Intellectual Property Basics

Musekamp

Mark Musekamp, Keating Muething & Klekamp PLL
June 2016

Intellectual property is a general term given to diverse categories of intangible assets which give rise to ownership and other related rights. Although most are familiar with this term and the categories of assets which it incorporates, few understand the importance of these assets to a business. Even among businesses that understand the value of these assets, few fully comprehend the measures necessary to preserve and grow the value of these assets. Like tangible assets, intangible assets require certain measures to protect and secure their value. As the importance of intangible assets continues to grow, business owners must understand the nature and extent of their rights in these assets. In an effort to provide a better understanding of these assets, this article will address three categories of intellectual property protection, the nature and scope of protection afforded by these categories, and the general procedures necessary to protect these categories of intellectual property.

Patents

Although there are three types of patents (utility, design, and plant), because they protect inventions, this article will focus on utility patents. In general, utility patents protect useful inventions that are novel and non-obvious. In order to secure rights in a patentable invention, an inventor may file a patent application with the United States Patent and Trademark Office (USPTO). Provided that the proposed invention meets the novel, non-obvious, and other statutory requirements, an applicant may receive a utility patent registration for its invention. A utility patent registration grants the holder the right to exclude others from making, using, selling, offering to sell, and importing the patented invention within or into the United States. Subject to several exceptions, a utility patent has a duration of 20 years from the filing date of the earliest application. Although enforcement of a utility patent (e.g. writing cease and desist letters, opposing the registration of other patent applications, and filing lawsuits) is not necessary to maintain its validity, enforcement may maximize any potential revenue that could arise through the holder’s exploitation of it. However, the patent holder must pay several renewal fees and abide by certain marking requirements to ensure the continued validity of the utility patent and any enforcement actions involving it.

Trademarks

Trademarks are source identifiers used to distinguish the goods and services of one party from those of another. Common examples of trademarks include words, phrases, logos, colors, sounds, and even packaging in some circumstances. The owner of a trademark may prevent others from using confusingly similar marks in connection with related goods and services and/or from creating a false impression that the subsequent user is associated or affiliated with the owner.  Although a party can secure common law (i.e., unregistered) trademark rights simply by commercially using a particular mark in connection with goods or services, these rights will be limited to the territory in which the mark is used. Subject to several limitations, federal trademark registration secures these rights in all territories in the United States. To maintain the validity and strength of a trademark, the owner must continuously use its trademark, enforce its trademark against confusingly similar third party uses, and, if federally registered, pay the applicable maintenance fees. Provided that the owner properly maintains it, a trademark can be protected for an unlimited duration. Given that the strength of a particular trademark depends on the owner’s enforcement of the mark, the owner may want to engage a watch service to alert the owner of any newly filed trademark applications which could be confusingly similar to the owner’s mark.

Copyrights

Copyrights protect original works of creative authorship such as literature, photographs, drawings, designs, music, and motion pictures. A copyright arises as soon as a work is fixed in any tangible medium of expression, meaning that it is written, filmed, typed, or recorded. Although registration of a copyright is not necessary to confer ownership rights or exclusivity, federal registration confers significant benefits such as the right to sue in federal court and to receive statutory damages. Assuming the work is a work made for hire, the duration of a copyright is the shorter of 95 years after publication or 120 years after its creation. The most significant copyright issue for businesses is ensuring that it owns works created by its employees and independent contractors. Generally, a work created by an employee within the scope of his or her employment is a work made for hire and ownership automatically vests in the employer. Although the work of an independent contractor may sometimes be a work made for hire, this is not always the case. As a result, it is necessary to have a written agreement assigning ownership of the work to the party that commissioned it.

Although this article omits several categories of intellectual property, including trade secrets, it should provide the reader with the foundational knowledge necessary to seek out more information about these topics. As businesses continue to rely on intangible assets for a competitive advantage in the marketplace, the value of intellectual property will continue to increase.