Intellectual property strategy

Intellectual property categories

Optimize your intellectual property strategy by using a combination of patents, trademarks, copyrights, and trade secrets.  

In theory, the different categories of IP (utility patents, provisional patents, design patents, copyrights, trademarks, and trade secrets) are distinct. However, in practice, these can somewhat overlap. Each is a type of IP protection tool. Maximize your intellectual property strategy by picking the right set of tools for the right situation.

Patents (utility patents) cover useful, original, and nonobvious ideas for gadgets, physical objects, compositions of matter (e.g., drugs), and the like. The USPTO carefully reviews these and requires that issued patents must be published. They can last for up to 20 years if you pay the maintenance fees.

Provisional patents are mostly a short-lived (1-year) first draft of a utility patent.

Patents (design patents) cover the ornamental appearance of a functional item. These also must be filed, reviewed, and ultimately disclosed to the public. These last for 15 years, maintenance fees not required.

Copyrights cover original written material, music, images, movies, and the like. These can last over a lifetime (e.g., the lifetime of the author plus 70 years) after initial publication. Registration not initially required, but eventually needed to enforce rights.

Trademarks cover the words, symbols, or packaging associated with certain classes of products and services in commerce.  Registration, disclosure to the public, and review are required. These have no lifetime limit, so long as the owner periodically sends in proof of continued use in commerce.

Trade Secrets cover undisclosed commercially useful information not generally known to the public or trade. These can include unpatentable items such as recipes, as well as un-copyrightable items such as lists. No lifetime limit, provided that the secret does not get exposed.

Sometimes it is possible to improve your intellectual property strategy by handling the IP under multiple categories. Examples include:

  • Using a non-publication request to keep the IP secret while pursuing a US patent
  • Converting a utility patent drawing to a later design patent
  • Protecting a user interface IP as a utility patent, design patent, and copyright
  • Recording a distinctive design as both a design patent and a trademark
  • Filing a distinctive image (or fragment of literature) as both a copyright and a trademark

There are some tricky aspects to the multiple category approach as well; these include:

  • Cases where international IP rules are different from US rules
  • Trying to use a provisional patent for a later design patent
  • Shifting copyright (non-functional) vs patent (functional) and design patent (ornamental appearance of functional item) distinctions
  • Competitors using your assertions for one IP category against another IP category

So “mind the gap,” but try to formulate an intellectual property strategy.

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Utility patents

utility patents
Need a utility patent?

Utility patents are the best way to protect most inventions. But to get one, you have to convince a USPTO examiner that your application is worthy.

Utility patents are by far the most common type of patent. Thus, the term “patent” almost always means “utility patent.” Nearly all of the famous patents in history – the telephone, light bulb, transistor, airplane, motion picture, were utility patents.

What is a utility patent?  

Under US law, such patents are the type of intellectual property (IP).  These cover: “a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof.” A “process” is a method of doing something.  A “composition of matter” can be a drug.

Note the underlined new. You have to prove that the invention is original, and not just a trivial (obvious) tweak to some older prior art.

Here “useful” means that the invention must have some actual benefit (i.e., it isn’t clearly impossible or too illegal) and does more than just being decorative.

Utility patents are often the hardest type of IP to get. USPTO examiners usually attempt to use prior art to reject new applications. These rejections are called “office communications.” You must send in a written response rebutting these rejections. The review process may require several cycles of denial and response. If you do not successfully rebut the various rejections, the application goes abandoned.

Legally, a US patent gives the owner the right to sue to collect royalties/damages or to attempt to block someone else from practicing the invention in the United States. The patent claims determine the exact scope of legal protection. In practice, patents are most useful for financing, acquisitions, licensing, and other business purposes. 

Types of utility patents:  

US utility patents often start as US provisional patents.  US provisional or non-provisional patents can also be refiled (within 12 months of initial filing) as international patents.

Patent valuation: Patent valuation is dictated in large part by the desires of others to practice the invention. If a particular patent covers something that no one else wants to practice, it isn’t going to be worth much! The effectiveness of a patent in thwarting these desires (what the claims cover), and the invention’s potential market size, are also significant. 

