Patent, Copyright and Trademark: An Intellectual Property Desk Reference / Edition 7 available in Paperback
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The most concise and comprehensive explanations of intellectual property law available!
Whether you're an Edison, Faulkner or Jobs, you need Patent, Copyright & Trademark.
Intellectual property law has rapidly produced its own language. But don't count on understanding it right off the bat -- the language baffles lawyers and lay folk alike. Whether you're an inventor, designer, writer or programmer, you need to understand the language of intellectual property law to intelligently deal with such issues as:
how these owners can protect and enforce their ownership rights
With this essential guide, you will:
The 9th edition is completely updated to provide the latest law and court decisions, new definitions and additional resources. It also covers new topics such as "patent trolls" and the Supreme Court's decision in KSR v. Teleflex.
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In simple terms, intellectual property is a product of the human intellect that has commercial value. Intellectual property encompasses a wide range of creations -- from fiction, poetry, songs, designs and artwork to ads, product names, mechanical inventions, processes, chemical formulas, machines and software.
The commercial value of intellectual property comes from the ability of its owner to control its use. If the owner could not legally require payment in exchange for use, ownership of the intellectual property would have intellectual worth but no commercial value.
EXAMPLE 1: Jayna writes a novel about romance in cyberspace. As the author/owner, she has the legal right to prevent others from reprinting the book, making a movie or creating a television miniseries based on the novel. It is this right that can produce revenue for Jayna: she can sell publishing rights to a publisher, movie rights to a movie producer and television rights to a network in exchange for royalties based on book, movie and TV proceeds.
How Intellectual Property Law Works
EXAMPLE 2: Todd invents a process for inserting modified genes into cancer cells. He applies for and receives a patent, a monopoly awarded by the federal government that allows Todd to require anyone who wants to use the process to pay him a negotiated license fee. If no one wants to use the process, Todd won't make any money (unless he uses it in his own gene therapy clinic).
Intellectual property law is an umbrella term for all the statutes, government regulations and court decisions that together determine who owns intellectual property and what rights go along with that ownership. In addition, intellectual property law specifies:
- the conditions under which intellectual property rights may be sold or loaned (licensed) to others for specific purposes
- how to settle contract disputes that arise from marketing intellectual property, and
- how to take advantage of government procedures and programs that establish or enhance protection of intellectual property rights.
Intellectual property law primarily offers protection to the owner of intellectual property by giving the owner the right to file a lawsuit asking a court to enforce whatever rights are being transgressed. As a result, some experts describe intellectual property laws as "affirmative rights" rather than as "protection." Noted patent attorney and author David Pressman suggests thinking of intellectual property laws as tools that can be used when needed, but not as any kind of defensive shield. In other words, intellectual property laws won'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. For example, upon request of the copyright owner, a court will halt unauthorized copying of material protected by the copyright. But if the copyright owner does not sue the copier, no action will be taken and the copier will get away with this illegal behavior.1. Types of intellectual property laws
Intellectual property law consists of several discrete legal categories. Although these categories can overlap with respect to a particular intellectual property, they each have their own characteristics and terminology.
- Trade secret law affords the owner of commercial information that provides a competitive edge the right to keep others from using such information if the information was improperly disclosed to or acquired by a competitor and the owner of the information took reasonable precautions to keep it secret.
- Copyright law protects all types of original creative expression, such as that produced by authors, composers, artists, designers, programmers and Web page designers. However, copyright law does not protect the ideas and concepts underlying an expressive work; it only protects the literal form the expressive work takes. For example, copyright protects the actual words used to write a novel about life on a submarine where the crew faces almost certain death because of damaged engines. But copyright won't prevent other writers from either writing novels about submarine life or using the same basic plot, as long as they don't copy the first novelist's literal expression. Copyright protection lasts a long time, often 100 years or more.
- Trademark law protects the distinctive (unique, creative or well known through use) names, designs, logos, slogans, symbols, colors, packaging, containers and any other devices that are used by businesses to identify the source of their goods and services, and distinguish them in the marketplace. This protection can last indefinitely.
- Patent law gives the inventor of a new and nonobvious invention the right to exclusive use of that invention for a limited term. How long the inventor retains the exclusive right depends on the kind of patent. A utility patent (the most common type of patent) goes into effect when issued by the U.S. Patent and Trademark Office and expires 20 years after the application for the patent was filed. A design patent (for an inventive 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.
