Intellectual property strategy

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 publishes them when they issue. 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. The USPTO also reviews these (often more superficially), and also publishes them when they issue. 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.  The USPTO publishes the submission almost immediately, and then reviews. If favorable, they then publish an intent to register for public opposition, and also require proof of use before final registration. These have no lifetime limit, so long as the owner periodically sends in maintenance fees and 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. Trade secrets have no lifetime limit, provided that the secret does not get exposed.

Tips for improving your intellectual property strategy

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

  • Use a non-publication request to keep your IP secret while pursuing a US patent.
  • Convert your utility patent drawing to a later design patent.
  • Protect your user interface IP as a utility patent, design patent, and copyright.
  • Record your distinctive design as both a design patent and a trademark.
  • File your 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 regardless of if you are doing a high-tech startup, or just trying to sell some merch, try to formulate an intellectual property strategy.