Basics of IP
Intellectual property is divided into four categories: patents, trademarks, copyrights, and trade secrets. Below, we provide a brief summary of trademarks, copyrights and trade secrets followed by a more complete discussion of patents.
Trademarks cover titles, names, slogans, jingles, and logos (ex: the name, “Gillette” for grooming products, the NBC chimes as a jingle, the Nike swoosh, and “15 minutes could save you 15% on car insurance” as a slogan). Trademarks expire after a period of time but can renewed if evidence that they are still in commercial use is provided. Trademarks can be protected at the state-level, national-level, or internationally. National protection for a Trademarks may be obtained from the US Patent and Trademark Office.
Copyrights are of limited (though extensive) duration and cover recordable expression. Examples of recordable expression include, books, software code, sound recordings, video recordings, paintings, and sculpture (ex: Harry Potter, the stories and the characters, the code for MS Windows, The Beatles’ recorded catalog and sheet music, and Mike Tyson’s face tattoo).
According to Wikipedia, a trade secret is “a formula, practice, process, design, instrument, pattern, commercial method, or compilation of information not generally known or reasonably ascertainable by others by which a business can obtain an economic advantage over competitors or customers. In some jurisdictions, such secrets are referred to as “confidential information”. Probably the most famous example of a trade secret is the formula for Coca-Cola, which is guarded closely by the Coca Cola Company and has never been publicly disclosed. In some cases, a trade secret is a patentable invention; but the owner chooses to not to publish any information about it as would be required for a patentable invention.
With some products and inventions, a hybrid model is possible. For example, certain companies have their product manufactured in Asia, but they keep as trade secret a portion of the device, for example a controller board, which they manufacture themselves and provide to the off-shore device manufacturer.
Patents cover a method or process, an item of equipment or a system composed of multiple components. Patents last for 20 years from filing (subject to some exceptions). Patents come in 3 varieties: utility, design and plant. The subject matter of plant patents is relatively self-explanatory. A design patent covers the ornamental appearance of an article. A common example of a design patent would be the styling on shoes. Patent may be filed in the US with the US Patent and Trademark Office, internationally with the World Intellectual Property Office (WIPO), or in various countries. It is also possible to file a European patent with the European Patent Office (EPO).
A utility patent covers the broadest amount of material. Utility patents could be a physical article, a system of physical articles, a process (ex: a business method, the function of software, a chemical reaction), or a method for using a physical article. The term “physical article” is used here broadly, and really it refers in inexhaustible list of things. A physical article in this context could be a microchip, an exercise machine, medication, or an energy drink.
To obtain a patent, your idea must be four things:
1. Usefulness: There is an fairly low bar for an idea to be considered “useful.” As long as there is a conceivable purpose for an invention, even if that purpose is a fleeting fancy, the invention is useful.
2. Statutory: This refers to the subject matter of your invention. A few things that are specifically unpatentable are natural articles (ex: naturally occurring compounds or elements), people, and infinite motion machines (statutorily deemed impossible).
3. Novel: As one would expect, your new idea must, in fact, be new. If a patent examiner can find an item of prior art, such as a patent application or publication that dates from before the filing date of your patent, that discloses the key ideas of your invention then the patent office will not allow the patent. A large part of our job here at Soquel Group is to either point out to the examiner why a reference used by the examiner does not cover the essence of the idea, or is missing elements of the idea.
4. Non-Obvious: Patent law allows a patent examiner to “combine references” in order to argue that an invention is not novel.