Business Owner's Manual

Protecting your Ideas

Whether you are already established or are thinking of starting a business, you may want to also consider some intellectual property issues. If you have developed, or are going to develop, ideas for products, company names, etc. there are some steps you can take to protect your rights to these ideas.

In addition to consulting with a patent or intellectual property attorney, read the following sections for a brief discussion of trademarks, patents, and copyrights.

SOURCES: Erminio D'Onofrio, SIBL Government Information Team

TRADEMARKS

Trademarks identify and distinguish the source of goods from those sold or manufactured by others. Service marks are essentially the same except that they identify and distinguish the source of a service rather than a product.

A trademark can be a word, phrase, symbol or design, or combination of words, phrases, symbols or designs. Rights to a trademark derive either from:

a.) the actual use of the mark, or

b.) the filing of an application to register with the United States Patent and Trademark Office stating bona fide intention to use the mark in commerce.

Unlike patents or copyrights, trademark rights can last indefinitely as long as the mark is being used to identify specific goods or services. Initial registration lasts 10 years and renewal is possible every ten years thereafter. A specific affidavit must be filed only once between the 5th and 6th year after the initial registration in order to keep the registration alive.

While it is not necessary or obligatory to register a trademark, there are several advantages and benefits that make registration a good idea:

Nationwide notice of the trademark's owner claim
Evidence of ownership of the trademark
Jurisdiction of federal courts may be invoked
Registration can be used as a basis for obtaining registration in foreign countries

Registration may be filed with the U.S. Customs Service to prevent importation of infringing foreign goods. Searching to determine that no one else is using a specific mark in any particular areas of the economy can be done through CASSIS, a database that includes all registered and pending trademarks. CASSIS is available at U.S. Patent and Trademark depository libraries; at the Science, Industry, and Business Library (SIBL); or directly through the United States Patent and Trademark Office. Information about forms, application fees, and electronic filing can also be found at the USPTO Web site.

PATENTS

A patent for an invention is the grant, issued by the Patent and Trademark Office, of a property right to the inventor. And any person who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof" can obtain a patent, which must satisfy the following three criteria:

1. novelty (new, not previously patented or described elsewhere)

2. unobvious (to a person with ordinary skills in the area of technology related to the invention)

3. usefulness (has a useful purpose and operates to perform the intended purpose)

This is what cannot be patented:

Works of authorship (copyrights)
Tradenames, logos and methods of doing business
Laws of nature
Inventions that will not work

Types of Patents

There are essentially three types of patents:

Utility (functional or structural novelty) — could be a machine or process that usually is subdivided into chemical, mechanical, or electrical categories
Design (ornamental design) — covers the appearance of an item
Plant (variety of plant) — includes the invention, discovery, and asexual reproduction (i.e. reproduced by means other than seeds) of any distinct and new variety of plant.

Duration of Patents

The granting of a patent entitles the inventor to exclusive rights, that is the right to exclude others from making, using, offering for sale, selling, or importing the invention.

The duration of these rights is:

20 years from date of application for utility and plant patents

14 years from date of issue for design patents.

Searching to determine that an invention is "new" is usually based on a classification and subclassification system and can be done through CASSIS (a database available at USPTO Libraries and at the Science, Industry, and Business Library) or through the United States Patent and Trademark Office (for patents issued since January 1, 1976). Forms, application fees, and a list of attorneys and agents registered to practice before the Patent and Trademark Office can also be found at the United States Patent and Trademark Office Web site.

COPYRIGHT

Copyright is a form of protection to which authors of original works, including literary, dramatic, musical, artistic, and some other intellectual works, are entitled by law. Copyright ownership prevents others from copying, distributing, displaying, or performing a specific work.

Copyright Criteria

In order to be eligible for copyright a work must:

a) be original ( i.e. it has not been copied from somewhere else)

b) represent the actual "expression" of the author, rather than being an idea

c) be "fixed" in some tangible format

Works that can be copyrighted include:

a) literary works

b) musical works, including any accompanying words

c) dramatic works, including any accompanying music

d) pantomimes and choreographic works

e) pictorial, graphic, and sculptural works

f) motion pictures and other audiovisual works

g) sound recordings

h) architectural works

Copyright Duration

Copyright protection lasts for definite time periods depending on when the works involved were created and published or registered. In general, works created on or after January 1, 1978 are protected for a period that includes the author's life plus 70 years; works created before January 1, 1978 are protected for a period of 75 years.

The public can search Copyright Office records at their Washington, DC location or ask the Office to do a fee based search. Beginning with 1978, all records can also be searched online at the Library of Congress Web site.

Copyright registration is not necessary, but is recommended. Although copyright protection begins at the time a work is created and registration is not a condition of copyright protection, there are at least two reasons why it is advisable to register:

1. Registration establishes a public record of the copyright claim

2. Before an infringement suit may be filed in court, registration is necessary for works created in the United States.

For information on registration procedures write to:

Library of Congress
Copyright Office
Register of Copyrights
101 Independence Ave., S.E.
Washington, DC 20559-6000

or check the Copyright Office Web site.

ADDITIONAL LIBRARY RESOURCES

The Science, Industry, and Business Library (SIBL) is a U.S. Depository Patent Library. Microforms of older patents are available in the Quade Microforms Room, located on the library's lower level. The library receives The Official Gazette, a publication that contains abstracts of U.S. patents, and it is also available in the Quade Microforms Room. The latest 10 years are available in print, and the full collection of the SIBL's holdings , 1872 to the present, are available on microfilm. Free public classes on patent and trademark searching are also offered at SIBL. Copies of the upcoming class schedule are available at the library or from SIBL's Training Center.

Print Resources

How to Register Your Own Trademark

The Entrepreneur's Guide: to Patents, Copyrights, Trademarks, Trade Secrets, and Licensing

Trademark: Legal Care for Your Business & Product Name

Patent It Yourself

Inventor's Guide to Law, Business and Taxes

The Copyright Handbook: How to Protect & Use Written Works

Electronic Resources

CASSIS Database

Selected Internet Resources

United States Patent and Trademark Office