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At the law firm of Sanders & Parks, our attorneys are committed to helping you protect your intellectual property. In addition to offering you assistance in protecting your ideas and creations, we want to offer you guidance on how to maximize their value. Our lawyers have been helping people in Phoenix, Arizona, and nationwide for more than 30 years. From intellectual property registration to intellectual property litigation, our experience can work for you.
Intellectual property law regulates the reproduction of creative and original works. When a work qualifies for protection, its author or creator has the right to exclude others from copying, distributing or otherwise using the work for economic benefit. Generally, intellectual property can be transferred, regulated and protected like other forms of property. The four primary areas of intellectual property are:
- Copyright: protects an original work of authorship fixed in a tangible medium of expression, such as a book, computer program, graphic artwork or motion picture
- Patent: protects a novel, useful and non-obvious invention, process or design
- Trade secret: protects confidential business information, including a computer programming code or other business formula, that gives its owner an advantage over other businesses
- Trademark: protects a word, symbol, name or other designation of a product or service
The Purpose of Intellectual Property Law
Intellectual property law is specifically designed to reward authors, inventors and creators for their ingenuity and creativity. In addition, these rights are intended to support a free-flowing exchange of information and ideas, encouraging constant improvement in industry and the arts.
Regulation by Federal, State and International Law
Depending on the subject matter of the work, intellectual property rights are protected under a combination of state, federal and even international law. The U.S. Constitution recognizes intellectual property in the Patent and Copyright Clause (Article I, Section 8, Clause 8), giving Congress the power to provide authors and inventors a limited monopoly on their work for the purpose of advancing science and the arts. Likewise, trade secrets and trademark law find their origins in the common law.
As the global marketplace emerged in the 20th century, the need for international protection of intellectual property came to the forefront of global trade discussions. In response to this need, the World Intellectual Property Organization (WIPO) was created within the United Nations to monitor, regulate and control matters of intellectual property worldwide.
Intellectual Property and Unfair Competition
Intellectual property law also works to eliminate unfair competition in commercial markets. Trademark infringement, trade secret misappropriation and deceptive marketing practices stifle the ability to compete in the marketplace. While trademark law specifically has roots in unfair competition law, the philosophy behind unfair competition law informs all areas of intellectual property. Unfair competition law proscribes numerous acts, including: the deceptive marketing of goods through either misrepresentation or “passing off” one’s goods as those of another; false advertising that confuses consumers and causes a business to lose sales; criticism of another’s goods through false or deceptive statements, causing intentional economic harm; wrongfully using a known trademark to market a product; and misappropriating a competitor’s property rights for one’s own benefit.
Speak to a Lawyer
The laws of intellectual property and unfair competition together seek to eliminate dishonest commercial practices and ensure the expansion of markets and the ideas that drive them. If you have questions regarding intellectual property law, contact an attorney at Sanders & Parks in Phoenix, AZ, who has the experience to assist you.
A copyright grants its owner exclusive rights in an original work of authorship, including the right to reproduce the work; the right to adapt the work or to prepare derivative works; the right to distribute copies of the work to the public; and the right to publicly perform or display the work. The work must exist in a tangible medium of expression, such as a painting, novel or CD. Copyright law protects the expression embodied by the work, but not the idea behind it.
A copyright provides economic rights in the work so that its owner can reap financial benefits from it. Unlike the copyright laws of many civil law countries such as France, which protects the author’s moral rights in the work, U.S. copyright law generally does not protect the author’s right to ensure the integrity of the work. A U.S. copyright typically lasts for the life of the author plus 70 years. Works for hire enjoy protection for 95 years after publication or 120 years after creation (whichever comes first).
What Copyright Law Protects
In addition to protecting works such as a books, articles, computer programs, visual or graphic artwork, dramatic works, motion pictures, sound recordings, choreographic works and architectural works, copyright law covers certain types of compilations and derivative works. In the case of “work for hire” and some commissioned works, the employer or person for whom the work is prepared is considered to be the “author” for copyright purposes (and therefore the copyright owner) unless a written agreement states otherwise.
