Intellectual Property Law: What You Need to Know

Intellectual property law (IP) broadly encompasses any type of non-physical asset owned by a business or individual that is legally protected from unauthorized use or implementation through a patent, trademark, copyright, or trade-secret designation. 

Intellectual property law ensures artists receive fair compensation for their creativity. It also ensures that businesses are able to reap the full benefits of their works, ideas, and inventions. Beyond the creators and inventors themselves, a robust approach to intellectual property law is also necessary to encourage innovation, promote fair competition, prevent consumer confusion, and deter economic espionage.

Any “creation of the mind” can be called intellectual property. The most obvious include artistic works, literature, drama and music; however, inventions, secret formulas, exclusive products, business and brand names, logos and taglines, branded color schemes, and website content are among the many other intangible assets that fall under the purview of intellectual property law.

The four main types of intellectual property law include patents, trademarks, copyrights, and trade secrets.

What is a patent?

A patent is an exclusive right granted to the inventor or owner of a product, process, or machine. Once a patent is granted, no one else can make, market, or use the invention without express authorization from the patent owner. In the United States, patents are granted by the U.S. Patent and Trademark Office (USPTO). Patents generally last for 20 years from the date a patent application was filed.

In order to be granted a patent, an invention must be:

1. Statutory
   The invention must involve subject matter that can be patented, such as processes, machines, manufactured articles, and compositions of matter. Subject matter not considered patentable include data structures, electromagnetic, and abstract ideas.
2. Novel
   To qualify for a patent, an invention must be new, and not publicly known more than a year before the patent application was filed. Failure to file an application within the 1-year period after an invention’s first public disclosure may result in rejection of the patent application.
3. Usefulness
   To be considered useful, an invention must operate to perform an intended purpose in the real world.
4. Non-Obvious
   An invention would be denied a patent if it was considered obvious to somebody with ordinary skill in the art. For example, simple alterations to an existing product, such as changing its size or substituting materials, would not be patentable.

• Utility patents protect new and useful processes, machines, articles of manufacture, or compositions of matter, as well as new and useful improvements to any one of these.
• Design patents protect the unique visual qualities of a product. This type of patent may be granted for a distinct configuration, distinct ornamentation, or both.
• Plant patents are granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

What is a trademark?

A trademark is any word, phrase, symbol, design, or a combination of the three that identifies the goods or services marketed by a specific company. The use of trademarks allows customers to distinguish among similar products in the marketplace. It ensures a product is easily differentiated from competitors, and helps prevent counterfeiting and fraud.  

While an individual, business, or other entity becomes a trademark owner once they begin using a mark to identify their products or services, registering a trademark is necessary to secure stronger, nationwide rights. However, trademark registration doesn’t give the holder exclusive rights to a particular word, phrase, symbol, or design, nor does it prevent others from using the mark. Rather, the owner of a trademark has an exclusive right to control how the mark is used with their specific goods or services.

Trademark holders can choose to use certain symbols along with their trademark. These include:

• “TM” for an unregistered trademark used goods.
• “SM” for an unregistered trademark used with services.
• ® for a registered trademark used with goods or services.

Registering a trademark involves completing and filing an application with the USPTO and paying the necessary application fees. An examining attorney is then assigned to review the application, and, if any issues are identified, contact the applicant via an “Office Action.”  Once all issues are resolved, the trademark will be published in The Trademark Official Gazette, a weekly USPTO publication that lists newly published marks along with canceled and renewed registrations.

What is a copyright?

A copyright protects original works of authorship that have been captured in a sufficiently permanent medium, either by the author or with their consent.

This area of intellectual property law protects a wide range of created works, including paintings, photos, illustrations, musical compositions, sound recordings, computer programs, books, poems, blog posts, movies, architectural works, and more. To be eligible for a copyright, a work must have been independently created by a human and show a “spark” and “modicum” of creativity. A copyright is intended to protect the creative expression behind the work rather than ideas, procedures, methods, systems, processes, concepts, principles, or discoveries.

Once an individual or entity creates an original work and captures it in a sufficiently permanent medium, they become the copyright owner. U.S. copyright law also allows for ownership of “works for hire,” meaning that works created by an employee (and sometimes an independent contractor) while performing their job duties belong to their employer.

In the U.S., a copyright grants the owner exclusive rights to:

• Reproduce the work.
• Create derivative works based on the original.
• Distribute reproductions of the work.
• Perform or display the work publicly.
• Perform the work by digital sound transmission if the work is a sound transmission.

Copyright owners can authorize others to exercise their exclusive rights. A copyright can be bought and sold, and ownership is also transferable through other means such as wills and bequests.

Under current law, the length of a copyright for works created on or after January 1, 1978, extends 70 years after the author’s death. In the case of a joint work, protection extends to 70 years after the last author’s death. 

A copyright does not have to be registered with the U.S. Copyright Office (USCO); however, timely registration is necessary to enforce the owner’s exclusive rights through litigation, should the need arise.

What are trade secrets?

