holder the exclusive right to make derivative works and to control the sale and distribution of the work, and protects against any unauthorized use, copying, public performance, and display of the work. 9 To establish copyright infringement, the plaintiff must show( 1) a valid copyright,( 2) the alleged copier had