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Date: November 2007
Prepared by:
Uli Widmaier
Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
311 South Wacker Drive, Suite 5000
Chicago, IL 60606
Tel.: +1 (312) 554-8000
E-Mail: uwidmaier@patishall.com
Introduction
In the United States, intellectual property is protected under three sets of laws: patent law, copyright law, and trademark law (trade secret law can also play a role, but is less important and will not be discussed herein). Generally, intellectual property law is federal law, which means that suits can be brought in federal courts, and the par-ties do not have to contend with the often difficult task of handling the divergent legal systems of the various States.
Applicable Law
Patent Law: Patent law is based on the Patent and Copyright Cause of the U.S. Constitution, which gives Congress the power "to promote the progress of science and the useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." Pursuant to its constitutional authority, Congress has enacted the U.S. patent laws. They are codified at Title 35 of the United States Code. Pursuant to the patent laws, the U.S. Patent and Trademark Office has passed numerous regulations, which are set forth in Title 37 of the Code of Federal Regulations. The practice of the U.S. Patent and Trademark Office in patent matters is also guided by the Manual of Patent Examining Procedures.

Copyright Law: Like patent law, copyright law is based on the Patent and Copyright Cause of the U.S. Constitution. Pursuant to its constitutional authority, Congress has enacted the U.S. Copyright Act. It is codified at Title 17 of the United States Code. Pursuant to the patent laws, the U.S. Copyright Office has passed numerous regulations, which are set forth in Title 37 of the Code of Federal Regulations. The practice of the U.S. Copyright Office is also guided by the Manual of Copyright Office Practices.

Trademark Law: Unlike patent and copyright law, trademark law is based on the Commerce Clause of the U.S. Constitution, which gives Congress the power "to regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes. Pursuant to its constitutional authority, Congress has enacted the U.S. Trademark Act. It is codified at Title 15 of the United States Code. Pursuant to the Trademark Act, the U.S. Patent and Trademark Office has passed numerous regulations, which are set forth in Title 37 of the Code of Federal Regulations. The practice of the U.S. Patent and Trademark Office in trademark matters is also guided by the Trademark Manual of Examining Procedure and the Trademark Trial and Appeal Board Manual of Procedure.
Detailed Information
Patent Law
Patent law protects inventions. It allows the patent owner to prevent others from making, using, or selling the invention in the U.S., or from importing it into the U.S., for a period of twenty years starting from the filing of the patent application. Patent protection can be obtained only via a patent grant issued by the U.S. Patent and Trademark Office.
Copyright Law
Copyright law protects original works of authorship, which includes literary, dramatical, musical, artistic and certain other works. It gives the copyright owner the exclusive right to reproduce or publicly perform or display the work, distribute copies of it, or prepare derivative works based on the original work. While copyright is limited in time, the term of protection has recently been expanded to life plus seventy years for works created by sole authors, and 95 years from publication or 120 years from creation (whichever expires first) for anonymous works, pseudonymous works, or works made for hire. Copyright protection attaches at the moment of creation, without the need to obtain a registration from the U.S. Copyright Office.
Trademark Law
Trademark law protects any word, name, symbol, or design (including product shape and packaging) used by the trademark owner in U.S. commerce to distinguish the owner's goods or services from those of others and to indicate their source. It allows the trademark owner to prevent others from using an identical or confusingly similar mark to sell their goods or services. Unlike patent and copyright protection, trademark has no temporal limitation and can potentially continue forever. However, trademark rights are lost when the mark becomes the generic name for the goods or services or where the owner abandons the mark. Trademark protection can be obtained via registration with the U.S. Patent and Trademark office, or via adoption and use of the mark in U.S. commerce. Trademark protection cannot be maintained without continued and uninterrupted use of the mark in U.S. commerce
Business Considerations
The protections available under patent, copyright, and trademark law differ from each other in substantial ways, and choosing the appropriate legal regime to protect one's intellectual property can have important strategic implications for the strength and duration of the overall protection. Trademark law offers a convenient way of continuing to protect intellectual property that is about to lose, or has lost, its patent or copyright protection. However, U.S. law contains several legal principles that make such a use of trademark law more difficult in certain circumstances. In order to maximize the value of protection, it is therefore important to exercise care in choosing the appropriate protection regime for each item of intellectual property. Each one of the three available protections offers specific advantages and disadvantages. Patent law offers immediate protection, as well as protection for functional items that would not be protectable under copyright or trademark law. However, patent protection is comparatively short.
Frequently Asked Questions
What is a patent?
A patent is a grant of a right of exclusion, issued by the United States Patent and Trademark Office. It is given for an invention.