Courts are frequently asked to intervene when one business uses unfair tactics to compete with another business. Among the unfair tactics the courts have condemned is a business trying to lure customers away from a competing business by confusing customers as to which business or products they are dealing with. The most common way to confuse customers is for a second business to market its goods or services under a name or other mark that is confusingly similar to that used by the first business on its goods or services.
Although courts originally decided these types of disputes without the benefit of a legislative enactment, Congress and most state legislatures have now legislated the basic principles developed by the courts to deal with unfair business practices. All together, these court decisions and statutes are termed unfair competition law. And under this body of law, a business may obtain a court order preventing a competitor from engaging in unfair business practices.
Unfair competition is not usually considered a separate branch of intellectual property law, as it targets general business practices rather than intellectual property as such. However, because the use of misleading names and marks to improperly lure customers away from another business is also very much what trademark law is concerned with, the two types of law often overlap.
3. International laws
EXAMPLE: The name used by Joe's Pizza is very ordinary and not distinctive enough to be considered a trademark. If, however, another business opens up down the street under a "Joes's Pizza" sign, the courts may use unfair competition laws to force the second user to modify the name to distinguish it from the first.
Under a variety of treaties, most countries in the world offer protection to U.S. intellectual property used abroad. And under these same treaties, the U.S. protects intellectual property created in these other countries. Several major international treaties -- the Berne Convention is the most important -- govern rights in copyrights in most countries. International patent rights are broadly recognized under the Paris Convention and the Patent Cooperation Treaty. Trademark owners also have some international rights under the Paris Convention. And trade secrets receive international protection under GATT (General Agreement on Tariffs and Trade).Legal Basis of Intellectual Property Laws
The sources of intellectual property laws vary according to the subject matter. Trade secret law derives both from federal and state legislation, and from court cases that have developed their own set of principles used to decide new trade secret cases that come before them (termed the "common law"). Trademark and unfair competition laws originate primarily in both federal and state statutes, but also, especially in the area of unfair competition, come from court decisions that apply principles developed by earlier courts as part of the common law. Copyright and patent laws originate in the U.S. Constitution and are specifically and exclusively implemented by federal statutes. In all these intellectual property areas, court decisions interpreting and enforcing applicable statutes also provide an important source of intellectual property law.4. Intersection of intellectual property laws
Although each category of intellectual property law is aimed at a particular type of intellectual property, trade secret, copyright, patent and trademark laws occasionally intersect with each other with respect to a particular intellectual property item. Some common examples of this are as follows:
- Trade secret and copyright. It is possible to maintain a work of expression as a trade secret and still have it protected by copyright up until the time that it is published -- that is, distributed to the public on an unrestricted basis. This is because the nature of trade secret law arises from the actions taken by the owner of the work to keep the work secret for the purpose of getting a jump on competitors, while copyright law automatically applies to any work of expression the instant it becomes fixed in a tangible form. The best example of an intellectual property item that is usually protected by both copyright and trade secret law is the written code underlying most computer software (called source code).
- 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 (PTO) treats applications as confidential until they are published. Unless the applicant files a Nonpublication Request 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. This publication effectively ends trade secret protection. If the applicant will not be filing abroad, the trade secret information in the patent application is kept confidential and is only published if the PTO grants the patent. At that point, the applicant gives up trade secret rights in order to obtain patent rights. If the applicant is not filing abroad and the patent application is rejected, the trade secret will remain intact and the competition will not know about the invention.
- Copyright and trademark. These laws may apply to the same item. For instance, 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 trade dress (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 area of product configuration. In short, when it comes to a product design -- say, jewelry or a toy -- the creator may, at least theoretically, be able to invoke any or all of these three approaches to intellectual property protection. (The reason we use the word "theoretically" is that courts always are trying to distinguish between the different forms of intellectual property and are prone to restrict the contexts in which they overlap.)
How to Use This Book
EXAMPLE: A design patent can issue on the new, unobvious, nonfunctional design of an article of manufacture -- for example, stylistic ornamentation added to a pair of eyeglasses. Trademark law may be used to protect the appearance of the ornamentation if it is intended to be -- and is -- used to distinguish the particular brand of eyeglasses in the marketplace. And copyright law may also be used to protect certain expressive aspects of the design.
