Now that you have a general sense of what intellectual property is, this section will cover specific types of IP as treated under U.S. laws.

2.1 Copyright

Copyright is a form of legal protection automatically provided to authors of creative works such as books, music, or art. In the past, U.S. law required creators to label their works in certain ways or to register their creations with the U.S. Copyright Office to benefit from copyright protections. In 1976, U.S. law changed to be consistent with international standards so that creators have copyright protection immediately upon creation.

U.S. copyright law is intended to encourage people to create new works. By limiting how others can use a newly-created work for some period of time, copyright law gives creators more control over the use of their works and increases their potential for compensation.

According to the law, only the person who controls the copyright (originally the creator) is allowed to:

• Reproduce the work
• Distribute copies of the work to the public
• Perform or display the work publicly
• Create derivative works; in other words, to create new works based closely on the original (such as a translation of a book from one language into another, or making a book into a movie)

The creator of a copyrighted work can give others permission to do these things with the work and can completely transfer these rights to someone else in a way that gives up these rights for themselves. For example, a book author will often transfer their copyrights to a publisher in exchange for money related to the sales of the book. After that transfer, authors can no longer give permission to anyone else to do these things and needs permission from the publisher to do these things themselves.

The creator, or person the creator transfers their rights to, is said to “control copyright” in the work and sometimes described as the copyright owner.

When someone other than the copyright owner uses the work in one of these protected ways without permission (or other justification under copyright law), it is called copyright infringement.

Copyright law protects creative works “fixed in any tangible medium of expression”, such as books, movies, musical scores or recordings, paintings, photographs, websites, video games, performances, architecture, and software.

The complete description of what is protected by copyright is provided in Section 102 of the Copyright Law:

Copyright law does not protect facts or ideas, just the creative choices involved in communicating them. In other words, copyright protects the expression of ideas, but not the ideas themselves. For example, Einstein’s Theory of Relativity could not be copyrighted, but the article he published to explain the theory could be.

The following do not qualify for copyright protection:

2.2 Patents

As with copyright, it’s sometimes said that patents protect ideas. Similarly, it’s not that simple.

While copyright protects the fixed expressions of ideas, patents provide legal protection for novel, detailed ideas for products and processes. This protection is not automatic, but comes only after a patent-granting agency has examined a patent application for originality and other criteria.

The patent process is an exchange between an inventor—or another party to whom the inventor has assigned the rights to an invention—and a government body. In the United States, the U.S. Patent & Trademark Office (USPTO) oversees the patent process. In exchange for disclosing the technical details of the invention and pending review for eligibility, the government grants the patentee the right to prevent others from making, using, or selling the invention without permission for a limited number of years. This incentivizes the patent holder to make their technology commercially available and facilitates the spread of technical knowledge.

During the patent application process or upon granting of the patent, the government makes the details of the invention public. This benefits the public in the following ways:

• We can discover patented product or processes and avoid legal action by not copying them without permission during the term of protection;
• We can devise alternate means of solving the same problem that the invention addresses; and
• After the term of protection has ended, we can accurately recreate and sell the product or process based on the specifications disclosed.

Requirements in U.S. Patent Law

Patent protection exists only on a territory-by-territory basis. A patent granted in the United States does not allow the rights holder to prevent others from making, using, or selling the invention outside of the United States.

In the United States, patent law is covered under U.S. Code 35, which states:

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 therefor, subject to the conditions and requirements of this title.

Although “useful”-ness is a requirement in U.S. patent law, it is not so for all countries. Even in the U.S., it’s not necessary for an inventor to demonstrate that an invention possesses a high degree of usefulness, but simply that the invention is functional in some way.

Two other criteria are more critical in the U.S. patent examination process: novelty and non-obviousness.

• Novelty is the existence of a new feature or characteristic not reflected in the body of existing work in a given field (known as “prior art”).
• Non-obviousness is the idea that the new feature or characteristic is not an innovation on existing technology that a person having average technical skill in the related field could have easily figured out.

Patent applicants are expected to familiarize themselves with prior art (including patent applications and granted patents in all territories, as well as other literature in the field, including trade journal articles, scholarly articles, conference proceedings, and websites), acknowledge relevant prior art in their patent applications, and explain why the invention is both novel and non-obvious in light of that prior art.

Public Disclosure

Patent protection is not automatic, but dependent on filing an application with the USPTO. Filing is so important, in fact, that inventors can hinder their own ability to patent by publicly disclosing their inventions prior to filing. An inventor’s own publications are considered prior art and may be counted against the application on the basis of novelty (in the U.S. there is a one-year grace period between public disclosure and filing date; however, not all international patent offices recognize this).

2.3 Types of Patents

There are three types of U.S. patents, based on subject matter and coverage.

Utility Patents

The most commonly-granted patents in the U.S. are utility patents, which cover “new, useful, and nonobvious process[es], machine[s], article[s] of manufacture, or composition[s] of matter, or any new and useful improvement thereof.”

Some examples include:

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Patents cannot be granted to “abstract ideas, laws of nature and natural phenomena (including products of nature).”

Plant Patents

Plant patents protect asexually reproducing plants, excluding edible tubers. Some plants or aspects of plants not covered by plant patents are protectable by utility patents, and through the Plant Variety Protection Act (PVPA), which protects seeds and tubers.

Types of Patentable plants include:

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Design Patents

In the U.S., design patents protect ornamental designs. This may include non-functional elements of an invention for which the functional elements are protected by utility patents (e.g., an attractive outer casing for a new model of phone) or non-functional designs for which there is no related utility patent (e.g., a distinctive-looking pair of normally-functioning shoes).