How long is the term of a patent?
The U.S. Constitution mandates that patent terms be temporally limited. In general, the term of a patent is 20 years from the date of filing of the patent application with the Patent and Trademark Office. The grant of a U.S. patent is effective within the contiguous United States, as well as U.S. territories and U.S. possessions.

What rights does a patent confer?
As provided by statute, a patent grant confers the right "to exclude others from making, using, offering for sale, or selling” the patented invention in the United States or “importing” the invention into the United States, as well as the right to collect damages for infringement. It is important to note that a patent is a right of exclusion. The patent does not confer the right to make, use, sell or import the invention. It is the duty of the patent owner to enforce the patent.

When does an invention become protected by the patent laws?
Upon issuance of the patent by the U.S. Patent and Trademark Office, after completion of the patent application process.

What types of patents are there?
There are three types of patents: Utility patents, design patents, and plant patents. Utility patents apply to new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. Design patents apply to new, original, and ornamental design for an article of manufacture. Plant patents apply to distinct and new variety of plant.

What kinds of inventions may be patented?
Patent law states that "whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of [the patent law]." Moreover, the invention sought to be patented must be "useful," meaning have useful purpose and operate to perform that purpose. In short, this means just about anything useful produced by humans, and the processes for producing it, can potentially be patented. In recent years, there has be a noticeable trend in favor of patentability. Business methods and software are now generally patentable as long as their applications can be shown to produce a useful, concrete and tangible result.

What is excluded from being patented?
Abstract ideas and suggestions, physical phenomena, and laws of nature are not patentable.

What are the requirements for patentability?
To be patentable, and invention must be new. This means patent protection is not available if the invention was, in the words of the patent law, "known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent," or "the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States." If an inventor publicly describes or uses the invention, or puts it up for sale, he must apply for a patent within one year of that event. It is important to note that U.S. patent law - unlike the patent laws of many other countries - is designed so as to ensure that, in most cases, it is the first inventor who receives the patent, rather than the party who is first to file for patent protection.

To be patentable, an invention must also be non-obvious. The applicable provision in the patent law states that "[a] patent may not be obtained if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."

What is copyright?
Copyright is the governmental grant of a number of exclusive rights to authors of original works of authorship.

How long is the term of copyright protection?
The U.S. Constitution mandates that copyright terms be temporally limited. The term currently is life plus 70 years for works by sole original authors, and 120 years from creation or 95 years from publication, whichever is shorter, for works made for hire.

What rights does a copyright confer?
A copyright confers upon its holder the exclusive right to reproduce the work via copies or phono-records, to prepare derivative works based upon the original work, to distribute copies of the work via sale, renting, leasing, or lending, and to perform the work in public, as well as the right to collect damages for the infringement.

When does a work become protected under the copyright laws?
Copyright protection covers the work automatically at the moment it is fixed for the first time in a tangible form of expression. This protection issues automatically, by operation of law. Neither registration of the work nor the placing of a copyright notice on the work is required for the work to be protected under copyright.

Are unpublished works protected?
Yes.
What kinds of works may be protected?
The following categories of works are protectable under copyright:
  • literary works (including computer programs and most compilations);
  • musical works;
  • dramatic works;
  • pantomimes and choreographic works;
  • pictorial, graphic, and sculptural works;
  • motion pictures and other audiovisual works;
  • sound recordings;
  • architectural works.
    What is excluded from protection?
    Works not fixed in a tangible medium of expression, such as improvisational speeches; titles, names, slogans; ideas, facts, discoveries; lists and compilations taken entirely from public documents or other common sources (example: a tape measure with inch or centimeter markings).
    What are the requirements for protection?
    Originality and fixation in a tangible medium of expression. Originality means the work has to have at least some minimal amount of creativity.
    Where can works be registered?
    At the U.S. Copyright Office.
    When can the work be registered?
    At any time during the copyright's duration.
    What are the advantages of registration?
  • public record of copyright claim;
  • works of U.S. origin must be registered before a lawsuit for copyright infringement can be filed in federal court;
  • registration is prima facie evidence of validity of copyright and facts stated in certificate (if registered before or within 5 years of publication);
  • copyright owner can get statutory damages and attorneys' fees in infringement action if work is registered within 3 months of publication or prior to infringement.
  • registration with U.S. Customs Service to protect against importation of infringing copies.
    What is a trademark?
    A trademark is any word, name, symbol, design or device that is distinctive, i.e. that distinguishes the owner's goods or services from those of others and communicates to consumers that the goods and services come from a single source.

