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Experienced Innovator Guide |
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Protecting your ideas |
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In this Section
What About Your Invention is Patentable? The United States Patent and Trademark Office offers several types of patent protection to inventors. Generally one or another type of patent is most appropriate to a new invention, but frequently an inventor is well advised to seek more than one type. Because this information is written for the small entity independent inventor, the "utility" patent and the "design" patent are addressed, because these forms of patent protection are usually most appropriate. The Design Patent Design patents protect the ornamental nature of a new invention. One will immediately understand what is protected by reading a design patent. The legal claim, and there is only one claim in a design patent, simply states that what is protected is depicted in the accompanying drawings. There is no elaborate detailed description of how the invention is constructed and how it works in a design patent. A brief description of the drawing figures merely states what views are being shown. So what defines the particularity of protection in the given invention? Only the drawing figures. These figures are drawn to depict the invention with accuracy from every side. You may have guessed it already; but the design patent protects the outward appearance of inventions. That's all. Should a competitor find a way of making a device that accomplishes the same results as your design patented invention, but which does not look like yours, he or she can make and sell such a device without worrying about infringing your design patent. Design patents are useful for preventing counterfeiting or "same image knockoffs," and possibly protect against competitive goods that look similar, but the determination of what-looks-like-what is subjective and often difficult to anticipate. The Utility Patent There are at least ten times as many utility patents as there are design patents. You may be somewhat familiar with utility patents but do not know there are any other types. If you are asked, "Is it patented," they usually mean. "Is there utility patent protection." Utility patents have the potential to protect inventions very strongly and quite broadly. This form of patent protection addresses the structure of the invention and how it works. Utility patents also protect methods, such as a method of baking a cake; i.e., sift four cups of flour into a bowl; next, whip two eggs, etc. Utility patents protect new materials as well. Often a novice inventor will worry that if he protects a particular physical structure in his patent, then others will simply change the structure to some degree and "get around" his patent so as to successfully compete. Although this can happen, two things can make it difficult if not impossible in many cases. First, alternate embodiments of the same invention can't avoid infringement if the patent claims use broad language to cover most of the important possible embodiments, not just the one or more described within the patent application per se. Second, if the patented invention is the best embodiment; i.e., least parts, lowest cost, accomplishes its objectives with great efficiency, and so on, one would expect that other embodiments being less desirable will not be competitive in the marketplace. The key lesson taught by this issue is that patent protection cannot make up for poor invention. By law, design/utility patents are prepared and prosecuted before the U.S. PTO by registered patent agents and patent attorneys, but you, the inventor, may also file them pro se, that is. Needless to say, this is not a very good idea, except for the Provisional Patent application. Current filing fees are, at the time of this writing, $160 for design patent applications and $395 for utility patent applications. The cost to have these applications prepared and prosecuted is usually much less for the design patent. Design patents are valid for 14 years from date of issuance and utility patents are valid for 20 years from the date of filing. Neither can be renewed once expired. The design patent does not require maintenance fees but the utility patent requires a fee paid 3, 7 and 11 years after date of issuance in order to keep it in force. If a new invention is, disclosed to the general public such as by a press or new-product release, or if it is offered for sale, you lose your right to file for patent protection in most foreign countries. However, you may still file a U.S. patent application within one year of the disclosure or offer for sale. If a U.S. patent is filed prior to any public disclosure or offer for sale, foreign patents may be filed within one year of the U.S. filing. In such cases the date of priority given to such foreign filings is the U.S. filing date. This rule allows you to publicly disclose and sell your invention after a U.S. filed application, and not worry about others getting foreign filing date priority. However, if foreign filings are not completed within the one-year grace period, you lose your right to assert the U.S. filing date as your foreign application priority date. Return to Table of Contents for this guide | Return to index of all guides | Return to the top of this page In order to be able to apply for a patent on a product, you need to know whether anything like it has already been patented. In order to determine this, you'll need to conduct a "patent search" to discover if a similar product has ever been patented. This process requires researching through patents in your specific category, as far back in history as possible. For about $500, you