This article presents an overview of the current state of intellectural property (IP) law in the United States. Particular emphasis is placed on the unique issues surrounding technological innovation. Case studies are provided for each of the major topics.
Intellectual property (IP) is a complex and broad issue which encompasses any mental creations over which one can declare ownership. Legislation dealing with intellectual property typically aims to foster innovation and economic growth, and also to address the ethics concerning one’s rights to such protections . With the rapid advancement of technology and scientific research, the complexity of the issue has only increased: in particular, the question of precisely what types of ideas, designs, etc. should be protected by IP law has become an increasingly controversial one. Some claim that the aggressive patent enforcement strategies employed by some corporations hinder innovation, while others contend that innovation could not thrive without the protections granted by IP law. The aim of this article is to introduce the reader to modern IP law in the United States, covering the definitions and laws applying to copyrights, patents, trademarks and trade secrets. The emphasis throughout will be how these issues affect design and innovation of technology.
The term patent refers to the exclusive rights to any novel invention granted to their author by a sovereign state, in exchange for disclosure of details of the invention to the public. A patent prevents any party other than the patent holder from reproducing the invention or creating a derivative work. Congress’ power to legislate intellectual property derives from Article I, Section 8, Clause 8 of the Constitution, which states: “[Congress shall have the power] To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” (U.S. Const. art. I, § 8).
What is Patentable?
There are three primary types of patents issued in the U.S.: a utility patent protects an invention with a particular function such as a machine, an article of manufacture, or novel process. A design patent protects the ornamental design or aesthetics of a functional item, for example the characteristic appearance and user interface of iOS devices. Finally, a special type of patent called a plant patent is issued to plant breeders for new plant breeds. In order for a utility patent to be granted for an invention, the invention must demonstrate some functional use and possess novel feature that does not exist in the current body of knowledge (known as prior art). Note that utility patents currently have a term of 20 years from the date of application.
US Patent Law History
Congress passed the first U.S. Patent Act in 1790, granting the Secretary of State, Secretary of War, and Attorney General the right to issue patents for “any useful art, manufacture, engine, machine, or device, or any improvement therein not before known or used…” The original act required a description of the invention as well as a working model (a requirement that was soon dropped), and the patents were granted on the basis of novelty and importance of the invention.
Prior to the passage of the Leahy-Smith America Invents Act in 2011, modern patent law in the U.S. was structured in 1952. Additional amendments requiring an inventor to describe the basis of infringement when filing a patent and requiring that the invention be “non-obvious” were added at this time to the existing law.
Historically, the U.S. recognized patents on a first-to-invent basis. This means that, in a situation where two or more parties file patents for a similar or identical invention, priority is given to the party that conceived of the invention first rather than the party who filed the first patent application. This system was enforced by interference precedings which allowed a party to challenge existing patents in cases where they can establish that they were the first to invent the item in question, even if they failed to file first. With the passage of the Leahy-Smith Invents Act, the U.S. is moving to a first-inventor-to-file system, as described in the following section.
Leahy-Smith America Invents Act
The Leahy-Smith America Invents Act (U.S., 2011) was signed into law in 2011 and took full effect on March 16, 2013. The most marked change in the U.S. patent system that this law creates is the transition from a first-to-invent to a first-inventor-to file system, which is a variation of the first-to-file system that is found in the majority of other nations. The most significant difference between a pure first-to-file system and a first-inventor-to-file system is in the definition of what is considered prior art: whereas in a first-to-file system prior art is simply everything that is publicly known up to the date that the patent is filed, the first-inventor-to-file system makes an exception for any information disclosed by the inventor up to a year prior to the filing of the patent. This exception will likely become significant in scientific research, where being able to publish findings early on without risking the ability to file a patent later could be useful both to patent holders and to the exchange of information in the scientific community as a whole. On the other hand, such early disclosure will still inhibit inventors from filing patents in the rest of the world, which may limit the utility of this exception.
The America Invents Act contains a number of other key changes to U.S. IP law. One such provision is the protection granted to those who utilize an invention as a commercial trade secret. In the event that a patent for the invention in question is filed, as long as a party has been using that invention secretly for at least a year prior to the patent being issued, they may continue using the invention. Prior to this legislation, such a party would be infringing the patent by continuing to use the invention, and so this provision will likely increase the viability of maintaining an invention as a trade secret. Other components of the law address concerns regarding the abuse and inefficiencies of the patent system, including disallowing the aggregation of multiple defendants in a single infringement claim and granting the patent office more control over their finances.