Your utility patent will typically have a 20 year lifetime. However, you will have to pay maintenance fees at 3-4, 7-8, and 11-12 years after issue. You may get some extra life if the USPTO delays for too long. At the end of this time, your utility patent will expire and become public domain. If you don’t respond to USPTO office actions, your patent application will also become public domain. 

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Provisional patent applications: thoughts and suggestions

provisional patent applications
Provisional patents are a bit like duct tape.

Provisional patent applications: US patent law allows inventors (applicants) to file informally written disclosures with the US patent office.  These informal disclosures are called “provisional patent applications.” These are also called “provisional patents,” “provisional applications,” or even just “provisionals.” If used correctly, they can help you start the process of obtaining a patent.

The USPTO doesn’t examine provisional patents. Instead, the USPTO merely stores them in their databases for a year.  After a year, they expire, unless before expiration, you file a regular (non-provisional) utility patent application that references that provisional application.  If you do this, the USPTO links the provisional application to the full patent application and preserves it.

Later, during the examination of the subsequent regular utility patent, you can reference the provisional patent to try to overcome various rejections. Usually, you do this to prove you were the first inventor to file. You can also use the provisional application to try to satisfy examiner requests for additional detail.

Provisional patent applications have few requirements, but be careful!

Regular patents have detailed requirements for format, figures, and claims. They tend to be expensive to file.  By contrast, provisional patents have almost no format requirements, and they are often less costly to file.  With the correct USPTO forms and fees, you can submit almost anything.  As a result, provisional patent applications can be as simple as a single page photograph of a napkin sketch. They also can be as complex a fully developed 100+ page formal patent application.  The USPTO will cheerfully accept either one of these.

The lack of format requirements can be helpful. Provisional applications are an easy way to put a lot of supplemental information on the record. This information can include research papers and user manuals, for example. These can be very useful for addressing subsequent examiner rejections.

The bad news, however, is that many a patent application has failed because the inventor first filed a poor quality provisional application. The real problem is if you submit something unsatisfactory and then operate under a false sense of confidence that you are protected.

Dangers of low-quality submissions:

The dangers of a poor quality provisional application are both delayed and subtle.  At first, everything is fine.  Then, typically about 1-3 years after you file the inadequate provisional, trouble can start.

For example, suppose that the USPTO examiner rejects on the basis that someone else has filed another non-provisional (standard utility) patent ahead of your regular utility patent.  Under today’s rules, almost the only way to establish that you invented first is to cite your earlier filed provisional. You also have to show precisely which parts of the provisional application prove that you invented first.

If the examiner reviews the cited portions of your provisional and agrees, then the provisional application has been successful. You have overcome this rejection.  But if the examiner reviews it and says, “I don’t see the invention here,” then you are in trouble. Your provisional has likely failed, and you may never be able to prove that you invented first.

Three different provisional strategies:

I think that it is useful to think about three different categories of provisional patents.  These categories are: 1) quickly file your existing write-ups; 2) file a rough draft of a regular utility patent; and 3) file a complete utility patent, but do so as a provisional patent rather than as a proper utility patent.

Risky, fast, and cheap:

Category 1:  quickly file your existing write-ups.  These can be existing papers, PowerPoint presentations, handouts, whatever.  The argument in favor of this approach is that this is the quickest way of getting something on the official patent record.  This approach also lets you file a lot of supplemental information.  Worst case, you can later abandon an improperly thought out provisional.  My personal views are that this approach is better than nothing, but it is not without pitfalls.

An excellent way to go:

Category 2:  file a rough draft of a regular utility patent. Inventors and small companies often operate on a limited budget and need to get something submitted on a short deadline.  Here the goal is to try to file something relatively decent, but quickly and on a tight budget.  Here, as a compromise between cost and quality, one way to go is to produce a rough draft of a utility patent. This rough draft follows the standard utility patent format, which provides some vital structure.

