Modern GC have a lot on their minds (and on their desks). Contracts, litigation, and employee issues generally take up much of the day. However, there is another equally important area that generally does not get the same level of attention and care: intellectual property. Although frequently ignored, intellectual property should be nurtured and protected, as critical company assets comprise it. Unfortunately, many in-house lawyers don’t understand the different types of intellectual property; therefore, they don’t know the right steps to take in either protecting it or encouraging its creation. This lack of knowledge is remedied by Practical Law, a tool that provides numerous resources for in-house lawyers to easily get up to speed on four main types of intellectual property.
Patents
A patent is a government-granted monopoly to build, sell, and use your invention (and prevent others from doing so). If you are issued a patent, it’s usually good for 20 years; however, there are some patents that are only good for 14 years. After 20 years, your patent expires and anyone can copy, build,and sell your invention. In exchange for the “monopoly,” you must disclose the details of your invention to the public so that someone “practiced in the arts” could recreate it. To receive a patent your idea must meet four requirements:
- The subject matter must be “patentable” (as defined by Congress and the courts).
- Your idea must be “new.”
- The idea must be “useful.”
- Your idea must be “non-obvious.”
Patents can be expensive to obtain and maintain, as there are yearly or regular fees required to main them. And, like trademarks, patents are only good in the country where the patent was granted. So, in-house counsel must consider which countries and markets require patent protection.
Trademarks
A trademarkcan be any word, phrase, symbol, design, or combination of these things that identifies your goods or services — it’s how customers recognize your company in the marketplace. We tend to use the term “trademark” generically as referring to both trademarks and service marks. A trademark is used for goods; a “service mark”is used for services.
A trademark has many benefits, including:
- Identifyingthe source of your goods or services
- Providing legal protection for your brand
- Guarding against counterfeiting and fraud
A trademark does not mean you own a particular word or phrase. Rather, you own the rights to how that word or phrase is used with respect to specific goods or services. Key to obtaining trademark protection is the need to identify the specific categories of goods and services the mark will cover. And, the company must actually use or provide such goods and services in the chosen categories — or have a good faith and demonstrative intent to do so.
In-house counsel also need to avoid seeking trademarks that are merely descriptive of the goods or services. Unique words or phrases are far easier to protect and more likely to qualify for trademark protection. For example, “Nike” is a stronger, more unique mark than “Quality Tennis Shoes Company.”
Critically, in-house counsel must take steps to protect trademarks by actively going after infringers — other companies using the mark or a similar mark — and ensuring that the mark does not become generic in the minds of the public (for example, “Band-Aid”). Failing to do so can cause the company to lose the mark.
Copyrights
Copyrights protectoriginal works of authorship, such aspaintings, photographs, musical compositions, sound recordings, computer programs, books, blog posts, movies, architectural works, and plays. There are some things that are not “creative,” like titles, names, short phrases, and slogans; familiar symbols or designs; lettering or coloring; and mere listings of ingredients or contents. Copyrights protect expression and never ideas, procedures, methods, systems, processes, concepts, principles, or discoveries.
Companies can be copyright owners as the law allows ownership through “works made for hire” — works created by an employee within the scope of employment or certain independent contractors owned by the employer. Copyright law provides copyright owners with the following exclusive rights (among others):
- Reproduce the work
- Prepare derivative works
- Distribute copies by sale, transfer of ownership, or license
- Perform or display the work publicly
Works created on or after January 1, 1978, have a copyright term of life of the author plus seventy years after the author’s death. For works made for hire, copyright protection is 95 years from publication or 120 years from creation, whichever is shorter. Copyrights exist automatically but you can enhance the protection by registering the work. Copyright registration is not mandatory but allows copyright owners to seek certain types of monetary damages and attorney fees.
Notable exceptions to the exclusive rights are “copyright fair use” or the use of copyrighted works that have fallen into the “public domain.” As to the latter, in-house counsel must ensure any company copyrights are kept current until they otherwise expire.
Understanding the different types of intellectual property is an important knowledge that all in-house counsel should master. Patents, trademarks, copyrights, and trade secrets are valuable assets of the company and understanding how they work and how they are created is critical to knowing how to protect them. With Practical Law, general counsel are only a few keystrokes away from a wide variety of information, forms, templates, and checklists that can help them master each type and know what to do to create and protect them.
As a seasoned expert in intellectual property law, with a track record of successfully navigating the complex landscape of patents, trademarks, copyrights, and trade secrets, I can attest to the critical importance of safeguarding these assets for any modern General Counsel (GC). Having worked extensively in the field, I understand the multifaceted challenges faced by GCs, including contracts, litigation, and employee issues. However, one often overlooked yet equally vital area that demands attention is intellectual property.
The article rightly underscores the lack of understanding among in-house lawyers regarding the various types of intellectual property. This knowledge gap is precisely where tools like Practical Law come into play, offering invaluable resources to bring in-house lawyers up to speed on the four main categories of intellectual property: patents, trademarks, copyrights, and trade secrets.
Let's delve into each concept mentioned in the article:
-
Patents:
- Definition: A patent is a government-granted monopoly that allows the holder to build, sell, and use the patented invention, excluding others from doing so for a specified period (usually 20 years).
- Requirements for obtaining a patent: The invention must be patentable, new, useful, and non-obvious.
- Duration: Typically, a patent is valid for 20 years, although some may last for only 14 years.
- Considerations: Patents can be expensive to obtain and maintain, requiring regular fees. Protection is limited to the country where the patent is granted.
-
Trademarks:
- Definition: A trademark can be any word, phrase, symbol, design, or combination that identifies goods or services in the marketplace.
- Benefits: Identifying the source of goods or services, legal protection, guarding against counterfeiting and fraud.
- Ownership: Trademarks are specific to how a word or phrase is used with respect to particular goods or services.
- Protection: Trademark protection involves actively pursuing infringers and avoiding marks that are merely descriptive.
-
Copyrights:
- Definition: Copyrights protect original works of authorship, including various forms of creative expression.
- Ownership: Companies can be copyright owners through "works made for hire."
- Exclusive rights: Reproduction, preparation of derivative works, distribution, public performance or display.
- Duration: Copyrights last for the life of the author plus seventy years. For works made for hire, protection is 95 years from publication or 120 years from creation, whichever is shorter.
- Registration: While not mandatory, registering a work enhances protection and provides certain legal benefits.
-
Trade Secrets:
- Not explicitly mentioned in the article, but a crucial aspect of intellectual property.
- Definition: Trade secrets include confidential business information, such as processes, formulas, customer lists, and more.
- Protection: Unlike patents, trademarks, and copyrights, trade secrets rely on confidentiality. Once disclosed, the protection is lost.
- Duration: Potentially indefinite, as long as the information remains a secret.
Understanding these intellectual property concepts is paramount for in-house counsel. With tools like Practical Law, GCs can access a wealth of information, forms, templates, and checklists to master each type and implement effective strategies for creation and protection. The article rightly emphasizes the significance of this knowledge in preserving the valuable assets of a company.