The Fair Use Doctrine
Generally, one may not copy or publicly display a work whose copyright is owned by another. The doctrine of fair use, however, presents an exception to this rule. The fair use doctrine applies when the use is for educational, research, news reporting or criticism purposes — typically in ways that are noncommercial, do not harm the market for the copyrighted work and do not copy too much of the work. Parody has also been considered fair use when it uses just enough of the original material to convey its message about that material.
The Copyright Registration Process
Copyright exists in a qualifying original work as soon as the expression is fixed in a tangible medium. When you write down an original story on a piece of paper, for example, that expression is copyrighted. Formally registering your copyright is not required, but it is recommended. Works whose copyrights are registered have stronger protection against copyright infringement in federal courts. To register the copyright, you must send a copy of the work to the Copyright Office at the Library of Congress, along with an application fee and the proper documentation. An attorney can help with this process and other copyright-related matters.
The registration application for a compilation (a specially selected and arranged group of works or data) or a derivative work (material based on a pre-existing work) must identify any other works upon which the new work was based, as well as how the new work exceeds the scope of the prior work. The Register of Copyrights will either issue a certificate of registration or send a letter of refusal to the applicant, denying copyright protection. Applicants can request that the Copyright Office reconsider a refusal.
License or Transfer of Ownership
Once an author has a copyright in a work, the author may transfer part or all of the rights to another person or entity, just as one would transfer real or tangible property. Copyrights may be transferred by the author’s will, by intestate succession, or by any other means of property transfer; they may also be licensed or assigned for a specified duration of time. All transfers of ownership must be made in writing and signed by the owner. Licenses may be granted orally, however, without a written contract. It is important to protect your rights in these contracts, which can be complex and have far-reaching effects.
Contact a Lawyer
Contact an experienced intellectual property attorney at Sanders & Parks in Phoenix, AZ, to look after your interests.
A patent is a government grant of the right to exclude others from using, manufacturing or selling an invention, process, or design for a specific period of time, usually 20 years from the date the patent application was filed. The United States Patent and Trademark Office (USPTO) is the granting organization. In order to receive a patent, the applicant must show that the invention, process, or design is novel, useful and non-obvious.
Requirements to Receive a Patent
In order for an invention, process, or design to qualify for a patent, it must meet several basic requirements. First, the invention must be “novel”: it must not already known, used by others or patented in this country. Second, the invention must be “useful”: its use must yield a significant and present benefit to society. The usefulness of the invention does not need to be economic in nature; it may be able to offer some immediate scientific or other benefit. Third, the invention must be “non-obvious”: no person of ordinary skill, practicing the industry or art of the invention, would consider the invention obvious. Many patentable inventions, however, expand on existing ideas.
The Patent and Trademark Office
Operating within the Department of Commerce, the United States Patent and Trademark Office (USPTO) is charged with issuing patents, registering trademarks and providing information on both patents and trademarks. Located in the Washington, D.C., area, the USPTO receives and reviews all applications for U.S. patents.
Patent prosecution, or the process of seeking a patent, is complex and lengthy. Applications for patents are filed with the USPTO and reviewed by patent examiners who are trained in fields such as chemistry, biology and engineering. Upon review, an examiner will either grant or deny the patent. A notice of rejection is accompanied by a statement of the reasons that the claim was refused so that an applicant may appeal the denial. The appeal typically must take place within three months of refusal, but this can vary.
A twice-rejected application may be appealed to the Board of Patent Appeals and Interferences, with the payment of an additional appeals fee and the filing of a brief. (Alternatively, the applicant may file a request for continued examination (RCE).) If the applicant’s appeal is not successful, the applicant may appeal to the Court of Appeals for the Federal Circuit or file a civil lawsuit against the director of the USPTO.
