Maybe it’s a product of watching too many Shark Tank re-runs, but many early-stage entrepreneurs come to the conclusion that they “need” a patent. They become obsessed with “patenting” their invention because no one will take them seriously without a patent or worse, someone will “steal” their invention. They visualize the millions of dollars in funding that will be pouring in once they can say: “patent pending.” But there’s one problem, not all inventions are patent eligible. For innovators who reach this precipice, the dark “all is lost” mentality may begin to set in. Fret not, wayward innovators, for there is light. Allow me to introduce the four areas of intellectual property (IP) law that you should consider when developing an IP strategy for your venture.
Trademark law protects brand identifiers (e.g. logos and slogans) used in connection with the goods or services that the owner of the mark provides. A trademark can be protected on a federal level, a state level, or through common law rights. A federal trademark offers nationwide protection for marks that are used in interstate commerce (i.e., commerce between states). Federal trademark rights are created through the filing and subsequent examination of an application at the US Patent and Trademark Office (USPTO). State trademarks offer protection that is limited to the state or part of the state in which the mark is being used. State trademark applications are typically filed through the Secretary of State. Common law rights are created through use of the mark in connection with the owner’s goods and services, and are limited to the geographical area(s) in which the mark is being used. Trademark protection can be maintained in perpetuity as long as the mark continues to be used in connection with the owner’s goods and services (subject to additional requirements based on the level of protection).
Patent law protects inventions that fall into one of the categories of patent-eligible subject matter (e.g., machine or process) or an improvement to an existing invention within those categories. The invention must also be new, useful and nonobvious. The two major categories of patents are utility patents (protect inventions that that have a tangible use) and design patents (protect the ornamental features of an invention). Patent rights are created through the filing and subsequent examination of an application at the USPTO. The information in the application should inform a person of ordinary skill in the art on how to make and use the invention. In return for this disclosure, the owner is granted the right to exclude others from practicing the invention for a predetermined amount of time (20 years from the application filing date for a utility patent and 15 years from the date of grant for a design patent).
Trade Secret Law
Trade secret law protects information that derives economic value from its secrecy. The trade secret owner must take reasonable steps to protect the secrecy of the information (e.g. utilizing non-disclosure agreements when disclosing the information). Trade secret law can be an alternative to patent law when the “secret sauce” of the invention can be kept a secret and cannot be reverse engineered. While there are no formal requirements or filings to protect an invention as a trade secret, the owner cannot be passive in protecting their secret. If made public, the information will no longer be protectable as a trade secret.
Copyright law protects original works of authorship fixed in a “tangible medium of expression” (e.g., computer code). Copyright law protects the expression itself, but not the idea(s) behind the expression. Copyrights arise in an original work once the expression is created and is fixed in a tangible medium allowing reproduction of the work. Registration is not required to create the copyrights in the work, but it does offer additional benefits (e.g., the right to bring a copyright infringement suit).
While the terms may not be interchangeable (you cannot “patent” your company’s logo), considering all four areas of IP law can provide the necessary illumination to develop the appropriate IP protection strategy for your venture.