Patent It Yourself - PDF Archive

ChaPter 1 | INTRODUCTION to PATENTS and Other INTELLECTUAL PROPERTY | 17
M. Alternative and Supplementary
Offensive Rights
As you probably realize, there are several alternative and
often overlapping ways to acquire offensive rights on
intellectual property. Let’s think of these as different roads
to the same destination. While the immediate filing of your
patent application is one of these roads, it is only one. The
purpose of this chapter is to provide you with a map to the
other roads and to help you decide which is the best way to
travel, given your circumstances.
The value of your invention can sometimes be better
monopolized by using one of the other forms of intellectual
property and can almost always be enhanced by simultaneously
using a patent with one or more of these other
forms—such as unique trade dress, a good trademark, and
copyright-covered labels and instructions—and by maintaining
later improvements as a trade secret.
N. Intellectual Property—The Big Picture
“Intellectual property” (sometimes called “intangible
property”) refers to any product of the human mind or
intellect, such as an idea, invention, expression, unique
name, business method, industrial process, or chemical
formula, which has some value in the marketplace, and
that ultimately can be reduced to a tangible form, such as a
computer, a chemical, a software-based invention, a gadget,
a process, etc. Intellectual property law, accordingly, covers
the various legal principles that determine:
• who owns any given intellectual property
• when such owners can exclude others from
commercially exploiting the property, and
• the degree of recognition that the courts are willing to
afford such property (that is, whether they will enforce
the owner’s offensive rights).
In short, intellectual property (IP) law determines when
and how a person can capitalize on a creation. In recent
years the role of IP has expanded greatly and will continue
to do so as our society becomes more dependent upon
technology and information.
Formerly, patents were the most significant part of IP law,
so most attorneys who handled trademarks, copyright, trade
secrets, and unfair competition, as well as patents, called
themselves “patent attorneys.” Nowadays, the nonpatent
forms of IP law have become far more significant, so most
patent attorneys now call themselves IP attorneys. This term
has engendered some confusion, because many attorneys
who aren’t licensed to practice patent law (they only do
trademark, copyright, etc.) call themselves IP attorneys. To
practice patent law before the PTO, one must pass a separate
“agent’s exam” given by the PTO. Thus if you need someone
to represent you before the PTO and you encounter an
attorney who is merely identified as an “IP attorney,” you
must ask the attorney (or check the PTO’s site) to see if the
attorney is licensed to practice before the PTO.
Over the years, intellectual property law has fallen into
several distinct subcategories, according to the type of
“property” involved:
• Patent Law deals with the protection of the mental
concepts or creations known as inventions—an example
is the flip-top can opener. As indicated earlier, we have
three types of patents: utility, design, and plant.
• Trademark Law deals with the degree to which the
owner of a symbol (for example, a word, design, or
sound) used in marketing goods or services will be
afforded a monopoly over the use of the symbol (that
is, offensive rights against others who try to use it).
Examples of trademarks are Ivory, Coke, Nolo, the
Mercedes-Benz star, and the NBC chimes. With regard
to advertising slogans, while the courts generally do
not regard them as trademarks, they will afford them
trademark rights provided their owners have used
them consistently as brand names on the goods and
not just in the media. Slogans are primarily covered by
copyright law and unfair competition (see below).
• Copyright Law grants authors, composers, programmers,
artists, and the like the right to prevent others
from copying or using their original expression without
permission and to recover damages from those
who do so. Copyright law gives me offensive rights
against anyone who copies this book without my
permission.
• Trade Secret Law deals with the acquisition of offensive
rights on private knowledge that gives the owner
a competitive business advantage—for example,
manufacturing processes, magic techniques, and
formulae. The method of producing the laser light
shows and fireworks are trade secrets. Unless its owner
makes substantial efforts to keep the knowledge secret,
any trade secret rights will be lost.
• Unfair Competition Law affords offensive rights to
owners of nonfunctional mental creations that don’t
fall within the rights offered by the four types of law
just discussed, but which have nevertheless been unfairly
copied by competitors. For example, “trade dress”
(such as Kodak’s yellow film package), a business name
(such as Procter & Gamble Co.), a unique advertising
slogan (for example, “Roaches check in but they don’t
check out”), or a distinctive packaging label (such
as Duracell’s copper-top energy cells) may all enjoy
offensive rights under unfair competition principles.