Terminology

Here are some helpful definitions with introductions to basic intellectual property concepts.

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Copyrights | Design Patents | Foreign Patent Protection | Intellectual Property | Patents | Provisional Patent Applications | Trade Secrets | Trademarks


Copyright

A copyright protects the original author of a story, software program, song, movie, piece of sculpture, or other original work from direct copying. Copying may be inferred where alleged copyist had access to the copyrighted work. The copyright notice (the © symbol, or the word "Copyright", the year of creation, and the name of the copyright owner) should be provided on each copy of the work. Copyrights may also be registered with the Library of Congress, but this is not necessary in all cases. Copyright protects the expression of an idea, not the idea itself. In appropriate cases, patents can be used to protect the idea.

Where the idea is so simple that there is only one way to express it, the idea and its expression may merge, preventing copyrightability. This logic was used successfully in defense of several suits involving "clean room" reverse engineering of microcode: A first group hacked out the code, and prepared a complete functional specification defining the function of each instruction. A second group then wrote new code implementing these functions. Since there had been no copying, there could be no copyright infringement; the fact that both versions of the code for some instructions were identical merely showed that the idea and expression had merged. There are only so many ways to code an ADD instruction, after all.


Design Patents

Where the novelty of a product is in its ornamental design, a design patent which protects only the appearance of the product and not its function (as in the case of the “utility” patents discussed below) may be sought.

Plant Patents

Plant patents are available for asexually reproduced plants, including "cultivated sports, mutants, hybris, and newly found seedlings, other than a tuber propagated plant or plant found in an uncultivated state".


Foreign Patent Protection

US patents have effect only in the United States. Therefore, to protect one’s invention outside the US, one must file applications wherever protection is needed. Typically adequate protection can be achieved by filing in the countries where the invention can be manufactured. The process of foreign filing is quite complicated as there are many alternative routes to be considered, and is also very expensive.


Intellectual Property

Intellectual property is property produced by effort of the mind, as distinct from real property (land and buildings) and personal property. It may or may not be legally protectable, as below.


Utility Patents

A utility patent (as distinguished from a design or plant patent, discussed above) is a grant, limited in time and technological extent, of the right to exclude others from making, using or selling an invention, which can be a process, machine, manufacture, or composition of matter. The temporal extent of a U.S. patent (other countries'  laws are similar) is usually at least 20 years, measured from the earliest filing date. The technological extent of protection is defined by the “claims” of the patent. Claims are allowed only after examination by a technically degreed examiner of the Patent and Trademark Office to ensure that an invention is defined that is nonobvious with respect to the predecessor technology, or "prior art."

In order to obtain a patent, the inventor must disclose the invention in sufficient detail to enable others to practice the invention "without undue experimentation", that is, when the patent expires, and must additionally disclose the “best mode of practice” of the invention. The inventor is also obliged to disclose his knowledge of the relevant prior art.

Having a patent does not confer the right to manufacture the thing claimed; others may have dominating patents.

Independent invention is no defense to a charge of infringement.

Rights in an invention made by an employee in performance of his normal duties belong to the employer in most states, even without a written agreement.

The claims made for the invention in applying for the patent may define a "process, machine, manufacture, or composition of matter". The great software patent controversy has largely been settled with the understanding that software is normally best claimed as a process, although sometimes claims usefully intermix hardware and software. The only software that remains per se unpatentable is that defining a process operating on pure numbers, that is, not tied to any particular end use, control process, or the like. A Fast Fourier Transform algorithm would probably not be patentable although an unobvious method of using it to, say, remove harmonic noise from a signal might be.

Patents serve several functions. A patent is a technical disclosure, forming part of the scientific literature, as the invention must be described with sufficient particularity that others can use it "without undue experimentation" when the patent expires, as above. The idea is that the inventor is given a limited monopoly in exchange for the benefit to the public of having inventions made and disclosed. A patent is also a legal document, in that the claims define the exact extent of protection. The third function of a patent is to market the invention.

A well-written patent explains the underlying technical problem, the deficiencies of the prior art, and the way in which the invention solves these problems, in clear and non-technical language. Only then can a federal judge or jury, or the CEO of a competitor being asked to pay damages, be expected to understand the relation of the claimed invention to the prior art and the alleged infringing product.

Click on the FAQ tab for information regarding the cost of patent applications, searches, and other fee-related information.

The U.S. Patent and Trademark Office’s website, uspto.gov , provides further details as to the law and practice of patent prosecution. For pdfs of patents and other useful information, try Google Patents.


Provisional Patent Applications

The US patent law requires that a patent application be filed within one year of the first use or sale of the invention. However, if an inventor wants to preserve his rights to seek foreign patent protection (see above) he is best advised to file before any public disclosure of the invention, as the laws of many foreign countries are of the “strict novelty” variety and do not provide for such a grace period. This often means that the inventor must file his application early in the development phase, when funds are commonly short. A partial way around this is to file a provisional patent application, which does not need to include claims or a discussion of the prior art, although the latter is commonly useful in explaining the value of the invention. The provisional application must still disclose the invention in adequate detail to support the claims of the complete application, which must be filed within one year of the provisional application.


Trade Secrets

A trade secret can be any information, knowledge, data, or the like which is useful in business and not commonly known, anything from a customer list to the formula for Coke syrup. Enforcing a trade secret, for example, in order to enjoin a former employee from working for a competitor, normally requires proof that the secret allegedly taken was suitably identified as such, that the employee was subject to a written contract including an obligation of confidentiality, and that physical access to the secret was suitably restricted.


Trademarks

A trademark can be any word, symbol, slogan, design, musical jingle, or the like capable of differentiating one party's goods or services from another's. The question is whether a member of the relevant segment of the public would be misled as to the source of the goods. Thus, a descriptive mark ("Frigidaire") is less powerful than a coined mark ("Xerox"), and the same mark can be used by different parties, if on differing goods ("Cadillac" for dog food versus "Cadillac" for automobiles.)

Most states have registration procedures for trademarks that are only intended to be used locally, but if a business intends to do business nationwide a Federal registration is usually preferred.

The ® symbol indicates that a mark has been registered by the Federal government, while the TM or SM symbols merely indicate that the user does not intend to waive his rights in the mark. It is not legally necessary to use the statements commonly seen that certain trademarks are the property of their owners, or to use the ® symbol in text, but it does prevent any accusation of misappropriation.



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