Application Requirements and Confidentiality
A patent applicant may be required to submit design drawings, models of the invention and/or specifications on how to make and use the invention. The applicant will also be required to submit an oath stating that, to his or her knowledge, the applicant is the first inventor of the creation. Applications for patents are usually published 18 months after they are filed. A lawyer with Sanders & Parks in Phoenix, AZ, can provide additional assistance.
The protection of trade secrets is essential to the health of countless businesses. A trade secret is business information such as a formula, pattern, method or device that has the potential to provide financial gain for its owner. The secret is kept confidential because it is the secrecy that gives its owner the advantage over other businesses. Generally, employees with access to trade secrets have a duty not to disclose them in a way that harms the owner. Unlike patented items, trade secrets do not need to be registered with a federal agency to be protected. Indeed, if trade secrets were registered as patents, they would be available to the public — and no longer secret.
When Is Confidential Business Information a Trade Secret?
Through statute and case law, the criteria for identifying trade secrets have evolved. The level of protection given to confidential business information is dependent upon whether the information is easily available to competing firms through legitimate means. Similarly, the resources the owner of the alleged trade secret invested in developing the secret helps in the determination. The more likely it is that the information would provide a commercial advantage to competitors, the more likely it is to be considered a trade secret. The owner of the information must make reasonable efforts, considering the circumstances, to protect the secret. This may mean imposing extreme restrictions on which employees have access to the information, or it may mean merely not disclosing the information in a public setting. It depends on the facts in question.
A court typically will look at all relevant aspects of the information’s development, confidentiality and profit potential in deciding whether it should be protected as a trade secret.
Misappropriation and Disclosure of a Trade Secret
The misappropriation of a trade secret can transpire in several ways. It occurs when someone acquires the secret through improper means and then uses it inequitably. “Improper means” includes theft, espionage and breach of confidence. Using the trade secret “inequitably” can include integrating the information into a manufacturing process or selling the information to a competitor of the owner. It can also occur when a third party knowingly acquires the secret from someone who is improperly disclosing it, or even disclosing it by mistake. If the third party acquires the knowledge accidentally, it must not use or reveal the secret.
To succeed in court, the plaintiff must prove that it owned a trade secret; that the secret was disclosed in confidence to someone; that the person then used or disclosed the secret; and that the use or disclosure harmed the plaintiff.
Reverse engineering, which occurs when a product is released to the public and the public is able to detect the formerly secret technology inherent in the product, is not forbidden. The source code of computer software, however, is not considered to be open to reverse engineering.
Remedies for the Misappropriation of Trade Secrets
The owner of a misappropriated trade secret may seek an injunction and/or monetary damages. At the court’s discretion, the plaintiff may be awarded damages for its loss; the defendant’s gain; or reasonable royalties. If you have concerns about trade secret law, a lawyer with Sanders & Parks in Phoenix, AZ, can help.
A trademark is a word, symbol, name or other designation that identifies and distinguishes a good or service. Trademarks exist mainly for the protection of the consumer; the ability to identify the source of a good or service helps the consumer to confirm quality and authenticity. Trademarks also help businesses prevent competitors from usurping the goodwill associated with their products and services. Trademark law’s origins lie in the common law on unfair competition, but statutory law has codified and expanded these protections.
Types of Marks
Four types of marks identify products, services and associations:
- Trademarks identify the source, such as the manufacturer, of goods
- Service marks identify the source, such as a restaurant, of services
- Certification marks show that a product or service meets a specific standard
- Collective marks are trademarks or service marks that designate membership in a group that produces goods or services, such as a consortium of wine producers, or a group that acts together, such as a union
Federal registration of trademarks or service marks is not necessary, but it provides valuable benefits and protections. It gives constructive notice of the applicant’s rights in the trademark; the automatic ability to sue for trademark infringement in federal court; and increased damage awards, among other financial and evidentiary advantages.