This book contains short explanations of the key terms and concepts used in intellectual property law. It is separated into four self-contained parts, each of which is targeted to one of the main intellectual property law categories. The four parts are:
- Part 1: Trade Secret Law
- Part 2: Copyright Law
- Part 3: Patent Law, and
- Part 4: Trademark Law.
- Part 2: Copyright Law
You'll find a short overview of the category at the beginning of each part, followed by an alphabetical list of terms defined in that part. We also provide a number of useful lists and charts of additional information, as well as some samples of official forms that apply to each topic.1. What legal rights apply to your creative 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 in order to get to the right part of this book. These basic rules should point you in the right direction:
- Trade secrets consist of designs, devices, processes, compositions, techniques, formulas, information or recipes that are kept secret by their owner and which give their owner a competitive business advantage. (See Part 1: Trade Secret Law.)
- Copyrights protect original and tangible forms of expressing creative ideas, but not the ideas themselves. A creative nonfunctional design may be copyrightable. (See Part 2: Copyright Law.)
- Utility patents apply to new processes, machines, manufactures, compositions of matter, or new uses of any of the above if they are novel, nonobvious and useful. (See Part 3: Patent Law.)
- Design patents apply to unique and ornamental shapes or designs that are also nonfunctional. (See Part 3: Patent Law.)
- Plant patents may be issued for any asexually or sexually reproducible plants (such as flowers) that are both novel and unobvious. (See Part 3: Patent Law.)
- Trademarks apply to marketing devices: the name of a product or service or the symbols, logos, shapes, designs, sounds or smells used to identify them. They must be distinctive or have become well known through long use or advertising. (See Part 4: Trademark Law.)
- Unfair competition is a legal theory that extends protection to certain kinds of intellectual property when trademark, copyright and patent law don't apply. It applies when one business represents its products or services in a way that confuses customers and stops them from buying from another business. (See Part 4: Trademark Law.)
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.More Self-Help Intellectual Property Resources
Although this desk reference provides a great deal of information about the language and law associated with intellectual property, it cannot possibly provide step-by-step instructions for following various government procedures and programs to protect works of intellectual property.
Fortunately, there are a number of excellent self-help resources if you're interested in intellectual property -- whether you're using a lawyer or doing research on your own. We provide below brief descriptions of resources published by Nolo that provide detailed guidance. (Order information is at the back of this book, or visit our website: www.nolo.com.)
- Copyright Your Software by Stephen Fishman, explains everything about software copyright protection, and provides official copyright forms along with step-by-step instructions.
- Domain Names: How to Choose and Protect a Great Name for Your Website, by attorneys Patricia Gima and Stephen Elias, explains in plain English how to choose, register and protect a domain name.
- Getting Permission: How to License and Clear Copyrighted Materials Online and Off, by Richard Stim, spells out how to obtain permission to use art, music, writing or other copyrighted works.
- License Your Invention, 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. This quick and easy guide to patent law sets out the basics for protecting, searching, documenting and registering patentable inventions.
- Nondisclosure Agreements: Protect Your Trade Secrets and More, by Richard Stim and Stephen Fishman, clarifies the principles of trade secrecy and guides you through the development of a nondisclosure agreement.
- Patent It Yourself, by David Pressman. Patent attorney and former patent examiner David Pressman 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.
- Patent Searching Made Easy, by David Hitchcock, shows how to use the Internet and other free resources to search for patents.
- PatentPro Plus (software), combining the bestselling book Patent It Yourself with the popular PatentPro software (Windows), enables users to prepare, assemble and file a utility patent.
- 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.
- The Patent Drawing Book, 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 and Use 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 and 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.
Table of ContentsIntroduction
How Intellectual Property Law Works
Determining What Rights Apply to Your Work
Intellectual Property Laws Chart
Self-Help Intellectual Property Resources From Nolo
Your Legal Companion
Part 1: Patent Law
Part 2: Copyright Law
Part 3: Trademark Law
Part 4: Trade Secret Law
What People are Saying About This
A good basic general text on the subject of intellectual property. As manufacturing companies in general, especially small to medium size companies, in the U.S., tend to be sloppy about protecting their intellectual property, this should be must reading for whoever is the corporate head bean counter.
Patent Agent of Morgan and Associates