can do this through a patent attorney or patent agent office. But if you have the time and your city has a patent depository library, you can also do your own preliminary search for free. There are more than eighty U.S. Patent Depository Libraries located throughout the United States, at least one per state. But first, here's the difference between a "patent" search and "trademark" search. Patent Searches A patent search is a search of all the patented items in the U.S. Patent and Trademark archives to see if your product has already been patented. Up until 1995, patent durations were for 17 years from the date of the patent's issue. Therefore if you happen to find any patents exactly like yours, which have expired, these patents are now "public domain" and cannot be patented again. Similarly, if you find a patent, which is still active, you will not be able to patent your product unless it is different enough. However, finding existing patents, whether in the public domain or active, is very valuable to you because it can help you and your patent attorney develop your patent so that it isn't rejected based on past claims of these existing patents. This is where a good patent attorney is crucial. A patent search is a more specialized task than a trademark search, because to conduct a thorough patent search really requires thought and analysis. While we recommend getting a patent search with a qualified patent attorney or agent, we also suggest that you do a preliminary patent search yourself, because you will learn a lot about your product by doing this preliminary research. By doing a preliminary search yourself, you will also be able to compare the results to see whether you came up with any patents that were not on the patent attorney's list. Trademark Searches A patent search is completely different from a trademark search. A trademark search is a simple process of a computer going through a database of trademarked words to see if any of the words match. They will come up with a list of similar trademarks for you to review and determine whether your proposed name is already taken or not. A Company's trademarked name and logo is its intellectual property. If you find trademarks that are very similar to your proposed name and are even in the same industry, you might want to consider a different name from the get-go to help you save money in filing it, having to drop it, and then having to file a new name because you are infringing on somebody's trademarked name. Companies who own trademarks can subscribe to a "trademark watch" service, which provides them with reports of similar names that are in the process of being trademarked. Therefore, if your name is too similar, these companies will know about your trademark registration and you could receive a letter from their attorney stating that your proposed name is infringing upon their trademark. However, if your proposed name is the only name you want, and you feel it is different enough from any other trademarked names, you can take it through the procedure of dialogue between attorneys to determine whether you will have a legal battle or not. Your attorney will be your best counsel on this. A trademark search usually costs in the range of $200. Patent and Trademark Depository Libraries There are about 80 Patent and Trademark Depository Libraries throughout the United States -- at least one per state. If you don't have a Patent and Trademark Depository library near you or in your state, you might want to consider taking a business trip to the nearest one if it's within your budget and if you have the time. By going there physically, you will have the direct assistance of the qualified department staff to help you with any questions or problems you may have. You can estimate at least one full day's work at the depository library. Copyright searches as well as trademark searches can be done in these specialized libraries too. Internet If you're limited on time and money, you can also do a "preliminary patent search" right on the Internet. However, please note that the U.S. Patent & Trademark Office says that "you can search patents on the web but you can't do a patent search." However, starting out by doing a preliminary patent search on the web, will familiarize you with the terms and general system so that you are prepared and better educated when you either go to the Patent and Trademark Depository Library or to a patent attorney. Shopping for Patent Services When you shop for patent attorneys or patent searchers, ask what database they use to conduct their search. Many use a standard computer database, which searches for all patents issued after 1965 because, believe it or not, earlier patents aren't computerized yet. Patent and Trademark Depository Libraries also have access to the computer database (sometimes they charge a nominal fee of $25-$50) so you can do a manual and computerized search at the same time. Most patent attorneys also do patent and trademark searches. However, there are also independent research companies that specialize in patent or trademark searches and other aspects such as a trademark watch service -- a service that sends you a list of any new trademark or patent applications similar to yours, once you have a trademark or patent. Average rates for patent searches are about $500, and cost more if it's done more thoroughly than just through a computer search. If you check firms located in Arlington, VA or Washington D.C., they usually do their searches with the original patent records located at the United States Patent and Trademark and Office, which could be a more complete search. As with any service, we recommend that you call and request that brochures be mailed to you first, and ask them lots of questions about how they