To register a trademark, the applicant must have used the mark in interstate commerce or have a bona fide intent to do so. The trademark owner or attorney submits the application to the United States Patent and Trademark Office (USPTO), describing the use of the mark, attaching a representation of the mark and providing the appropriate fees. Foreign trademarks also may be registered.
The USPTO will examine the application. If the application is denied, the applicant may file a response within six months. If the application is preliminarily approved and it is not opposed by a member of the public, the USPTO will issue the applicant a certificate of registration. An attorney can provide assistance in the often-complex trademark registration process.
The Scope of Trademark Protection
Trademarks include graphic representations such as brand names, logos and other widely recognized distinguishing features. Even distinctive colors and scents can be protected under trademark law in certain situations. A mere description of a product, however, such as the commonly used term “organic,” cannot be trademarked.
Unlike patent registration, trademark registration can be renewed as long as the trademark continues to be used in commerce. Five to six years after the certificate of registration is issued, the owner must file an Affidavit of Use; the owner must do the same within a year of the end of every ten-year period after the registration.
Remedies for trademark infringement include injunctive relief and compensation for loss of sales and other financial damages. Generally the plaintiff must show a likelihood of confusion between the plaintiff’s mark and the defendant’s; courts usually require a showing of actual confusion and willful infringement for the plaintiff to secure monetary damages.
Trademarks under International Law
The Madrid Protocol, adopted by numerous countries including the United States, allows an applicant in one country to designate other member countries in which the applicant wishes to register the trademark. If the applicant is a resident or citizen of the U.S. or has real and effective commercial ties to the U.S., the application may first be filed with and approved by the USPTO, which forwards it to the International Bureau of the World Intellectual Property Organization (WIPO). WIPO also must approve the application. Upon approval, the Bureau will issue an international registration.
Ownership and Abandonment
Like other forms of intellectual property, a trademark can be bought, sold or licensed under many circumstances. A trademark can also be abandoned if its owner stops using the mark, intending not to resume the use. Abandonment may be inferred from non-use. It is therefore of the utmost importance to ensure that you are maintaining your intellectual property rights. If you have questions regarding trademarks, a lawyer with Sanders & Parks in Phoenix, AZ, can provide assistance.
U.S. Copyright Office
The U.S. Copyright Office site provides information on U.S. copyright law; how to register and license a copyright; and other pertinent information for owners of copyrights.
U.S. Patent and Trademark Office (USPTO)
This federal agency website provides practical information on applying for patents, registering trademarks and more. It explains federal laws, federal regulations and international laws and lists the procedures, fees and forms to apply for patent and trademark protection.
Federal Trade Commission (FTC)
As the government body responsible for monitoring deceptive marketing and unfair competition in the US, the FTC maintains information for both consumers and businesses on numerous commercial topics of interest.
World Intellectual Property Organization (WIPO)
WIPO is a United Nations organization that promotes and protects intellectual property globally. This site lists its various activities and efforts; a searchable digital library of its international intellectual property data collection; information on its arbitration and mediation center; and information on how to file an application for a trademark registration with its International Bureau.
U.S. Department of Commerce
As the government body overseeing the Patent and Trademark Office, the Department of Commerce offers general information on patents, trademarks and the Trademark Electronic Application System (TEAS).
U.S. Department of Justice, Computer Crime and Intellectual Property Section
The Department of Justice details on its website the various policies and programs designed to protect and enforce intellectual property rights. It provides information on federal criminal intellectual property laws; a list of criminal intellectual property cases recently prosecuted by the Department of Justice; and the DOJ’s continued efforts and initiatives both nationally and internationally to protect intellectual property.
World Trade Organization
The WTO is a global agency that promotes and monitors international trade. Its website contains information on trade-related aspects of intellectual property rights.
FBI: Economic Espionage
Federal Bureau of Investigation/Office of Private Sector information on economic espionage.
USPTO Kids’ Pages
U.S. Patent and Trademark Office site designed to give children an idea of what intellectual property is and why it is important in their lives. The site also contains information for parents and teachers.