    How long is the term of trademark protection?
    Potentially infinite. Trademark protection lasts as long as the owner uses the mark in commerce and mark is distinctive. Trademark protection ends when the owner abandons the mark or when the mark becomes the generic name for the goods or services themselves.

    What rights does trademark protection confer?
    The right to stop others from using the same or a confusingly similar mark on their goods or services, and the right to collect damages for the infringement.

    When does a mark become protected under the trademark laws?
    Either upon registration with the U.S. Patent and Trademark Office, or upon adoption and use in U.S. commerce. As with copyright, registration is not required to receive trademark protection. Note that marks registered in a foreign country can, for a limited time, receive protection via registration with U.S. Patent and Trademark Office prior to being used in U.S. commerce. However, trademark protection cannot be maintained without actual use of the mark in U.S. commerce.

    What is "use in commerce"?
    It is the prerequisite for trademark protection. With respect to goods, it means putting the mark on goods or their containers, and selling the goods or transporting them for sale in U.S. commerce. With respect to services, it means using the mark to advertise the services and offer them in connection with the mark.

    What kinds of marks may be protected?
    Anything that is capable of distinctiveness may be protected as a trademark. That includes words, phrases, names, symbols, designs, colors, shapes, smells, sounds, product design, the packaging and design of products, and so on. For several of these categories (color and product design, for example), the owner of the mark must prove that consumers actually do associate the mark with a single source before the mark can be protected.

    What is excluded from protection?
    Anything consumers cannot actually see or perceive. Any functional (i.e. useful) features of a product, including those specific features of a product that were previously covered by a patent. Any generic terms for certain goods, i.e. any terms that consumers understand to be the name for the goods themselves, rather than signifiers for the source of the goods.

    What are the requirements for protection?
    The main requirements are distinctiveness and use in commerce.

    Where can marks be registered?
    At the U.S. Patent and Trademark Office.

    What goods and services can a mark be registered for?
    In the U.S., a trademark can be registered only for those goods and services for which it is actually used (or intended to be used). This causes the description of goods and services of U.S. trademark registrations to be drastically shorter and more restricted than those typically seen in European jurisdictions. Obtaining or renewing a registration of a mark for that includes goods or services for which the mark is not actually being used can be viewed as fraud on the Patent and Trademark Office. In that case, the registration will be cancelled in its entirety.

    When can a mark be registered?
    Normally, a mark can be registered only after it is used in U.S. commerce. However, the owner of the mark can apply to register the mark before it is used in commerce. Also, marks registered in foreign countries can receive a U.S. registration prior to use in commerce.
    What are the advantages of registration?
  • Registration with U.S. Customs Service to protect against importation of goods with infringing marks.
  • Constructive nationwide notice of rights and constructive use of the mark.
  • Availability of damages and attorneys' fees.
  • Registration is prima facie evidence of right to use mark.
  • After five years of use, the registered mark becomes incontestable.
    What is excluded from protection?
    Works not fixed in a tangible medium of expression, such as improvisational speeches; titles, names, slogans; ideas, facts, discoveries; lists and compilations taken entirely from public documents or other common sources (example: a tape measure with inch or centimeter markings).
    Are unregistered marks protectable?
    Yes. Federal registration is not a prerequisite to protection. The owner of an unregistered mark enjoys significant protection under the Lanham Act, most importantly including the right to obtain injunctive relief against infringers. There are many examples of well-established U.S. trademarks that are not registered but nevertheless have been successfully protected over long periods of time.
    How does intellectual property litigation in the U.S. differ from that in other countries?
    Litigation in the U.S. is generally extremely expensive and time-consuming. Intellectual property litigation is no different. The reason is in large part that the process of establishing the facts of the case are left virtually entirely to the parties themselves, with only minimal court oversight. This discovery process permits parties to obtain all information that is in any way relevant to the issues in the case. The costs for discovery in a hard-fought case can easily run into the millions of dollars and take years to complete. Even in a intellectual property case of modest dimensions, a litigant can expect to pay several hundreds of thousands of dollars in legal fees for discovery, motion practice, and trial.
    Useful Links
  •  
  • Copyright laws, regulations, guidelines, Congressional testimony, etc.
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  • Patent Laws and Regulations (includes procedures and guidelines)
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  • Trademark Manual of Examining Procedure
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  • Trademark Section of the U.S. Patent and Trademark Office
  •  
  • Trademark Trial and Appeal Board Manual of Procedure
  •  
  • U.S. Copyright Office
  •  
  • U.S. Patent and Trademark Office
  •  
  • U.S. Trademark Laws and Regulations