do the search and what databases and sources they use. Then start laying out your information so you can compare all of the services at a glance. Avoid the Pitfalls As you research patent search companies, be aware that you might end up contacting what are known in the industry as "invention scam operations" who will offer to not only do the patent search, but will also do an evaluation, file the patent, market the product, get it licensed and will basically offer to do it ALL for their clients (for escalating fees, of course). The only way to distinguish between companies is to gather information first, then determine whether the company's mode of operation fits the pattern of these types of operations. http://www.inventorfraud.com. Return to Table of Contents for this guide | Return to index of all guides | Return to the top of this page A patent is a document that is issued to an inventor by the United States Patent and Trademark Office in Washington, D.C. It contains a detailed description of what the invention is and how to make or use it. In addition, each patent has at least one "claim," which summarizes what the inventor asserts to be his or her protectable invention. Patents can have lots of claims ranging from the general to the specific if the invention warrants them. If someone other than the inventor starts making, using or selling what is described in any claim of a patent, the patent is infringed. An inventor has the right to stop such an infringement and may be able to obtain money to compensate for any damage or injury caused by the infringement. This is called the patent right, and it runs for 20 years. NOTE: The 20-year right applies to applications filed on or after June 8, 1995. Prior to that date patents were granted for 17 years. The basic idea behind patents is to encourage you to make your creations known to others so that everyone working in a particular field can develop further inventions based on the most up-to-date technology, or get a license to use the creations. The theory is that this disclosure betters society as a whole. The 20-year patent right is granted as a fair exchange for full disclosure of the invention by the inventor. What Makes An Invention Patentable?
Note: Special patents are also available for ornamental designs that are new and original. For instance, you designed a distinctive bottle in the shape of a chili pepper to hold salsa, you could apply for a design patent. These are granted for only 14 years, rather than 20, and the procedures for applying are pretty much the same as for other patents; however, a design patent application is usually shorter and simpler to prepare, since it is largely made up of drawings of the design. What If Someone Else Comes Up With A Slightly Different Creation? A rival invention that improves on your idea does not diminish your patent right, and you may be able to stop your competitor and collect money damages. You cannot, however, sell your invention with your rival's patented improvements. That is your rival's property, not yours. You are entitled only to continue selling your invention in its original form. You also are free, of course, to dream up and patent your own improvements. Or you and your rival could reach an agreement in which one (or both) of you create the improved product, and the other is justly compensated. What Should A Person Do If Someone Is Infringing On A Patent? You most likely will need to consult a lawyer since it is rarely so simple a problem to solve by calling up the infringer and declaring: "I have a patent that covers what you are doing. Please stop and pay me for the harm you've caused." In most cases, you will have to go to court, or at least threaten to do so. And if a court case is filed, you can usually expect a long, hard (and expensive) battle. The alleged infringer might claim not to be infringing or that your patent is not good. The more valuable your invention, the more likely it is that people will try to copy it and then fight you in court. Patent lawyers often take cases on a contingency basis, which means you don't have to pay up front. Still, if you don't have significant financial resources, you may want to recruit a partner (or partners) in advance to help you defend the patent in exchange for a share of profits. The company that is going to manufacture your invention may be interested in such a deal. Is A Patent Always The Best Way To Protect An Invention? Not necessarily. Some inventions, like recipes, may be better off kept as trade secrets. That's what the Coca-Cola Company has done for years with its soft drink formula, which remains a cherished trade secret that has never been patented. Commercial issues often dictate the choice of whether or not to patent an invention or keep it as a trade secret. So long as your potential competitors can't study your creation and figure out how to make (and possibly patent) it themselves, you may be fine keeping it as a trade secret. Trade secrets do have legal protection against disclosure. For example, if a manufacturer is using a secret process, he or she can require that any employees keep the process secret, even after they leave the company. And if an employee leaves to work elsewhere, the manufacturer can ask that the new employer not encourage disclosure of the secret process. It's also possible to file suit in court to prevent disclosure. How Does A Person Get A Patent? The first step is to prepare an application, which is then filed with the Patent Office. Your application should give a very detailed description about how best to make and use the invention. Sometimes, if a patent be sufficient. If it is unclear from your description that the invention will actually do what you say it will do, you may be asked to prove that