what is the difference between a patent, a trademark and a copyright?

Considering how complex intellectual property law can be, it is understandable that many people – including authors, journalists, biz and tech bloggers, tweeple, etc. – confuse the terms and oftentimes speak/write of “patenting a book” or “copywriting a new gadget”.  I also receive a large number of requests asking for advice on how to “copyright an idea” – so, I thought it would be helpful to lay out a short and concise explanation of each area of intellectual property law.

First, what do I mean by the term “intellectual property”?  According to Tech Terms Online:

“Intellectual property refers to the ownership of intangible and non-physical goods.  …  Since intellectual property is intangible, it is more difficult to protect than other types of property.”

While this is a fairly reasonable definition, I prefer to use a more shorthand version: “Intellectual property is something that is created by the mind.”  Typically, we think of ideas as being created by the mind – but intellectual property does not protect bare ideas: rather, it is the expression or symbolic power/recognizability of the ideas that are protected. 

Thus, it is the design of the rocket that is patented, not the idea of a rocket.  It is the painting of the lake that is copyrighted, not the idea of a lake.  And it is the consumer recognizable logo that is trademarked, not the idea of a logo.  Intellectual property protects how we express and identify ideas in concrete ways – not the idea itself.

In particular:

• Patents: protect functional expressions of an idea – not the idea itself.  A machines, method/process, manufacture, compositions of matter, and improvements of any of these items can be patented.  Thus, I can patent a design for the nozzle on a rocket, or the method of making the rocket, or the method of making the rocket fuel, or the metal in which the rocket fuel is stored, or a new way of transporting the rocket fuel to the rocket.  But I cannot patent the broad “idea” of a rocket.
   
• Copyrights: protect the specific creative expression of an idea through any medium of artistic/creative expression – i.e., paintings, photographs, sculpture, writings, software, etc.   A copyright protects your painting of a haystack, but it would not prohibit another painter from expressing their artistry or viewpoint by also painting a haystack. Likewise, while Ian Fleming was able to receive a copyright on his particular expression of the idea of a secret agent (i.e., a debonair English secret agent), he could not prevent Rich Wilkes from receiving a copyright on his expression of the idea of a secret agent (i.e., a tattooed bald extreme athlete turned reluctant secret agent).  
   
• Trademarks: protect any symbol that indicates the source or origin of the goods or services to which it is affixed.  While a trademark can be extremely valuable to its owner, the ultimate purpose of a trademark is to protect consumers – that is, the function of a trademark is to inform the consumer where the goods or services originate.  The consumer, knowing the origin of the goods, can make purchasing decisions based on prior knowledge, reputation or marketing. 

While each category is distinct, a product (or components/aspects of a product) may fall into one or more of the categories.  For example, software can be protected by both patents and copyrights.  The copyright would protect the artistic expression of the idea – i.e., the code itself – while the patent would protect the functional expression of the idea – e.g., using a single click to purchase a book online.  Likewise, it is likely that the software company will use a trademark to indicate who made the software. 

An additional example would be a logo for a company.  The logo may serve as a trademark indicating that all products affixed with the logo are from the same source.  The creative and artistic aspects of the logo may also be protected by a copyright. 

The complexity of intellectual property protection increases exponentially during the life cycle of innovation, research, product development, etc.  A single product may contain, for example, more than one patentable feature, one or more creative or artistic expressions that may be protected by copyright, and one or more trademarks indicating the source of the product.  All of these points of intellectual property provide an opportunity for protection and/or an opportunity for infringement of a third party’s intellectual property.

So – while it is simple and straightforward (well, mostly) to differentiate between the different aspects of intellectual property, it is a more difficult process to implement a strategic path forward and determine which type(s) of intellectual property protection are appropriate/desirable.

I am sure that PHOSITA readers will quibble, argue and debate me to death on the above-referenced “short hand” guides to intellectual property.  Drop your thoughts/short hand (keep it clean) into the comments.

(Photograph by Halima Ahkdar, used under Creative Commons license.)

