In this episode, we discuss the key differences (and similarities) between copyright, trademark, and patents.

RESOURCES & LINKS

USPTO Practitioner Database: https://oedci.uspto.gov/OEDCI/practitionerSearchEntry

TRANSCRIPT

This transcript has been abridged and modified.

Intellectual property, commonly referred to as "IP", is a general term used to describe ownership rights to intangible property derived from concepts or, how I like to simplify it, conceptual ownership rights. IP is considered as, and treated under the law, an asset. Similar to commercial real estate or an on-the-shelf product, IP can be leveraged to create revenue or can act as collateral for a loan. IP can be, for example, rights to movies, music, a name brand for designer apparel, an invention, or a company's secret to success, like Coca-Cola's secret formula. The different flavors of these conceptual ownership rights are copyrights, trademarks, patents, and trade secrets. Trade secrets can be very different, so I'll discuss them in a separate blog.

COPYRIGHT

Copyrights protect an artist's work. This includes books, screenplays, movies, music compositions, song lyrics, and software, among others. And yes, written software is considered to be more like writing a novel, so it falls under copyright. Copyrights are very important in the entertainment and software industries. You've probably seen this symbol: ©. This symbol lets you know that, whatever you are looking at, has copyright protection. Copyrights can be registered with the US Copyright office by submitting an application and paying a fee.

Copyrights expire. The duration of Copyright protection depends on several factors. For works created by an individual, the copyright lasts for the life of the author, plus 70 years. For copyrights created anonymously, pseudonymously, and for hire, protection lasts 95 years from the date of publication or 120 years from the date of creation, whichever one of the two dates is shorter.Once a copyright expires, the work is in the public domain so that anyone can use the work, free and clear from being sued.

TRADEMARK

A trademark is a word, phrase, symbol, design, or sound that identifies the source of a product. A service mark is the same, except that it identifies the source of a service and not a product. The term "trademark" is often used to refer to both trademarks and service marks. So, when someone says trademark, they mean both. Trademarks can be brand names, like Prada and Gucci; slogans, like Nike's "Just Do It"; logos, like the Nike Swoosh; and sounds, like the unforgettable MGM Studios lion roar.

When someone talks of selling bootleg bags and clothes, they are referring to trademark theft or trademark infringement. You should keep in mind that trademark infringement (infringing on personal IP rights) is used to refer to civil cases while selling counterfeit goods (scamming the public and hurting business) is used to refer to criminal cases. They are different, but are related in that both of the court actions require that a valid trademark exists. For example, people have been caught selling fake ICLUSIG®, a trademarked drug that is used to treat cancer, and so, they can be sued by Takeda Pharmaceutical Company Ltd. for trademark infringement (civil) and also sued by the Government for selling counterfeit goods (criminal).

Unlike copyrights, trademarks do not expire. So, a trademark can last forever so long it's being used and monitored. If a trademark is not being used, it can be challenged by someone who has a legitimate interest in using the unused trademark. If it is determined that the trademark is not being used, it will be considered void and not protected on your behalf. Generally, the idea is to not waste space. If you're not using the property, it will be given to someone who wants to use it for commerce so that they can make money, create jobs, and pay taxes.

Trademarks can be unregistered or registered and there's a hierarchy of protection with the type of registration. Unregistered trademarks can be identified by "TM" for trademarks and "SM" for service marks. Unregistered trademarks have what's called "common law" rights, which are quite weak and limited. The next level of protection is a state registered trademark. This offers statewide protection, but state trademarks are not examined. The strongest level of protection is a federal trademark issued by the United States Trademark and Patent Office ("USPTO"). Federally registered trademarks with the USPTO are the preferred business assets. This is because they offer nationwide protection. Federal trademarks are examined by the USPTO. This means that before the USPTO will approve a trademark, they will search around and see if someone else is using it. If it is already in use, they will reject your trademark application. The only way to legally use the symbol "®" with a trademark is to have that particular trademark registered with the USPTO.

PATENT

A patent is a government approved monopoly on an invention. The USPTO is the only entity that can give patent rights in the United States. Like Trademarks, patents are examined. This means that the USPTO looks to see if someone invented your invention first. If your invention is not new (and doesn't meet other requirements for patentability), the USPTO will not give you a patent.

There are 3 types of patents: design, utility, and plant. Design is for how something looks, utility is for how something works, and plants are for very special types of plants. Not all things are patentable. You cannot get a patent on an idea or concept. You need to have something to show or have enough information so that another person can make your invention without having to talk to you.

Similar to copyrights, patents expire. Design Patents last for 15 years from issuance. Utility patents and plant patents last for 20 years from the earliest filing date. You may have heard of provisional patents. This is a misnomer. There's no such thing as a provisional patent, only a provisional patent application. Provisional patent applications are not granted patents nor are they regular patent applications. They are temporary place holders that promise to file a regular patent application within the next 12 months.

One of the benefits is that, just like filing a regular patent application, you can get "patent pending" status by filing a provisional patent application. However, because it's so easy to get patent pending status, just about as easy as buying a cell phone, savvy investors use patent professionals to assess the value of pending patent applications before shelling out any cash. That's just good business practice.

The only people who can apply for a patent are the inventors of the invention; someone who is entitled to the invention, this can be a person or a company (this is commonly an employee-employer relationship where the employee, who is the inventor, assigns ownership of the patent to the employer as a condition of employment); or a licensed patent professional. Because patents are technical in nature, patent professionals must have a technical background approved by the USPTO; usually the person has at least a bachelor's degree in fields like chemistry, molecular biology, or engineering from an accredited university.

Patent professionals come in two categories: patent agents and patent attorneys. Patent agents have an approved technical background. Patent attorneys have an approved technical background and are also licensed attorneys. Patent professionals are registered with the USPTO. So, if someone says they can help you get a patent, ask them for their registration number and look them up on the USPTO database to make sure they're legit.

DISCLAIMER

This video describes these legal concepts in very general terms. The information contained in this video has been made available for informational and educational purposes only. Jade IP Consulting, LLC ("Jade IPC") does not make any representation or warranties with respect to the accuracy, applicability, fitness, or completeness of this video. Jade IPC does not warrant the performance, effectiveness or applicability of any sites listed or linked to this video. This video is not intended to be a substitute for professional legal advice. Always seek the advice of your attorney or other qualified attorney with any questions you may have regarding a legal issue. Never disregard professional legal advice or delay in seeking it because of something you have read or seen in this video or any of our other videos. Jade IPC hereby disclaims any and all liability to any party for any direct, indirect, implied, punitive, special, incidental or other consequential damages arising directly or indirectly from any use of this video or other video content made by Jade IPC, which is provided as is, and without warranties.© 2020 Jade IP Consulting, LLC, All rights reserved.