Design patents function as an “industrial design right.” In many other countries, industrial design rights are not protected under patent law, but through other legal means. Unlike utility and plant patents, examiners check U.S. design patent applications for novelty and non-obviousness, not usefulness.

Types of patentable designs include:

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2.4 Trademarks, Service Marks, and Trade Dress

Trademarks are words, phrases, logos, shapes, colors, sounds, and even scents (all referred to as “marks”) used to identify goods, indicate their sources, and distinguish them from other goods. When a mark is used to indicate a service rather than a good, it is often referred to as a service mark. Trade dress identifies a brand or product with its overall look–this includes, for instance, distinctive non-functional design elements of the product, packaging, and even restaurant or retail store layout.

In the United States, using a mark in commerce establishes a “common law” right. There’s no registration required, and owners can indicate the mark as protected using the ™ (trademark) or ℠ (service mark) symbol.

For stronger protection, owners can register their marks either on the state or federal level. State requirements and levels of protection vary.

Owners who want to protect their marks on a federal level—which offers stronger protections than state or “common law” trademark protection—can file applications with the U.S. Patent & Trademark Office. The USPTO accepts applications for marks currently in use as well as those intended to be used later; however, the marks are registered only when the applicant provides proof of commercial use. Only federally-registered marks can legally be noted with the ® symbol.

The basic legal standard underlying trademark, service mark, or trade dress infringement is “likelihood of confusion”—is it probable that a mark would lead a consumer to believe it is associated with a product or service of another? USPTO trademark examiners take into consideration whether marks are similar to each other and also whether they represent competing products or services. For instance, there are many currently active U.S. trademarks for the word “Apple,” held by different companies for products unlikely to be confused with each other, including travel agency services, chewing tobacco, and computer hardware.

2.5 Trade Secrets

A trade secret is a type of intellectual property protection that applies to business information for which confidentiality is key to maintaining commercial value. In some cases, a business may not pursue any kind of registration for a piece of intellectual property as both copyright and patent protection result in public disclosure. Under trade secrets law, businesses that take measures to protect their secrets can pursue legal action against those who disclose this information without permission. In the U.S., trade secrets are governed by state law, although most states have standardized this via the Uniform Trade Secrets Act of 1979. Examples of trade secrets include Google’s search algorithm and the recipe to Coca-Cola.

2.6 Registration and Length of Protection for Types of Intellectual Property

The following table shows the main types of U.S. intellectual property, the terms of protection, and the federal office of registration where applicable. Note that registration is mandatory only for patent protection; however, registration offers stronger protection for copyright and trademarks/service marks/trade dress.

2.7 Limits to IP Protections

U.S. IP laws give creators the rights to control many uses of their work. However, those rights are limited in time and scope in order to balance the needs of the public for access and use of information and ideas.

Limits on Copyright

Imagine if copyright law gave creators the ability to completely control all uses of their works forever. How could we learn or teach about something a creator won’t give us permission to reproduce? How could we report on a historic event that was captured on video by one person who doesn’t like what we have to say about the event? Without limits on copyright, free speech, learning, creativity, and culture would grind to a halt.

In the U.S., one of the most important limits on copyright protection is called “fair use.” Fair use ensures that copyrighted works are available to reuse for socially-valuable purposes such as teaching, news reporting, parody, or critical comment. These fair uses of copyrighted materials can be made without permission from the copyright owner.

In general, a fair use is a use of copyrighted material done for a limited and “transformative” purpose such as to comment upon, criticize, or parody a copyrighted work. In practice, determining whether or not a particular re-use is “fair” involves making a judgment based on balancing the various aspects of the use that are more and less fair.

For more information and details about determining whether a particular use is fair, see the UW-Madison libraries’ Fair Use information page.

Limits on Patents

There is no equivalent to fair use when it comes to creatively reusing patent-protected technology; however, bear these things in mind:

• Although patent documents include highly detailed descriptions of an invention, the legally-protected aspects of a patented invention are described in one section called the claims. For instance, a patent for an “autonomous vehicle system” will not protect every kind of system designed for autonomous vehicles nor will it protect all aspects of a specific system for autonomous vehicles. For a definitive statement on what is protected, review the patent’s claims section.
• Patents are territory-specific. If an inventor patents an invention in Canada, but not in the U.S., a U.S. company could manufacture and market the invention in the U.S.; however, the company would not be able to protect the invention with a U.S. patent. This is because USPTO examiners would consider the Canadian patent prior art, which means that the invention is not novel—a requirement for patentability.
• Patented technology that was once protected, but is no longer protected due to the rights-holder no longer paying the required fees or the patent having reached its natural expiration date (usually 20 years for utility and plant patents, 15 for design patents), is in the public domain.
• Patent applications that were reviewed and rejected by the USPTO are also in the public domain; however, if they were rejected due to lack of novelty or non-obviousness, this may mean there are other patents that would impact your ability to recreate or market the technology.

2.8 Key Concepts

• Copyright provides legal protection to authors for creative works such as books, music, or art.
• Patents provide legal protection for novel, detailed ideas for products and processes. In the U.S. there are three types of patents: utility, plant, and design.
• Trademarks and Service Marks provide legal protection for words, phrases, logos, shapes, colors, sounds, and scents used to identify goods or services, indicate their sources, and distinguish them from other goods or services.
• Trade secrets are legally-protected business information for which confidentiality is key to maintaining commercial value.
• All types of intellectual property rights are limited in time, scope, or both in order to balance the needs of the public for access and use of information and ideas.

2.9 Lesson Review

In writing your thesis on Enlightenment philosophy, you come up with a novel interpretation of Immanuel Kant’s moral philosophy. What type of intellectual property might legally protect not just your thesis, but the ideas that comprise your interpretation?