Intellectual Property Part II: Patents and Copyrights

Intellectual Property (IP) is the general term covering diverse categories of intangibles (patents, copyrights, trademarks and trade secrets) that are subject to ownership (legal title) and other rights under state and federal laws in the US, and most other jurisdictions throughout the world. Previously, we discussed trade secrets. In this second of a three-part series, we will discuss patents and copyrights.


Patentable Subject Matter

The United States Patent and Trademark Office (USPTO) grants three types of patents under the Patent Act:

Utility patents protect “useful” inventions that are “novel” and “non-obvious” including: processes; machines; manufactured goods; chemical, biological, and other compositions of matter; and improvements to any of the above.

Design patents apply to new, original, and ornamental designs of manufactured articles, which can also be subject to copyright and trademark protection (known as registered designs in some other jurisdictions).

Plant patents protect distinct and new varieties of plants (limited to those that can be propagated asexually, by means other than seeds and subject to other specific restrictions).

Novelty and non-obviousness are central and complex requirements for valid patents under the Patent Act.  The courts have held laws of nature, physical phenomena, and abstract ideas to be unpatentable.

The USPTO grants patents on the successful prosecution of patent applications covering the invention. The America Invents Act (AIA) moved the US to a first-inventor-to-file system effective March 16, 2013. Under this system, a patent to an invention is awarded to the first inventor to file an application on the invention. Before the AIA, the patent would be awarded to the first inventor, generally based on the date of conception, regardless of the filing date of the application.

A proper patent application must disclose in detail one or more embodiments of the invention, and enumerate specific claims to be granted. Those claims that are ultimately allowed become the basis for enforcement of the patent.

A patent holder has the right to exclude others from making the patented invention within the US; using the patented invention within the US; offering to sell or selling the patented invention within the US; and importing the patented invention into the US.



Copyrights attach to original works of intellectual and artistic expression in multiple categories.  This can include books and magazines, photographs, movies, music, software programs, drawings, graphic designs, business plans and charts, websites, paintings, sculpture, fashion, architecture, and live performances.

Courts have established that the standard of originality required for copyright protection is low. For example, similar photographs of the same scene are each protected by copyright. In addition, the extent or lack of intellectual effort or creativity is irrelevant. The Copyright Act expressly excludes from copyright protection works of the US government, for example, the text of statutes, court opinions, and census reports.

Copyrights arise, by operation of law, immediately on a work being committed to paper, film, computer memory or disk, or other medium. The Copyright Act describes this as “fixed in any tangible medium of expression.” Publication of the work is not required.

Copyrights may be registered in the Copyright Office, but registration is not required for rights to attach.

Copyright registration is accomplished by filing an application with the Copyright Office, paying the specified filing fee, and, in most cases, depositing a copy (or excerpt) of the work with the Library of Congress.

In practice, copyrights are not always registered by their owners, merely by default or for various reasons. The registration process can be cumbersome and expensive, especially for businesses with many copyrighted works in certain categories (such as dynamic websites). No general blanket registration process exists (except in limited cases, for example, for serial works, such as newspapers and other periodicals), so each individual work, and each new version and edition, generally must be separately registered.

Furthermore, because registration requires at least partial public disclosure of the work, copyright owners often decide not to register certain kinds of works in the interest of confidentiality and to preserve any independent protection of the work as a trade secret. For example, registration of software programs requires a deposit of source code with limitations on the copyright owner’s ability to block out portions containing trade secrets.

A copyright owner must generally register a copyright before bringing a related copyright infringement action in federal court.

The owner of a copyright enjoys certain exclusive rights with respect to the protected work. This includes the right to reproduce the work (including making electronic copies), create adaptations (derivative works) based on the work, distribute copies (by sale or rental), and display or perform the work publicly.

The Copyright Act also includes certain limitations on these exclusive rights, including fair use, the first sale doctrine, and various compulsory and statutory licenses.

In Part III of this series, we will explore trademarks and masks works.

IP law can be quite complex. A knowledgeable IP attorney can help guide you on its important distinctions and options.

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Michael Kimball, Esq.

Mike Kimball offers practical, timely, and economical legal solutions that move projects along and allow you to focus more on your core business objectives. He has years of experience partnering with companies ranging from Silicon Valley startups to firms in aerospace, biotech, construction, and many more. Mike’s in-house experience includes Yahoo!, Krux Digital (acquired by Salesforce), and Commerce One. He has worked on transactions with Eurostar, Red Bull, Major League Baseball, NASDAQ, Goldman Sachs, Liveramp, Amazon, and NASCAR.