Intellectual Property Key Concepts

Property Rights

Property concerns ownership of a thing, such as real estate or tangible personal property. The owner of property has a bundle of rights, which includes the rights to use, possess, transfer, and exclude others from the property.

Intellectual Property

Intellectual property involves protection of the creations of the human mind. The law of intellectual property defines the legal rights of owners of the products of inventive and creative work.

Trade Secrets

A trade secret is any form of (1) information that (1) has economic value from not being generally known to, or readily ascertainable by proper means by, others and (2) has been the subject of reasonable efforts by the owner to maintain secrecy. A trade secret can be any type of confidential business information, including formulas, patterns, compilations, programs, devices, methods, techniques, and processes.

Patents

A patent grants an inventor the exclusive right to exclude others from making, using, selling, or importing the invention protected by the patent. An inventor may obtain a utility patent on a process, machine, manufacture, composition of matter, or an improvement of any of these.

Copyrights

A copyright protects an original work of authorship fixed in a tangible medium of expression. Copyrightable works are: literary works, musical works; dramatic works; pantomimes and choreography; pictorial, graphic, and sculptural works; motion pictures and other creative works having both a visual and audio component; sound recordings of music; and architectural designs.

Trademarks

Trademarks identify the origin or source of the goods or services. A trademark can be a word, phrase, symbol, design, or a combination of words, phrases, symbols or designs, including trade dress.

Right of Publicity

The right of publicity is the exclusive right of celebrities and prominent individuals, such as entertainers, models, and professional athletes, to control the commercial exploitation of their identity. Publicity rights protect a celebrity’s name, image, and other identifying attributes associated with his or her identity.

Natural Rights Theory

Natural rights theory proposes that those who apply their creative or inventive efforts in intellectual activity deserve a property interest in the products of those efforts. Accordingly, intellectual property rights can be rationalized as the reward for the products of a person’s creative and inventive activity.

Personhood Theory

Personhood theory is identified with the philosophy of Hegel and Kant. Hegel postulated that ownership and control of property is tied to the development of the person. Because one achieves existence and recognition as a person by exercising his or her free will to acquire property, he or she should own the products of his or her work. The intellectual work of an author or inventor is an expression of personality because he or she has invested his or her self in the product of those intellectual efforts. Therefore, those works should be protected by property rights.

Utilitarianism

Utilitarian theory assesses the value of intellectual property rights by balancing their social benefit against their social cost. Intellectual property protection provides a socially beneficial incentive to create and invent that outweighs the cost of limiting its availability. Without such protection, inventors and creators would be unable to recoup the costs of their investment.

Public Domain

The public domain consists of intangible materials that are not protected by intellectual property rights, including inventive and creative works that were once protected by intellectual property rights but are no longer. Anyone may use public domain content for free and without incurring legal liability.

Intellectual Property Audit

An intellectual property audit is a systematic evaluation of a business’ intangible assets and the risks and opportunities associated with those assets. The audit allows a business to identify and value all of the different types of intellectual property assets it owns in order to better exploit and strategically manage those assets.

Trade Secret

Trade secrets have independent economic value by not being generally known to others who could use the information for their own economic benefit, provided secrecy is maintained using reasonable measures.

Protectable Subject Matter

Trade secrets have independent economic value by not being generally known to others who could use the information for their own economic benefit, provided secrecy is maintained using reasonable measures.

Economic Value

If the information is unknown to those who can obtain economic benefit or competitive advantage from it, the information is sufficiently secret to have actual or potential economic value.

Reasonable Secrecy

The trade secret owner must take reasonable efforts under the circumstances to maintain the secrecy of the information.

Misappropriation

One is liable for misappropriating another’s trade secret when he or she acquires it by improper means, or when he or she discloses or uses the trade secret without permission or in breach of confidence.

Independent Development

Independent discovery or invention of another’s trade secret is not improper and is not misappropriation. If proved, it is a defense to liability.

Reverse Engineering

Independent discovery or invention of another’s trade secret is not improper and is not misappropriation. If proved, it is a defense to liability.

Remedies

A trade secret owner may be entitled to injunctive relief, monetary damages, and when there has been willful misappropriation, attorneys’ fees.

Inevitable Disclosure Doctrine

Even when an actual misappropriation has not yet occurred, some courts will prohibit a former employee from working for a competitor when it can be shown that there is no way for the former employee to perform his or her new job without unavoidably using or revealing the former employer’s trade secret.

Noncompetitive Agreements

A contract between a trade secret owner and a departing employee by which the employee agrees not to compete against the former employer is enforceable if the agreement is supported by consideration and is reasonable in duration and geographic scope

Patent

A patent is a right granted by the government that allows the inventor to exclude all others from practicing his or her invention for a period of 20 years.

Patent Prosecution and Issuance

The inventor files a patent application disclosing the invention to the USPTO, where an examiner reviews it and determines whether the invention is patentable. If so, a patent issues.

Requirement for Patentability

To be patentable, an invention must be eligible subject matter, useful, novel, nonobvious, and properly disclosed in a patent application.

Patentable subject matter

The subject matter that may be patented to include any process, machine, manufacture, composition of matter, or improvement on any of these. Excluded from patent protection are laws of nature, natural phenomena, mathematical formulas, and abstract ideas.

Utility

The invention must be useful in that it is capable of providing some identifiable benefit that is both specific and substantial.