Types of Intellectual Property Protection
|What Subject Matter Can Be Protected?
|Process, machine, article of manufacture, composition, or improvements to any of these.
Design Patents – ornamental design of useful articles
|Words or phrases used in connection with a product or service (e.g., Nike® shoes)||Original works of authorship such as: written materials, software, video/movies, and music||Information that is not known to the public (e.g., the formula for COKE® soda)|
|Requirements for protection||New, Useful, and Non-Obvious
|Use of trademark in (interstate) commerce with goods/services||Create the work in a tangible medium (common law)||Keep information secret|
|How to Obtain Protection||Search patents. File patent application, and “prosecute” patent application until “claims” are allowed||Search trademarks. File trademark application and prosecute to issuance/grant||Can rely on common law copyright; However, in the U.S. need to register copyright to recover statutory damages
|Keep information secret, and take precautions to ensure it remains secret|
|What is involved?||Prepare custom detailed written description of invention + drawings (if needed) and prosecution
|Complete TM application + drawing (if applicable) and prosecution in US PTO||File a form and deposit a copy with Copyright Office – www.copyright.gov||Security precautions (control access), confidentiality agreements|
|Cost of Obtaining||Provisional — $$ + gov’t fee
Utility patents – $$$ + gov’t fees
Design patents — $ + gov’t fee
|$-$$ + gov’t fee||$ + gov’t fee||Costs associated with security procedures and confidentiality agreements|
|How long does protection last?||20 years from filing; Design 15 years from grant.
|10 years with 10 year renewals. Must continue to use and defend for protection.||Generally, life of author + 70 years||Until the information is no longer secret (when it becomes public)|
|What benefit does protection provide?||Right to exclude others from making, using, selling the patented invention
|Right to prevent others from using a substantially similar trademark with similar goods/services||Right to prevent copying and making “derivative works”||Protection can last longer than patent protection if conditions are met|
|What can you recover?||Your lost profits, or a reasonable royalty. Injunctions may also be available.
Design patents – same as above + infringer’s profits.
|Injunctions and monetary damages||Actual financial damages + profits of infringer; or
Statutory damages ($750-$30,000) and attorney fees
|Financial losses from misappropriation of trade secret|
|How do you prove infringement?||Prove that accused product contains all elements in patent claim(s).||Likelihood of confusion (similar in sound, appearance, and meaning)||Access and copying||Breach of confidentiality; No violation of trade secret if someone independently develops|
© 2019 Jeffrey V. Bamber
The information provided in this table should not be relied upon as legal advice. To obtain legal advice, an attorney/client relationship must be established in a letter agreement with Jeffrey V. Bamber, Attorney at Law.