How Intellectual Property Law Works

Intellectual property laws, along with court decisions and regulations, establish rules for the following activities:

1. selling or licensing of intellectual property
2. resolving disputes between companies making or selling similar intellectual property products and services, and
3. the registration and administration of intellectual property.

Intellectual property laws don't prevent someone from stepping on the owner's rights. But the laws do give an owner the ammunition to take a trespasser to court. This is the most well-known benefit of owning intellectual property: The owner acquires exclusive rights and can file a lawsuit to stop others who use the property without authorization. If the intellectual property owner does not confront the person or company or who has acted without permission, then the illegal activity will likely continue.

Types of Intellectual Property Laws

Intellectual property law consists of several separate and overlapping legal disciplines, each with their own characteristics and terminology.

• Patent law. There are three types of patents: utility, design, and plant. Utility patents (the most common patent) are granted to the inventor of a new, nonobvious invention. The utility patent owner has the exclusive right to make, use, and sell the invention for a limited term -- usually 17 to 18 years. A design patent (for a new but nonfunctional design) lasts 14 years after the date the patent issues. A plant patent expires 20 years from the date the patent was filed.
• Copyright law. Copyrights are granted for original creative expressions produced by authors, composers, artists, designers, programmers, and similar creative individuals. Copyright law does not protect ideas and facts; only the manner in which those ideas and facts are expressed. Copyright protection lasts a long time, often more than 100 years.
• Trademark law. Trademark law protects the rights of businesses who use distinctive names, designs, logos, slogans, or other signifiers to identify and distinguish their products and services. This protection can last as long as the company uses the trademark in commerce -- for example, many trademarks such as Coca-Cola and General Mills have been protected for over a century.
• Trade secret law. A trade secret is any confidential information that gives a business a competitive advantage. Under trade secret law, the owner of this confidential information can prevent others from using the information if it was obtained illegally. Trade secret protection lasts for as long as the business maintains the secret.

Intellectual Property Overlap

Sometimes, trade secret, copyright, patent, and trademark laws intersect with each other with respect to a particular product or service. Some common examples of this are as follows:

• Trade secret and patent. It is possible to pursue a patent application while simultaneously maintaining the invention as a trade secret, at least for the first 18 months of the U.S. patent application process. The U.S. Patent and Trademark Office (USPTO) treats applications as confidential until they are published. Unless the applicant files a Nonpublication Request (NPR) at the time of filing, and doesn't file for a patent outside the U.S., the PTO will publish the application within 18 months of the filing date.
• Copyright and trademark. It's not uncommon for an item to be protected under both trademark and copyright law. For example, the expressive artwork in a package design may be protected by copyright, while the overall look and feel of the package may be protected as a form of trademark. Likewise, an advertisement may include some material covered by copyright (for example, a jingle) and other material covered by trademark (the product or company name). The difference here is that copyright protects the literal expression, while trademark protects whatever is used to designate the source of a product or service being offered in the marketplace.
• Patent, copyright, and trademark. Patent law can intersect with copyright and trademark law in the case of certain products. For example, the designer of a toy or of jewelry may protect the device's name or appearance (as a trademark), the design of the item (design patent), the appearance of any artwork or graphics (copyright) and the novel, nonobvious functionality of the device (utility patent).

International Laws

Most countries in the world have entered into intellectual property treaties that afford members mutual rights. This does not mean that anything protected in the U.S. will be protected abroad. However, intellectual property that is protected in America may achieve protection abroad under the standardized rules established by the various treaties. For example, the Madrid Protocol has standardized the process for obtaining trademark protection among member countries. Similarly, the Berne Convention establishes international copyright principles, and the Paris Convention and the Patent Cooperation Treaty offer harmonization for owners of patents. Trade secrets may receive international protection under GATT (General Agreement on Tariffs and Trade).

Determining What Rights Apply to Your Work

If you are concerned with a creation of your own, you'll first need to know what form (or forms) of intellectual property applies to it. On the next few pages, we've provided a detailed chart that classifies how creative works are protected .

These basic rules can help you get started.

• Utility patents are awarded for new processes, machines, manufactures, or compositions of matter, or new uses of any of the above
• Design patents are awarded to nonfunctional, ornamental, or aesthetic design elements of an invention or product.
• Plant patents a granted for asexually or sexually reproducible plants (such as flowers).
• Copyright law protects expressions of creative ideas such as songs, artwork, writing, films, software, architecture, and video games.
• Trademark law protects marketing signifiers such as the name of a product or service or the symbols, logos, shapes, designs, sounds, or smells used to identify it.
• Trade secret law commonly protect confidential designs, devices, processes, compositions, techniques, formulas, information, or recipes.

Intellectual Property Laws Chart

Below, we've provided a detailed chart to further help you identify the applicable law. The chart lists categories of creations, followed by indications of what sorts of intellectual property laws generally apply.

[Guide to Use of Intellectual Property Protections] omitted for online sample chapter.

Self-Help Intellectual Property Resources From Nolo

If you're interested in intellectual property, Nolo, the publisher of this book, offers a number of excellent self-help resources. You can find more information at the back of this book or at the Nolo website, www.nolo.com.

All I Need Is Money: How to Finance Your Invention, by Jack Lander, is packed with advice and strategies to help the reader find sources of funding for new inventions.

Getting Permission: How to License & Clear Copyrighted Materials Online & Off, by Richard Stim, spells out how to obtain permission to use art, music, writing, or other copyrighted works.

What Every Inventor Needs to Know About Business & Taxes, by Stephen Fishman, provides the information you will need if you want to make a profit from your invention, or if you have to understand legal protections, business rules, and tax deductions.