The term “trade secrets” describes a type of IP that gives a company an edge over its competitors. To legally qualify as a trade secret in the United States, information must be:

• Commercially valuable because it is secret.
• Known to a limited number of individuals.
• Actively protected through reasonable measures to ensure its confidentiality.

Trade secrets can encompass a wide range of information, including formulas, manufacturing techniques, client lists, advertising strategies, distribution methods, R&D information, and more. 

Misappropriation of trade secrets is considered a form of unfair competition. However, unlike copyrights, trademarks, and patents, there is no federal office or agency tasked with registering trade secrets.

IP owners who fail to take adequate or reasonable steps to protect and enforce their intellectual property rights risk losing those rights entirely.

In the United States, applying for patents and registering trademarks and copyrights offers the strongest protection against infringement, as doing so makes ownership of IP a matter of public record. This not only helps to prevent inadvertent acts of infringement, but might also actively dissuade those who seek to intentionally infringe upon an owner's IP rights. 

Protecting trade secrets requires that the IP owner take “reasonable” steps to ensure the information remains confidential. Examples of “reasonable” precautions may include:

• Storing sensitive information in password-protected digital files.
• Locking physical file cabinets that store trade-secret information.
• Clearly labeling sensitive information as “confidential.”
• Changing login information when an employee leaves the company.
• Requiring employees who access trade-secret information to sign non-compete and non-disclosure agreements.
• Training all employees with access to trade secrets on the proper handling of confidential information.
• Clearly labeling sensitive information as “confidential.”
• Monitoring access and use of confidential data.
• Restricting public access to the business.

When infringement does occur, IP owners in the United States are responsible for enforcing their own intellectual property rights. Depending on the circumstances, enforcement of IP rights might involve:

• Sending a Cease and Desist Letter
  IP owners typically issue a Cease and Desist Letter once they become aware that their intellectual property rights have been infringed. While owners can send such a letter on their own, an infringer is more likely to take the demand seriously when the letter is sent by an intellectual property lawyer.
• Leveraging the Digital Millennium Copyright Act (DMCA)
  For infringement that occurs on the internet, IP owners can send a DMCA take-down notice requiring internet service providers to remove the infringing material.
• Filing a Lawsuit in Federal Court
  When all else fails, IP owners may have no choice but to file suit in federal court. When a lawsuit is successful, courts typically issue an injunction barring any further use of the IP by the infringer without the express consent of the owner.  Courts can also award monetary damages to an IP owner, provided the owner is able to prove that the infringement resulted in an economic loss.

The means used to protect the IP of U.S. citizens and companies in overseas markets greatly depends on the nature of the intellectual property:

• Copyright
  There is no international copyright law; however, there are a number of international IP treaties and conventions that provide for protection of copyrighted works registered in any of the signatory nations. For example, the Berne Convention requires that all member countries establish a minimum level of copyright protection, and they have a duty to protect the works made by citizens of other members.
• Trademarks
  The Madrid Protocol allows an owner to extend a trademark into more than 100 countries when they register their mark with the USPTO. However, protection is limited to only those member countries the trademark owner selects. If an owner wishes to protect their trademark in a nation outside of the Madrid Protocol, they will need to register the mark with the appropriate authority in that specific country.
• Patents
  U.S.-registered patents are only valid in the United States. However, the Patent Cooperation Treaty (PCT) provides a solution. The PCT allows inventors from the U.S. and other signatory nations to simultaneously seek patent protection in more than 150 countries.
• Trade Secrets
  The Paris Convention requires member nations to provide effective protection against unfair competition. However, the agreement does not mention or define trade secrets. It provides general protection against any act contrary to honest commercial practice. Some general standards regarding trade secret law are included in the Agreement on Trade-Related Aspects of Intellectual Property Rights.

International property lawyers work to ensure individuals, companies, and other entities gain and maintain ownership over their IP and created works. Depending on a specific attorney’s niche, this may include:

• Providing counsel on intellectual property law and actions.
• Litigating on behalf of clients in court
• Consulting on patents, licensing, and other IP.
• Drafting and reviewing patent applications, copyright and trademark registrations, and contracts and licensing deals 
• Facilitating the transfer of intellectual property ownership
• Dealing with the USPTO and USCO
• Conducting legal research and interviews in preparation for litigation
• Cooperating with patent and trademark offices
• Negotiating settlements and initiating lawsuits

Intellectual property law is a highly complex practice area.

If you’re interested in exploring this topic further, be sure to check out the World Intellectual Property Organization (WIP). WIP is the leading global forum dedicated to IP policy, services, information and cooperation.

If you need assistance with an IP-related matter, Axiom can help. Axiom offers access to the world’s deepest bench of on-demand legal talent, including hundreds of intellectual property lawyers. Our lawyers have extensive experience in copyrights, trademarks, patents, trade secrets, and more.

Explore our network of attorneys or contact us to find an experienced IP attorney.

Axiom is not a law firm and does not provide legal advice. Our clients' legal teams supervise the legal work of the Axiom lawyer.

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