your idea is workable by developing a prototype. Government patent examiners whose job is to decide whether the application describes and claims something that is patentable will examine the application. If an examiner decides that it does, a patent will be issued. If the examiner decides that it does not, your application will be rejected. You may try to change the examiner's mind, or you can try to modify your application so that the examiner finds it acceptable. This process can take considerable time -- well over a year. If an examiner cannot be persuaded to issue a patent, you can either give up or appeal the rejection to a special board in the Patent Office. This takes more time. Is A Lawyer Necessary? No, but if you can afford one it's advisable. However, it's not cheap. The going rate for a simple application that sails through the Patent Office is several thousand dollars (depending on where you live). More complicated applications may cost even more. And there are also filing fees in the Patent Office ($155 minimum, at present). The cost of an attorney may be worth it, though. Patent Office procedures can be obscure and complex, and a seasoned patent attorney will know how to usher your application through as quickly as possible. If you seriously think you've reinvented the wheel (and if you think your idea is likely to be infringed on and thus the subject of court actions), it is usually best to hire an attorney. Mountains of paper have been written on the requirements for Patentability by judges, lawyers, professors and others. If you plan to try getting a patent on your own, you should have at least a passing familiarity with these requirements. A patent is a right, granted by the United States to an inventor, to exclude others from making, using, selling or importing an invention throughout the United States without the inventor's consent. The inventor may license or sell the rights defined by the Claims of the patent. There are currently over 6 million United States patents issued to inventors. Without a patent, anyone can make and sell your invention without your permission and without paying you. Should you patent? Before seeking patent protection, you should first determine whether your invention is potentially marketable. If your invention is not marketable, you do not need patent protection. When determining whether your invention is marketable, you should determine if another company would be able to profit from your invention not only today, but also in the future. If so, patent protection should be sought so that the company would have to license the invention from you. What is not patentable? An inventor cannot receive a patent for perpetual motion devices, abstract ideas, laws of nature, or naturally occurring substances. An inventor cannot receive a United States patent for an invention publicly disclosed more than 12 months ago. Public disclosure includes any sale, exhibit at trade show, or printed in a publication, with a few exceptions. You should seek a Patent Attorney's opinion if you have any questions whether your invention is patentable. It should also be noted that you do not need a prototype when seeking patent protection -- you only need to be able to describe the invention in sufficient detail so that one skilled in the art could construct your invention. Benefits of Patenting Patenting your invention also allows you to prevent others from making, using or selling your invention throughout the United States without your consent. A patent is also one of the few assets that can increase in value over time. A patent also increases the value of your business because it is considered a valuable asset by banks and potential purchasers of your business. There are many ways to financially benefit from a patent. Your patent may be sold outright to another for monetary remuneration. You may also license your patent to one or more parties for a percentage of the sale price. You may also be the exclusive manufacturer of your invention. Whether you are a business or an independent inventor, a patent is a valuable asset and is needed to protect you from unscrupulous individuals who could benefit from your hard work. Detailed Record Keeping Next to filing a patent application, detailed record keeping is the most important thing an inventor can do to protect their invention. Proper record keeping is important because it can be used as proof of the conception date (the date of invention). It should be noted that mailing yourself a sealed letter with invention documents enclosed is not an accepted method of proving your invention's conception date for the USPTO. All inventors, whether individual inventors or employees of a business, should maintain a bound notebook for recording their inventions. It is also important to line through any blank portion of the pages of the bound logbook/journal, which are not written upon. The notebook should be stored in a secure location when not in use. Entries should contain a clear and complete explanation of the manner and process of making and using the invention in sufficient detail to enable another person having ordinary knowledge in the field of the invention to make and use the invention. All computations, sketches, diagrams and test results should be contemporaneously entered into the notebook. Notebook entries should also describe all testing performed, the particular type of equipment used, and the results of the testing, both good and bad. All persons involved in the work, and their specific role, should also be identified in the notebook entries. Every entry in the bound notebook should be signed and dated by the participants, indicating the particular project with which the entry is associated and, if possible, the entry should be signed