Posted by Douglas Sorocco, January 11, 2009 at 10:03 pm
Permalink: what is the difference between a patent, a trademark and a copyright?
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SUPER IP SUNDAY

In honor of Super Bowl Sunday, here are a few intellectual property articles you may find interesting…

• A PHOSITA throwback article:  Remember Ermal Fraze at Your SuperBowl Party
• On Watching ‘The Big Game’
• Separation of Church and Football

Enjoy the game!

Posted by Douglas Sorocco, February 1, 2008 at 5:12 pm
Permalink: SUPER IP SUNDAY
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Someone needs an intellectual property legal advisor

The following Fox News article looks like a “Where’s Waldo” of incorrect intellectual property references.

“Stefan Doyno, 19, took out a patent on the phrase ‘Change Rocks’ three years ago to market his line of boutique jewelry and stones. Through a Web search, he found out that the very same trademark was used for an Oct. 7, fundraiser and concert for the Illinois senator in Chicago, according to a report in the White Plains Journal News.

Click here to read the White Plains Journal News story.

Attorneys for the first-year SUNY-Buffalo student fired off a letter to the candidates’ camp stating that any use of ‘Change Rocks’ on t-shirts or memorabilia would constitute copyright infringement.

An Obama spokeswoman said that no clothing has been sold with the ‘Change Rocks’ slogan and invited Doyno to join the hopeful’s grassroots network in New York, the state of Democratic rival Sen. Hillary Rodham Clinton.”

Time for Fox News to hire an intellectual property legal advisor.

Posted by Douglas Sorocco, January 10, 2008 at 4:04 pm
Permalink: Someone needs an intellectual property legal advisor
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All New PatentFizz – The Good Stuff Always Rises to the Top

All around intellectual property and web wunderkind Matt Buchanan has taken his hugely popular PatentFizz site to the next level this past week – bold new colors, new layouts, and useful new content and tools.

According to Matt, on his summer vacation he has been anything but slothful:

You’ll notice right away that the site has been completely redesigned. It’s a bit easier on the eyes, you might say. The FizzDisplay pages present the abstract, claims, and bibliographic information in an attractive, easy to read format that loads quickly. The FizzDisplay is sweet, instant gratification.

The improvements are not just cosmetic, though. Nope….PatentFizz has an impressive slate of all new features designed to more effectively deliver patent-based information. I’ll be detailing these features on Fizzure, the PatentFizz blog, over the coming weeks, so be sure to subscribe to the RSS feed.

We failed to mention last month that PatentFizz was featured as part of the Economist magazine’s article on patent commenting, examination and intelligence sites.

Check it out and if you have some “scoop” on a particular patent and be sure to share it with the world!

Posted by Douglas Sorocco, October 3, 2007 at 9:28 pm
Permalink: All New PatentFizz – The Good Stuff Always Rises to the Top
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round 2 – continuation rules review – part one

Continuing last week’s theme (review of the Patent Reform Act of 2007 (pdf): part 1, part 2, part 3, part 4, part 5), we’ll be reviewing the provisions of the USPTO’s new continuation rules (pdf) this week.

This post will cover the changes to continuation and continuation-in-part (CIP) applications and requests for continued examination (RCE’s).  Coming posts will cover new claim limitations and examination support documents (ESD’s), new limitations on related applications, and some suggested strategies for effectively coping with the limitations and requirements of the new rules.

Limitations on Continuations, CIP’s, and RCE’s

These limitations are most easily understood in terms of how they apply to each application family.  An application family begins with a parent application, which is the first-filed nonprovisional application, and may include up to two child applications, which are any later-filed nonprovisional applications claiming the benefit of the filing date of the parent application.  In some rare circumstances, an application family may be entitled to up to three child applications.  See 72 FR 46838–39 (1.78(d)(1)(iv-v)).  Each application family is also limited to one request for continued examination (RCE).

Although an application family may claim the benefit of one or more provisional applications, such provisional applications are not counted as members of the application family, at least for purposes of these limitations.  However, each of the child applications may be either a continuation or continuation-in-part application.

But what if further continuations or RCE’s are needed?  Well, additional continuations, CIP’s, and RCE’s may be allowed where, by petition, the applicant shows “cause” as to why an additional filing should be permitted.  “Cause” is a relatively high standard, however, and may be shown where an “amendment, argument, or evidence could not have been submitted during the prosecution of the prior filed application” (emphasis added).