Profit From Your Idea: How to Make Smart Licensing Deals, by Richard Stim, guides the reader through the important process of giving others permission to use, develop, and market an invention.

Nolo's Patents for Beginners, by David Pressman and Richard Stim, is a quick and easy guide to patent law that sets out the basics for protecting, searching, documenting, and registering patentable inventions.

Patent It Yourself, by David Pressman, a patent attorney and former patent examiner, takes inventors through the entire process -- from conducting a patent search to filing a successful application.

Patent Pending in 24 Hours, by Richard Stim and David Pressman, shows you how to prepare, assemble, and file a provisional patent application -- an abbreviated patent application that preserves your priority of invention for 12 months.

The Copyright Handbook, by Stephen Fishman, takes the reader through the process of protecting all kinds of written expression under copyright law.

The Inventor's Notebook, by Fred Grissom and David Pressman, is an annotated book that can be used to document the creation of an invention.

How to Make Patent Drawings: A Patent It Yourself Companion, by Jack Lo and David Pressman, teaches how to use pen and ink, computerized drawing programs, and photography to prepare patent drawings.

The Public Domain: How to Find Copyright-Free Writings, Music, Art & More, by Stephen Fishman, is an essential roadmap for determining whether music, writing, artwork, and movies are free to use.

Trademark: Legal Care for Your Business & Product Name, by Stephen Elias, shows how to choose a distinctive name, conduct a trademark search, and register a mark with the U.S. Patent and Trademark Office.

Web & Software Development: A Legal Guide, by Stephen Fishman, covers website development, software development, intellectual property laws, and the legalities of working with independent contractors and employees.

Your Crafts Business: A Legal Guide, by Richard Stim, explains the law for crafts artists including taxes; starting and running your crafts business; and selling, licensing, and protecting crafts.

NOLO PODCASTS -- Nolo offers a series of podcasts on legal subjects including several episodes relating to intellectual property. Check them out at www.nolocast.com.

Your Legal Companion

A photographer is wondering why an advertising agency can copy her photographs without permission. An inventor is wondering why he cannot stop a foreign manufacturer from making his patented invention. A man named McDonald is wondering why he cannot open a restaurant called McDonald's. And a woman who spends $600 on a software program is wondering why it's illegal to share copies with her friends.

Welcome to the wonderful world of intellectual property.

Writers, inventors, and artists transform ideas into tangible property. When this property qualifies under law for protection it's known as intellectual property (or IP) -- for example, patents, copyrights, trademarks, and trade secrets. Creators of IP are granted certain rights. For example, the author of a book can prevent others from copying it; and the owner of a patented invention can prevent others from making, using, or selling the device.

After a time, these exclusive rights may be lost or taken from the owner and given to the public. For example, copyright protection has ended for Mark Twain and anyone is free to copy his books Huckleberry Finn and The Adventures of Tom Sawyer. The patent on the original roller blade invention expired and companies are now free to copy the device.

But not all products of the mind can achieve protection under intellectual property law. Determining what can be protected and why used to be the exclusive domain of patent, copyright and trademark lawyers. Unfortunately, few businesses, nonprofits, or educational institutions can afford to call an attorney with every question. And lately, there are a lot more questions. Globalization, digital data, and the Internet have all contributed to a greater need for more information about IP.

The truth is that intellectual property is not an inscrutable discipline. Anybody can understand the basics. This book is proof that IP law is not a mystery. For over a decade, engineers, scientists, businesspeople, academics, and attorneys have used this book as a reference for understanding basic patent, copyright, trademark and trade secret principles. This helpful desk reference has -- over nine editions -- evolved to include hundreds of definitions, statutes, forms, and how-to information about protecting and preserving intellectual property.

So before you pick up the phone to call an attorney, check out this book. It may save you time and money ... and it will hopefully make your job easier, your employer more secure, and your business more prosperous.

Introduction

Intellectual property refers to products of the human intellect that have commercial value and that receive legal protection. Typically, intellectual property encompasses creative works, products, processes, imagery, inventions and services and is protected by patent, copyright, trademark, or trade secret law.

The commercial value of intellectual property comes from the ability of its owner to control and exploit its use. If the owner could not legally require payment in exchange for use, ownership of the intellectual property would have litle if any commercial value.

Example 1: At the end of the 1930s Walt Disney took a big gamble. Nobody had ever made a full-length animated feature. Many people felt the idea was foolish, including Mr. Disney's business partner and brother, Roy. But Walt Disney believed that the public was ready for full-length animated features and in 1937 he borrowed heavily from Bank of America to make the film, Snow White and the Seven Dwarfs. The success of that film led to other classic animated features including Fantasia, Lady and the Tramp, and 101 Dalmations. These films are now among the most valuable copyright properties in the world and have been rereleased numerous times and in different formats. The Disney Company has earned billions of dollars from the monopoly created by its copyrights on full-length animated films. The company has successfully used copyright law to prevent others from copying and selling the films without authorization.

Example 2: In the 1990s, Lonnie Johnson, an ex-NASA engineer, improved upon a staple of every child's toy weapons arsenal when he created one of the most popular toys of the 1990s, a squirt gun with phenomenal spraying power. Mr. Johnson acquired a U.S. patent for his invention (U.S. Pat. 4591071) and was able to license the rights to several companies who paid millions of dollars in royalties to Mr. Johnson. The product was sold under the trademarked name "Super Soaker," and the exclusive right to use this name further enhanced the value and good will of the product. Under patent law, Mr. Johnson was able to stop others, during the term of his patent, from the unauthorized making, using and selling of his invention.