U.S. INTELLECTUAL PROPERTY

The term "Intellectual Property" broadly applies to ideas or property developed from the mind, as opposed to real property such as land.  Intellectual property typically encompasses patents, copyrights, trademarks and service marks, and trade secrets.

Patents:

A patent is the statutory grant of a property right issued by the United States Patent and Trademark Office.  The term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees.  U.S. patent grants are effective only within the U.S., U.S. territories, and U.S. possessions.

The right conferred by the patent grant is, in the language of the "Patent Statute" and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.

Requirements for a Valid Patent:

  • The invention must be novel (i.e., new).
  • The invention must be operable and capable of use.
  • The invention must not have been obvious to a person having ordinary skill in the art at the time the invention was made.

In general, the following categories of inventions are patentable:

  • The functional aspect of any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.
  • Any new external and ornamental design for an article of manufacture where the design is nonfunctional, is part of, and is not removable from the article.
  •  Any asexually-reproduced plant.

The patent statute specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.

In the language of the statute, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,” subject to the conditions and requirements of the law. The word “process” is defined by law as a process, act or method, and primarily includes industrial or technical processes.

The term “machine” used in the statute needs no explanation.  The term “manufacture” refers to articles which are made, and includes all manufactured articles.  The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds.  These classes of subject matter taken together include practically everything which is made by man and the processes for making the products.

What cannot be patented:

The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy for atomic weapons.  The patent law specifies that the subject matter must be “useful.”  The term “useful” in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent.

Interpretations of the statute by the courts have defined the limits of the field of subject matter which can be patented, thus it has been held that the laws of nature, physical phenomena and abstract ideas are not patentable subject matter.

A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.

Applicable U.S. Law:  United States Code, Title 35, Section 100 et seq.

Copyrights:

Copyright is a form of protection provided by the laws of the United States (title 17, U.S. Code) to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works.  This protection is available to both published and unpublished works.  Section 106 of the 1976 Copyright Act generally gives the owner of copyright the exclusive right to do and to authorize others to do the following:

  • To reproduce the work in copies or phonorecords;
  • To prepare derivative works based upon the work;
  • To distribute copies or phonorecords of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
  • To perform the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works;
  • To display the copyrighted work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work; and
  • In the case of sound recordings, to perform the work publicly by means of a digital audio transmission.

Requirements for a Valid Copyright:

  • It must be an original work of authorship.
  • It must be fixed in a tangible form of express from which it can be perceived, reproduced, or otherwise communicated. The fixation need not be directly perceptible so long as it may be communicated with the aid of a machine or device

Copyrightable works include the following categories:

  • literary works;
  • musical works, including any accompanying words;
  • dramatic works, including any accompanying music;
  • pantomimes and choreographic works;
  • pictorial, graphic, and sculptural works;
  • motion pictures and other audiovisual works;
  • sound recordings;
  • architectural works.

These categories should be viewed broadly. For example, computer programs and most "compilations" may be registered as "literary works"; maps and architectural plans may be registered as "pictorial, graphic, and sculptural works

What is Not Copyrightable:

Several categories of material are generally not eligible for federal copyright protection. These include among others:

Works that have not been fixed in a tangible form of expression, (for example, choreographic works that have not been notated or recorded, or improvisational speeches or performances that have not been written or recorded); Titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents; Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration; Works consisting entirely of information that is common property and containing no original authorship (for example: standard calendars, height and weight charts, tape measures and rulers, and lists or tables taken from public documents or other common sources).

Applicable U.S. Law:  United States Code, Title 17, Section 101 et seq.

Trademarks and Service Marks:

A "mark" is any word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services of one party from those of others.  A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product.  Normally, a trademark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services

Requirements for a Valid Trademark or Service Mark:

  • It must be distinctive.
  • It must be used by the owner.

Applicable Laws:

  • United States Code, Title 15, Section 1051 et seq.
  • State laws also apply