The good news is that a divisional application filed to comply with a non-traversed restriction requirement begins a new application family, that is, becomes a new parent application entitled to two of its own child applications and one RCE, of right.  Additionally, the new rules provide for the filing of a suggested restriction requirement, prior to a first office action or restriction requirement.

When do these rules go into effect?  The limitatons on continuations, CIP’s, and RCE’s apply to all applications filed on or after November 1, 2007.  However, that doesn’t mean that nothing should be done before that date.  Keep reading over the next week, as some of the other provisions apply to applications filed before 11/1/2007.

However, there is an exception to the continuation limitations that applies to applications only claiming the benefit of applications filed prior to August 21, 2007.  The applicability data in the rules states that such applications will be exempted from the continuation limitations if: the application claims benefit of only nonprovisional applications filed before 8/21/2007, and no other nonprovisional application is filed on or after 8/21/2007 that also claims the benefit of such other prior filed applications.

Interestingly, the continuation limitations only apply to applications filed after 11/1/2007, so this exception should not be necessary for applications filed between 8/21 and 11/1/2007.  However, other provisions in the new rules apply to applications filed before 11/1/2007, so compliance with the continuation limitations is not the only thing to be considered . . .

Posted by Douglas Sorocco, September 24, 2007 at 5:16 pm
Permalink: round 2 – continuation rules review – part one
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Patent Reform Act of 2007 – Part 4

You are no doubt on the edge of your seat waiting to see what other changes are in store if the Patent Reform Act of 2007 is enacted.  Well, wait no longer, this blog post brings to you not one, but two more proposed changes to the current Patent System:  (1) Prior User Rights and (2) Best Mode Requirement Violations. 

You might be asking yourself, “Self, what are prior user rights?”  Well, prior user rights (also called the first inventor defense) stem from 35 U.S.C. § 273.  Currently, 35 U.S.C. § 273 provides a limited defense for actions that would normally constitute infringement if the person “actually reduced the subject matter to practice at least 1 year before the effective filing date of such patent, and commercially used the subject matter before the effective filing date of such patent.”  The defense is narrowly tailored so that “[a] person may not assert the defense under this section unless the invention for which the defense is asserted is for a method.”  In other words, the defense is limited to business method patents. 

After the State Street Bank decision, the USPTO experienced a huge surge of business method applications as well as a huge lack of adequate prior art to judge the novelty and obviousness of these applications.  Consequently, litigation erupted and the prior user defense was enacted to remedy the effects of the enforcement of poor-quality business method patents.   

The Patent Reform Act proposed to widen the scope of the prior user defense by eliminating the business method patent limitation so that users of all types of inventions would have been able to use the defense.  But as amended and passed, the legislation does not include any such changes to the prior user defense.  Instead, the legislation requires the USPTO to prepare a report for Congress detailing their findings and recommendations on the operation of prior user rights in several selected countries. 

The Patent Reform Act, if enacted, would also affect violations of the best mode requirement.  What is the best mode requirement, you might ask.  Well, funny you ask, because I just so happen to have a brief explanation.  Currently, under 35 U.S.C. § 112 a specification must, among other elements, “set forth the best mode contemplated by the inventor of carrying out his invention.”  Under the current law, a defendant in an infringement action could assert invalidity as a defense if the patentee failed to set forth the best mode of carrying out his invention.  35 U.S.C. § 282(3). 

But according to the Judiciary Committee Report there were several problems involved in litigating violations of the best mode requirement since it is so subjective.  So the Patent Reform Act amended the defenses available to potential infringers by making failure to meet the best mode requirement unavailable as a defense to infringement.  Now, the Patent Reform Act, if enacted, replaces Section 282(3) and states that invalidity of a patent or failure to comply with any requirement of Section 112 “other than the requirement that the specification shall set forth the best mode contemplated by the inventor of carrying out his invention” is an available defense. 

