Overview of Intellectual Property

So how do I protect my intellectual property?

Often the hardest part of figuring out how to protect your idea is to determine what kind of protection is most appropriate. This is made even more complicated by the fact that ideas, as such, aren't really protected at all - what you can protect is the expression of an idea in the form of a product, a book or computer program, a painting or photograph, even a name for a product or service.

This page should serve as an introduction to the basic kinds of intellectual property protection - Patents, Trademarks, Copyrights and Trade Secrets. Once you've decided what form(s) of protection are right for your situation, follow the links to more detailed pages on each topic.

PATENTS are appropriate for "useful things" or methods of doing something.

There are three main kinds of patents:

Utility Patents cover "inventions" -- a machine, an article of manufacture, a method of doing something, a chemical or DNA sequence or the method of its use, products of genetic engineering, or improvements to any of these things.

Plant Patents may be granted to anyone who invents or discovers, and asexually reproduces, a new variety of certain kinds of plants. (Note that other kinds of plants, especially those altered by genetic engineering, may be protectable under utility patents).

Design Patents cover the ornamental appearance of a useful device but not its function. For example, the body shape of a Porsche "Targa" automobile and the case of the IBM Selectric® typewriter were the subject of design patents.

TRADEMARKS cover the name, or a slogan or phrase, or some other symbol or design (sometimes called a "logo") which represent the source of a product or service.

Sometimes the appearance of a product or its packaging can be considered a trademark (often called "trade dress"). For example, the name "Coca-Cola®", or the shape of a Coke® bottle are registered trademarks. In rare instances, other things, such as: sounds (Tarzan's yell or the MGM lion's roar), a sequence of notes (the NBC chimes), a piece of music (the Harlem Globetrotter's "Sweet Georgia Brown" or the Lone Ranger theme), colors (pink Fiberglas® insulation),  or even fragrances (a floral scent applied to Clarke thread), may be registered as trademarks. 

COPYRIGHTS protect works of authorship, composition, or artistry.

Copyright covers books, sculptures, paintings or photographs, computer programs, architectural works, movies and records, musical compositions, etc. In the case of musical recordings, the copyright may extend to the music itself (tune and lyrics) and the recording of the performance.

TRADE SECRET protection is available, as the name suggests, for secrets used in business - the method of making a product or the ingredients which go into it, customer or prospect lists, any fact which, if known, would give your competition an advantage. The inner workings (algorithms, source code) of computer programs are often protected as trade secrets. The formula for Coca-Cola® is a famous example of a trade secret.

COMPUTER SOFTWARE

Special notes on computer software: This is an area of the law which has evolved over time. Older references may state baldly that "software is not patentable." This is only partly correct.

• Inventions which are software based are patentable, if they meet the other requirements for patentability, although since 2014 this has become more difficult. The distinction is not a clear one, but basically can be summed up as "if the program does something in the real world (that is, it controls a machine or transforms something from one state to another), or involves a technological device other than a general-purpose computer or improves the operation of the computer or some other technology you can patent how it does what it does." The landmark case concerned a rubber curing system using a computer program (really a series of mathematical steps), which, as its last step, controlled a rubber mold in response to the program output. 
• That said, in 2014, the Alice v CLS Bank case significantly cut back on the patentability of computer-implemented inventions, and there have been many cases after Alice which have cut back even more. Essentially, Alice and the other cases said that you cannot patent an abstract idea or a fundamental economic principle or a law of nature, just because you say "do it on a computer". 
• Since Alice the USPTO and the courts have been struggling to define just what is, and is not, patent-eligible subject matter. The USPTO has released a series of guidelines giving examples of what sorts of inventions which have been held to be patentable (or not) by the courts, as guidance to examiners. 
• There are also a number of blogs which concentrate on patentable subject matter issues, particlularly in the computer field - we recommend Dennis Crouch's Patently Obvious blog and Gene Quinn's IP Watchdog.
• Foreign Patents? - Note that many countries do not allow (or severely limit) patents on computer implemented methods. If you were interested in patent protection outside the USA, you would need to consider this issue country-by-country. 
• Methods of operating a computer may or may not be patentable - patent applications on pure software are often rejected as being "mathematical algorithms" or "purely mental steps" - but methods of data compression and transmission have been patented, and even after Alice if a method of operating the computer itself or a network of computers is novel and not obvious, you have a chance of getting a patent on the method. However, it should be understood that even here you do not patent the program code (that's a copyright matter), but rather the steps the program performs.
• Copyright is still the right way to protect program code, as such, since it protects against copying, without reference to the novelty or non-obviousness of the code.
• Often the key parts of the program code are maintained as trade secrets. You will want to have agreements with users and (especially) with anyone who has access to source code protecting your trade secret status. Also, there are ways to avoid providing source code for those parts of the code which you consider secret when you register your copyright.
• In the end, computer software protection is complicated - please consult an experienced attorney about your specific software situation!

Domain Names

Domain names can be registered as trademarks. The US Patent and Trademark Office has specific procedures for how applications to register domains are to be handled - basically, one ignores the "top level domain" (.com, .net) and the server name (www., usually) and looks at the rest of the domain for likelihood of confusion with other marks. In this way, domains are treated somewhat like telephone number marks (where, for example, the "1-800" prefix is ignored).

Disputes over internet domain names involve a number of factors. Most often, an owner of a Trademark finds out that someone has registered a domain name which is similar or identical to a registered or common law trademark, or which incorporates a mark into the domain name ("lucentsucks.com" was the subject of a lawsuit by Lucent Technologies, for example). Perhaps the domain name owner also holds a valid trademark, or perhaps he's a "cybersquatter" (holding the domain to prevent a trademark owner from using it or "holding it hostage" for a payment), or a "cybersquirrel" (who registered many marks which are not specifically trademarks, in hopes someone will offer money for one of them).

How these disputes are to be handled depends upon trademark law, as well as other procedures and laws such as ICANN's Uniform Dispute Resolution Policy (UDRP), or the procedure set up by a specific registrar, and the Anti-Cyberpiracy Protection Act. In each case, there are many factors to consider, including the relative uses of the domain name and the mark it allegedly infringes, the motive of the domain holder and what has been done with the domain, and so on.

If you have a question about a conflict involving a domain name, please contact us by e-mail.

Sometimes a single product may be eligible for more than one form of protection. For example, the IBM Selectric® typewriter had a design patent on its shape and a utility patent on its mechanism. Furthermore, the name Selectric® is a registered trademark of IBM, and if the typewriter were microprocessor controlled, the programming could be protected by copyright, or considered a trade secret.

This entire collection of web pages is presented as a general background to the intricate field of Intellectual Property. It is not intended as specific legal advice, and you should consult with a qualified attorney (preferably Brown and Michaels) to determine just what kind of intellectual property protection fits your individual situation.