and dated by an unbiased witness or Notary Public. See more complete information on journals and logbooks in our "Starting Out" section. The Patent Search The first step in the patenting process is to have a professional patentability search completed by an independent patent searcher to ensure that your invention is patentable. Most hire independent patent searchers near the USPTO to perform manual United States patent searches and do not utilize any in-house staff to conduct the patent searches that can potentially taint the results. Patentability Opinion After the independent patent search is completed, a registered patent attorney or agent will compare the relevant located patents to your invention. They will then provide you with an honest and objective opinion as to whether they believe there is a chance of receiving acceptable patent protection. The Patent Application If the Patentability opinion recommends seeking patent protection, a patent application will need to be filed. A patent application includes an abstract, a specification, at least one claim, a Declaration, a filing fee, usually at least one drawing, and a Verified Statement of Small Entity Status. The most important part of the patent application is the Claims, which describe the scope of coverage that the inventor is attempting to receive from the United States government. Only an experienced patent attorney or agent can get the most preferable patent coverage for your invention. Adequate patent coverage ensures that potential infringers will be prevented from making, using or selling your invention, even if they make a modification. Patent Prosecution After filing the patent application with the USPTO, an Office Action from the USPTO will usually be received within 8 to 14 months. Typically, the USPTO will reject some or all of the Claims of the patent application depending upon whether the USPTO Examiner believes it would have been obvious to create your invention in view of the prior art located by the Examiner. It is then necessary to argue that your invention is patentable based upon the differences between the invention and the art cited by the USPTO Examiner. Legal arguments and decided case law may be used to refute the Examiner's position. A telephone interview with the Examiner may also be arranged to find agreement on any issues of dispute. Return to Table of Contents for this guide | Return to index of all guides | Return to the top of this page Challenge: Non-Patentable Item
Possible Approaches:
Challenge: Questionable Market
Possible Approaches:
Challenge: Pregnant Situation
Possible Approaches:
Challenge: Strong Competitors Waiting
Possible Approaches:
Return to Table of Contents for this guide | Return to index of all guides | Return to the top of this page Trademarks, Trade Names and Trade Secrets Trademarks A trademark is a word, name or symbol that is used to identify products sold or services provided by a business. A trademark distinguishes the products or services of one business from those of others in the same field. A trademark lets consumers know precisely what they are buying. For example, when consumers purchase cotton swabs bearing the trademark of Q-tips Cotton Swabs, they know -- or are entitled to assume -- that those swabs came from one source: Cheesebrough-Pond's USA Co. They also know -- or are entitled to assume -- that the Q-tip swabs are not swabs from some other source. A business using a trademark has a trademark right, which means that the business can prevent other businesses from using the trademark and can get money to compensate for the infringement of the trademark right. Trademark protection is intended to protect consumers from confusion about what they are buying and help manufacturers guard the value of trademarks in which they have invested. A trademark right can be acquired simply by using a trademark to identify your products or services. However, you should pick a trademark with care and make sure you are not choosing one that belongs to another business. Otherwise you could spend several months and much money promoting a new product line only to find that your advertising dollars are lost and that you have ended up assisting your competitor. You could also face a lawsuit if you fail to stop using someone else's trademark. Before deciding on a new trademark, you should have a lawyer conduct a search to locate any similar trademarks that may already be in use. If someone is using your trademark, you should call the infringer and ask him or her to stop. If that fails, as it often does, you can threaten court action. If that fails, as it often does, you can commence an action and seek an order prohibiting further use of the trademark by the infringer. Courts often issue these orders. This process can be expensive. But it can be vital to the prosperity and future of a business. Imagine how Ford would fare if GM, Chrysler, Toyota and BMW were all free to call their automobiles Fords. To preserve the rights to a trademark, its owner must use it and must police how others use it. Many words that have become part of our everyday vocabulary were once registered trademarks whose use became so widespread; their owners could no longer rightfully claim them. Some of the most well known lost trademarks, as they are called, include: Aspirin, Cellophane, Escalator, Thermos and Nylon. How Do You Register A Trademark? Though you obtain the right to a trademark simply by using it, your right will be strongest if you register the trademark. You can register by filing an application with one or more state agencies, with the United States Patent and Trademark Office, or with both. Federal registration is preferable, because the benefits of state registration are available only in the state of registration. The benefits of federal registration are available nationwide. Federal registration lasts initially for 10 years if the registration requirements are met and the trademark is used in connection with the product for which it is registered. The registration is renewable for consecutive 10-year periods. State registration and renewal periods vary from state to state. A registration application typically asks for:
If you are applying for federal registration, you also will have to show that you are involved in interstate commerce. You can apply for registration if you have actually used the mark or if you have an intention of using it. There are restrictions on federal registration of a person's last name or a geographic location as a trademark. For example, if you want to register trademarks like "NEW YORK" Cream Soda or "MR. SMITH'S" Cough Remedy, you will have to show that these common names have come to be associated with your products. You probably will have to prove that you have a consumer base that identifies "NEW YORK" with your cream soda and "MR. SMITH" with your cough syrup. The federal registration process can take a year or more. The filing fee, at present, is $245. You can prepare and file the necessary papers on your own, but it is advisable to consult a trademark lawyer for at least some initial guidance. The legal fees involved in registering a trademark are typically less than those involved in obtaining a patent. To signify your claim to a particular trademark, you can use the TM symbol if the trademark is unregistered. If it is registered, you can use the R inside a circle symbol. Public Notice Anyone who claims rights in a mark should use the symbols TM (trademark for goods) and SM (service mark for services) to alert the public to their claim to an unregistered mark. The owner does not have to have a trademark application filed or a registered trademark to use these symbols. The registration symbol (an "R" with a circle around it) may only be used when the mark is actually federally registered with the USPTO. This applies to both registered trademarks and service marks. Selecting A Trademark Selecting a registerable mark prior to introducing a new product or service will save time and money later when you attempt to register your rights. Trademarks are typically classified into four basic categories: Generic; Descriptive; Suggestive; and Arbitrary. Generic trademarks are not registerable since they describe the whole class of goods, such as the word "spoon." Arbitrary marks are the best choice when selecting a trademark since they have absolutely no meaning associated with the owner's product or service, such as "3M." Trademark Search A trademark search should be completed for determining whether your proposed trademark is eligible for use and federal registration. For words or logos, a search should be conducted of federal records maintained by the USPTO. A State trademark and Common Law search should also be completed since rights in trademarks vest initially with the first to use the trademark in commerce. Common Law trademarks are marks that have not been federally or state registered but are used in commerce by another company. Federal Registration Federal Registration of a trademark provides constructive notice that the mark is in use and that the owner is entitled to use the mark throughout the United States for the goods and/or services described in the registration. Federal Registration of a trademark can last indefinitely if properly renewed. There are two types of applications: "Use-based" applications; and "Intent-to-use" applications. A use-based application is utilized when the applicant is using the mark in interstate commerce. An intent-to-use application is used when the applicant has not used the mark in interstate commerce but intends to use the mark and wants to reserve it for use in the future. Trade Names When an individual or organization transacts business under a name different that its true name, the name is considered a "trade name." The trade name should be registered with the Secretary of State where the business is organized. One benefit of having a trade name is that no other organization can transact business under the same or deceptively similar name to the registered trade name. A trade name can also be used to prevent another organization from registering a similar state trademark. Can A Person Choose Any Name for A Company? No. While most states have only minimum requirements regarding the choice of a company name, known in legal lingo as a trade name, you will have trouble if you pick the exact name or one that too closely resembles that of a competitor. In general, state laws:
If you are incorporating, you should first check with the secretary of state of the state in which you plan to incorporate to determine whether the name you have chosen is available for your use. In many states this can be done by telephone, at a nominal cost. If the name you have chosen appears to be available, you may incorporate under it. It is important that you understand, however, that your right to incorporate under that name does not automatically give you exclusive rights to the name itself. There may be, for example, an already-existing, unincorporated enterprise doing business under the identical or similar name, and that business might have rights that are superior to yours. In fact, the use of a name could, under such circumstances, put you at risk of a lawsuit by that enterprise for "infringing" or "trespassing" on its rights to the name. The outcome of such a lawsuit would depend on a number of factors including, in particular, whether you were both engaged in similar lines of business and served roughly the same geographic markets. If so, the other