Posted by Douglas Sorocco, September 20, 2007 at 4:11 pm
Permalink: Patent Reform Act of 2007 – Part 4
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Patent Reform Act – Part Deux

Let me get this straight, the USPTO is extremely overburdened and therefore had to drop the continuation bomb on the patent world last month…but the House wants to add another USPTO job – ala post-grant review in H.R. 1908?  So basically, instead of using USPTO resources for the backlog, let’s add to the USPTO case load.  Interesting…

Before tackling what the House approved in H.R. 1908, first a quick review of what post-grant review in the USPTO consists of today.  There are basically four types of review subsequent to a patent issuing.  They include:

1.  an applicant filing a reissue;

2.  an interference between a patent and pending application;

3.  a patent owner or third-party requesting reexamination of a patent; and

4.  the Director initiating a reexamination.

The post-grant review in H.R. 1908 is a different animal.  Generally, post-grant review would allow a third party to contest the validity of claims within 12 months of issue under a preponderance of the evidence standard.  Post-grant review allows for the use of prior art, written testimony of witnesses, or any other information that the Director may require as a basis for cancellation.  This is a step beyond the reexamination process that only allows third parties to submit prior art publications and patents. 

Not all questions regarding patent validity are covered.  If a third party wants to request cancellation of issued claims based on the best mode requirement, post-grant review won’t help.

In some ways, post-grant review actually may be helpful for patent owners.  Third parties must set forth the basis for cancellation of each claim with their evidence.  This turns post-grant review into a sort of mini-trial on validity showing the other side’s hand.   Unfortunately, even a mini-trial costs money…and this mini-trial only covers validity. 

Posted by Douglas Sorocco, September 18, 2007 at 5:56 pm
Permalink: Patent Reform Act – Part Deux
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overview of the patent reform act of 2007

The Patent Reform Act of 2007 (pdf here) was approved by the House of Representatives on September 7 by a vote of 220 to 175, and is now awaiting Senate approval.

Although a similar bill, the Patent Reform Act of 2006, failed to gain momentum last year, it appears the Patent Reform Act of 2007 may actually have a chance of being approved by Congress.  As such, over the next few days, we’ll be providing an overview of the major sections of the legislation and its possible effects.

Two sections are covered in this post:  (1) the conversion of the U.S. patent system from a “first-to-invent” system to a “first-to-file” system, and (2) the express “clarification” of regulatory authority in the USPTO to promulgate rules to ensure the quality and timeliness of applications.

Conversion to a First-to-File System

The current version of the Act would convert the U.S. patent system from a “first-to-invent” system to a “first-to-file” system.  More specifically, under the current system, if two individuals develop the same invention, the first inventor is entitled to the patent, regardless of who files the application first.  Under the proposed changes, the first one to file the application would be entitled to the patent, regardless of who first discovered or developed the invention.

However, the Act does provide an avenue for challenging the right of another to a patent.  An applicant may institute a “derivation proceeding” alleging that a patentee “derived the claimed invention from the applicant requesting the proceeding and, without authorization, filed an application claiming such invention.”  Current interferences would also be retained for applications filed before the changes become effective.

The proposed “first-to-file” amendments are also contingent.  The changes would not go into effect until 90 days after issuance of “an executive order containing the President’s finding that major patenting authorities [at least Europe and Japan] have adopted a grace period having substantially the same effect as that contained [in this Act].”  This appears designed to coax Europe and Japan into emulating our 12–month statutory bar, in which an applicant is not barred from obtaining a patent by their own disclosures within 12 months of filing.

The conversion would likely reduce interference proceedings and other litigation over the question of who first discovered or developed a claimed invention.  Some argue that the change will disadvantage individual and small entity inventors that are not as well positioned for a “race to file.”  However, it does seem that these inventors may be at an even greater disadvantage in litigation.

Express “Clarification” of USPTO’s Regulatory Authority (Quality and Timeliness)

The current version of the Act also “clarifies” the authority of USPTO “to promulgate regulations to ensure the quality and timeliness of applications and their examination, including specifying circumstances under which an application for patent may claim the benefit . . . of the filing date of a prior filed application for patent.”  This provision would essentially clarify that the USPTO has the authority to promulgate the rules limiting continuations and claims that were released in final form on August 21, 2007, and are scheduled to go into full effect on November 1.