This approach tries to capture a good chunk of the value of a full patent application. It also seeks to keep costs at about 50% of a standard patent. Here, the trick is to focus on a few essential draft claims, informal but adequate figures, and at least the most critical technical aspects of the disclosure.

A tricky strategic option:

Category 3:  file a complete utility patent, but as a provisional application.  In this third type of situation, funding may not be an issue. You may want to do a quality job submitting what you have. However, you may also think that there is a possibility that you will make additional improvements to the invention over the next year.  Here a complete and detailed utility patent is written. But instead of filing it as a regular utility patent, you submit it as a provisional patent.  

This provisional application can then be “aged” for up to a year.  If there are no changes, you can then refile it as a full utility patent.  Otherwise, you can update your earlier provisional, and then file it as a full utility patent.  An additional advantage of this Category 3 approach is that it can effectively increase the lifetime of the final patent by up to a year.

Remember the international filing deadlines:

A few other nuances – if you are interested in foreign patent filings, realize that the 12-month foreign filing deadline starts ticking from the time you file your provisional application.  Thus the 12-month provisional expiration deadline, and the US and international patent filing deadlines, all fall on the same day.

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Design patents

For stronger design patents – less detail can give you broader coverage, so consider turning some solid lines into broken lines.

design patent
Design patents can be like the disappearing Cheshire Cat.

On the surface, design patents – a patent that covers the ornamental appearance of an article of manufacture, seem simple. File multiple drawings showing your design from various angles. Think about putting your design in an imaginary cube. You can then show all six sides of this imaginary cube and a perspective overview. If (under a famous court case called the Egyptian Goddess test), an ordinary observer (familiar with the prior art designs of similar products) will confuse someone else’s product with the patented design, then there is infringement.

Design patent law raises tough questions about pattern recognition. The problem is often explained by analogy to the Cheshire Cat from Alice in Wonderland.  How much of the cat do you need to see to identify it as a Cheshire Cat?

Different levels of detail

In a design patent, you show the required parts as solid lines. You show the optional elements as broken lines.  As you turn more and more solid lines into broken lines, the design becomes more general. But of course, at some point, the application then becomes too vague to be unique or even recognizable. The examiner will then likely reject your drawings. See “A Guide to Filing A Design Patent Application for more information.

If you want a broad coverage of your design, consider filing multiple versions.  Narrower but safer versions can have more solid lines. In riskier but more comprehensive versions, replace the less essential solid lines with broken lines.  Perhaps a subset or outline of your product is distinct enough to warrant patent protection?  If you think that your design may have multiple levels of detail, consider putting in broken lines to show the different levels of detail in the initial filing, since the USPTO won’t let you do it later.

Pros and cons of this type of patent

Compared to utility patents, design patents are relatively inexpensive to file and relatively easy to get.  However, again, the design patent is only for the artistic and non-functional aspects of the design. These patents now have a 15 year lifetime, and no maintenance fees are required.

Many countries also accept international design patents as well, but you usually only have six months to file.

A few more tips — the examiners have a well-developed ability to detect any inconsistencies between drawings. If the examiners identify this, they will reject the application as being ambiguous. You can avoid these problems by providing accurate 3D CAD files to the patent attorney and artist.

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The hidden complexity of trademarks

Registered Trademark
Registered Trademark

Trademarks help protect providers of products and services from unfair competition. For example, assume the company “A” sells a product or service under a first brand. Business competitor company “B” is free to sell a competing product or service under a completely different brand. But if company B uses a brand calculated to confuse the company “A” customers into accidentally buying from company “B,” this is unfair competition. 

Four general rules:

There are four essential principles of trademark law. These are 1) “avoid confusion with existing marks”; 2) “don’t try to claim the normal marks (names) of a product or service”; 3) “a trademark only has meaning in the context of a particular class of product or service”; and 4) “use it or lose it.”