corporation might be able to prevent you from using the name and, possibly, even recover damages from you. This would be a particularly undesirable outcome if you had invested substantial time and money developing marketing materials, for example, in which you used the name. Therefore, before choosing a corporate name, you should check not only its availability with the appropriate secretary of state's office, but also its use within the general area in which you intend to do business. You can begin with telephone directories and trade directories that should be available at your public library or local chamber of commerce. You should also check for "d/b/a certificates" that may have been filed with the secretary of state or the county clerk's office. If your preliminary searches do not turn up a similarly named business, or if they do, and your respective businesses are in unrelated fields or non-overlapping markets, the chances that you will be able to incorporate and do business under that name, undisturbed, are improved. Quite often, though, circumstances are not particularly clear-cut. You should consult an attorney, particularly if you intend to produce expensive marketing materials before you incorporate. Trade Secret Rights Why Think About Trade Secrets? Secrecy is sometimes the easiest protection to obtain for new technology, but might equally easily be lost. From a defensive perspective, third parties might have trade secret rights that can pose problems. What Can Be Protected as a Trade Secret? Generally speaking, a trade secret can be any information that:
For example, if a particular compilation of information "components" meets the above three criteria, the compilation itself may be a trade secret, even though its component parts are not. What Protection Do Trade Secret Rights Provide? The owner of a trade secret can enforce its rights against those who misappropriate the secret, but not against those who independently develop it or who legitimately acquire it from other sources. Misappropriation of a trade secret usually takes one of two forms. The first general type of misappropriation is use or disclosure of the secret in violation of an obligation of confidence. The obligation can be express; e.g., because of a nondisclosure agreement (NDA), or implied; e.g., arising from a special relationship such as the employer/employee relationship. The second general type of misappropriation is use of improper means to obtain the secret; e.g., theft, espionage. Reverse engineering of a publicly available product usually will not be considered improper means. Caution -- Improper means can sometimes be in the eye of the beholder. In the duPont v. Christopher case, the court held that aerial photography of a chemical plant under construction constituted improper means. How Can Trade Secrets Be Safeguarded? Some common techniques for maintaining secrecy include:
Absolute secrecy is not necessary and is often difficult to prove, in any event. How Can Trade Secret Rights Be Lost? Trade secret rights generally die if secrecy is lost. For example, this can happen by publishing the secret obtaining a patent that discloses the secret and not taking sufficient precautions to protect secrecy in some circumstances; or selling a product from which the secret can be discerned; e.g., by reverse engineering. Return to Table of Contents for this guide | Return to index of all guides | Return to the top of this page A copyright is very much what it sounds like: a right to prevent others from copying works that you have written, authored or otherwise created on your own. The U.S. Copyright Office states "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." A copyright is an extremely powerful and very inexpensive (just $20) protection, which protects your specific form of expression. A copyright protects you against anyone copying your intellectual materials. For example, it protects you if you've written a book, article, lyrics, poem, artwork, photographs, and literature Yet, it is much broader in scope than most people think. It also covers the following broad categories:
Included within these categories are cartoons and comic strips, movies, video recordings, musical compositions and lyrics, sound recordings, multimedia works, computer programs, daily newspapers, automated databases, and online works. For example, while it does not stop anyone else from writing a book on the same "subject" as yours, it does prevent direct copying or plagiarizing of paragraphs, chapters and materials from your own book as well as the main format. When the work is ongoing, and there will be new sections added or updated material over time, there is also a special procedure on how to register this type of evolving work. Generally, the copyright protection applies to any works "whether or not" the materials are officially copyrighted. However, registering the copyright with the U.S. Copyright Office makes it much easier to prove the copyright in court. Additionally, since March 1, 1989 when the United States adhered to the Berne Convention, a copyright notice is also not required by law anymore. But having the copyright notice on any works helps to discourage infringement and can eliminate an "innocent infringement" defense where a person claims that he/she did not realize that the work was copyrighted. This notice is a very simple process that you can do yourself. As soon as you begin distributing your work (even before you send in the copyright application), you can begin writing the following notification and information on all pages of your work. According to the U.S. Copyright Office, "The notice for visually perceptible copies should contain all the following three elements:
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