However, although the Act stresses that this is merely “clarifies” the scope of power granted to the USPTO, the amendment adds an additional procedural hurdle to the promulgation of rules affecting the quality and timeliness of applications, including claims of benefit (continuations).  Specifically, new regulations in this area “may not take effect before the end of a period of 60 days beginning on the date on which [they are submitted to both Houses of Congress].”  The amendment further specifies that such regulations shall not take effect if Congress passes a “joint resolution of disapproval” and that no court may infer any intent of Congress from a failure to pass such a resolution of disapproval.

I can’t help but wonder how long it will take for this legislation to become a part of the arguments advanced in the pending lawsuit challenging the propriety of the USPTO’s new continuation rules.  For example, if the “clarification” requires an additional procedural hurdle, does the USPTO have the authority without this Act?  Also, if the Act fails to pass the Senate, does that failure indicate Congress’ unwillingness to affirm this power of the USPTO?  Also, what later versions of this provision may alter the scope or interpretation of Congress’ intent with respect to this specific regulatory authority?  We’ll keep you up to date on the Patent Reform Act, what effect if any it has on this lawsuit, and other developments that look interesting or noteworthy.

As always, feel free to send us any questions or other topics you’d like to read about …

Posted by Douglas Sorocco, September 17, 2007 at 5:12 pm
Permalink: overview of the patent reform act of 2007
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Dunes CLE – Vegas Legal Fun!

Dunes CLE has all the fun – all the while providing an informative and timely panel of experts on intellectual property matters.  It can’t get much better than a little gaming, some sun, a beverage of your choice after a day of in-depth legal information.

Dunes’ Fall, 2007 seminar is rapidly approaching on October 12th at the Bellagio Hotel in Las Vegas.  The theme of the conference is “Current Issues in Patent Law 2007″ and features a double helping of J. Matthew Buchanan updating everyone on Patent Law and Policy Updates from within the legislative, executive and judicial realm.

Other topics include:

• Inequitable Conduct After McKesson: Has The “Plague” Returned? – Thomas M. Hardman
• USPTO Claims and Continuation Practice Files Rules: Where Are We Now? – Mark Sandbaken
• Statutory Subject Matter in 2007 and Beyond – Robert Ryan Morishita
  
• The Supreme Court’s Decision in KSR v. Teleflex – Eric L. Maschoff

PHOSITA has been an avid fan of Dunes’ from the beginning – and, as they say, what happens in Vegas, stays in Vegas!

Posted by Douglas Sorocco, September 16, 2007 at 4:05 pm
Permalink: Dunes CLE – Vegas Legal Fun!
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patent reform bush-whacked: the decider weighs in

Information Week reported today that the White House has finally weighed in on the Patent Reform Act currently before the House of Representatives.

Regardless of how many Americans seem to feel about our current Commander-in-Chief, it appears that President Bush came to at least one correct conclusion: limiting infringement damages would unnecessarily devalue patents and make it more difficult for patent holders to sue large infringers.

As stated in the official release, “the Administration continues to oppose H.R. 1908’s limits on the discretion of a court in determining damages adequate to compensate for an infringement.”  Further, “Making this change to a reasonably well-functioning patent legal system is unwarranted and risks reducing the rewards from innovation — a result that would undercut the other useful reforms in this bill.”

The White House also expressed its approval for the Federal Circuit’s recent decision in In re Seagate Technology, which, in the administration’s words: “eliminated the ‘duty of care’ and held that enhanced damages are only appropriate where the infringer acts with reckless disregard of the patentee’s rights.”  While this signing-statement-esque summary seems quite clear, the decision itself is a bit murkier.  Nevertheless, the administration took the position that Seagate “makes the proposed statutory revisions [with respect to willful infringement] unnecessary.”

Additionally, the official statement includes several noteworthy, but less-desirable, conclusions.  The Administration “supports the establishment of a post-grant review procedure” and supports transitioning to a first-to-file system.  Overall, the Administration seems to support the idea of patent reform, but is taking a measured approach to its implementation.

Despite the support for reform, the conclusion is encouraging:  “The Administration therefore opposes H.R. 1908 unless it is appropriately revised to address this [damages] concern.”

Posted by Douglas Sorocco, September 7, 2007 at 3:17 pm
Permalink: patent reform bush-whacked: the decider weighs in
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