Try to be either distinctive or suggestive:

The USPTO will reject marks that too closely resemble the common name or logo of a product or service as being “generic.” But trademarks or names that are “fanciful,” — that have no obvious correlation to a product or service will often be accepted and registered. “Suggestive” marks are also allowed. But if you describe the product or service too closely, watch out. The USPTO examiner may deem these marks to be “descriptive.” To get a descriptive mark allowed, you have to agree to first register it on the USPTO “secondary register” for five years.  During this time, it is difficult to enforce the mark. But, after five years of use in trade, absent objection by outsiders, you can then file to upgrade your “seasoned” descriptive mark to full trademark status on the “primary register.”  

Commercial context:

Note that the word “Trademark” contains “trade.” But trade in what? Under both US and international law, trademark offices try to cram all products and services into a limited number of different classes. Recycling the same names within a class is generally not tolerated. However, you can often reuse the same names for other products or services in other classes. The USPTO usually examines the submissions on a per-class basis. But they occasionally do cross-check between classes if they think the possibility of confusion is high. 

You have a limited time to prove commercial use:

The USPTO grants trademarks on a “use it or lose it” basis. It is possible to reserve some names for up to a few years on an “intent to use” filing. But ultimately, to get the trademark, you need to provide proof that you are using the mark in commerce by submitting a “specimen.” This specimen is often a photograph of sales receipts, website purchase pages, and the like. They require photos under the theory that pictures provide better proof that you are using the trademark name in real trade. These days, the USPTO examiners will also flag specimens that they think are too manipulated. 

Other tricky areas:

There are many other complexities of trademark law as well. Searches can be tricky because the underlying legal standard for trademark infringement is “the possibility of confusion.” Don’t be confused and think that the criteria are “the same spelling.” It is not, and trying to use an alternate spelling of a previously registered mark can get you in trouble.

Unregistered common law trademarks are another potential problem.

Thus merely avoiding other registered trademarks with identical spelling is often not enough. Alternative spellings, word prefixes, word suffixes, different name variations, and common-law use can often cause problems if potential customers might be confused.

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Copyrights and creativity

copyrights and creativity
Macaca self-photograph. No human creativity, so no copyright?

Copyright protection requires that a work have at least a minimum amount of human creativity, but the laws are vague as to what this minimum is.

Legally, US copyright protection is provided for information (typically preserved in a non-transitory medium) that has at least a small element of a human author’s own creativity. Courts have held that mere facts and ideas alone can’t be copyrighted. The amount of creativity can be very small, but it isn’t zero.  For example, using human judgment to select and compile facts according to personal criteria often qualifies, and an author’s annotations of facts may also qualify, but routine alphabetical sorting is not enough (Feist Publications v. Rural Telephone, 499 US 340, 1991) .

From an engineering or mathematical perspective, these rules may look vague. This is in part because these concepts date back hundreds of years, back to the early days of printing presses, and have evolved slowly over time through various laws and court decisions. However copyrights are big business, and copyright law enforcement tends to be efficient and harsh. So like them or not, the rules are important.

One area where the rules are fuzzy is short works, such as short sections of text or individual photographic images. What is the minimum work (creative information) that might get copyright protection?  The rules are not uniform throughout the world, and here we are discussing US laws.

Short text:  Very short text fragments are often considered too trivial (de minimis) for copyright protection, but the court will consider originality here, and more originality gets better protection. Although there is no minimum word-count cut off, text fragments of 11 words or less at the “news article” level of originality are often considered non-infringing.

Individual photographs:  Again the law requires a small amount of human creativity for copyright protection.  The US copyright office will not register works produced by non-humans, and lower court cases are consistent with this decision.  Additionally, exact copies of public domain work (Bridgeman Art Library v. Corel Corp.) are also exempt from copyright. Otherwise, the courts often ignore the creativity requirement.  This raises some interesting questions for future cases. However, unless the law changes, assume that copyright applies to nearly all human-produced photographs, no matter how repetitious, trivial or otherwise non-creative.

There are other copyright exceptions.  Federal Government work is often not copyrightable.  Further, under “fair use”, there can be additional exceptions where it is OK to reproduce another’s copyrighted work.  Fair use rules are complex and will be the topic of another discussion.

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