Filing a Utility Patent
In the U.S., patent applications are filed with the United States Patent & Trademark Office (USPTO). As of 2013, patents can be filed electronically, by mail, or by hand delivery. Applications must adhere to specific guidelines for format and content. The following must be included in a filing:
Filing Fee Payments
Applications must be accompanied by filing fee payments, which vary depending on an applicant’s size. The relevant fees may be reduced if the inventor(s) can be considered a small or, as of 2013, a micro entry. A small entity is an individual inventor, a group of inventors, any corporation with 500 or fewer employees, or a non-profit organization. Filing fees, as detailed in the USPTO’s complicated fee schedule, can include surcharges, fees for excessive claims, provisional patent applications, non-electronic filings, and other costs. Fees are also charged for patent searches, examinations, and extensions. Additional fees are applied to activities ranging from filing abroad to maintaining patent protection once it is awarded.
A specification consisting of a written description of the invention in question and the processes by which the invention are created and utilized is required. Somewhere in the specification, the inventor must also detail the best mode, to the knowledge of the inventor, of carrying out the invention. Finally, the specification must conclude with one or more claims clarifying what properties the inventor wises to own.
Oath or Declaration
An oath or declaration by the inventor stating that they believe themselves to be the first inventor of the invention in question, as well as other statements as required by law.
Case Study: Apple Inc. v. Samsung Electronics Co., Ltd.
A recent example of litigation that highlights the major issues and challenges surrounding patent law is that of a series of lawsuits between Apple and Samsung focusing on the design and user interface of their respective smartphones and tablet computers. The first lawsuit came from Apple in April 2011 with the claim that a number of Samsung’s Android devices (including the Galaxy S 4G and the Nexus S) violated Apple’s patents and trademarks. One particularly controversial design patent at the center of the case was one awarded to Apple that consisted of a one-sentence claim and 9 figures depicting a rectangular device with rounded edges.
As shown in Figure 1, the design patent is very general and it is unclear exactly what it prohibits competitors from producing: does Apple have the right to claim infringement when a competitor designs an electronic device with the form of a rounded rectangle? The jury in this case ruled in favor of Apple on a number of claims: in particular the “Bounce-back”, “Tap-to-Zoom”, and “On-screen Icons” features of Apple’s user interface and the aforementioned design patent. Apple was awarded approximately $1 billion in damages. The case raises a number of interesting controversies: namely regarding the validity of vague design patents with questionable scope and the ability of lay juries to make appropriate decisions in complex patent law cases. More recently, the damages were reduced from $1 billion to $400 million on the grounds that the ruling by the jury was based on incorrect legal grounds. Following this first case, Samsung filed an unsuccessful appeal, followed by a second lawsuit filed by Apple based on the claim that a number of other Samsung devices violated design and utility patents owned by Apple similar in scope to those from the first case.
A copyright grants the creator of an artistic/intellectual work exclusive rights to that work for a finite time. Generally that amount of time includes the lifetime of the creator plus some 50-100 years after their death in the case of an individual. While patents and copyrights both serve the purpose of protecting a person’s exclusive rights to their intellectual property, the primary distinction between the two is the types of works protected and the protections granted: copyrights have traditionally been intended to protect creative works such as books, visual art works, music, etc. but can also include software, whereas patents are primarily intended for inventions (although design patents can include aesthetic works that could also be copyrightable). Additionally, whereas patents prevent the reproduction of an invention, copyrights primarily protect the distribution of creative works, public performance of said works, and the creation of unauthorized derivative works. There are also “fair use” exceptions that allow others to make use of copyrighted works in certain circumstances.
Obtaining a Federal Copyright in the US
Submitting a copyright application online is fairly straightforward. The electronic Copyright Office can be accessed here and obtaining a basic copyright for an artistic/intellectual work is as simple as logging in or creating a new account and following the series of forms which ask for the information relevant to the work in question and submitting a fee payment. Depending on the type of work, it may be possible to submit an electronic copy along with the application. This is possible for:
- Unpublished work
- Work published electronically only
- Published work which requires identifying material to be uploaded
- Published work which requires a hard copy to be sent separately to the Library of Congress
The application will prompt for information including the title of the work, authors, claimants, and publication status. Note that while registering a copyright with the federal government is necessary to seek legal recourse for infringement, the creator of a work owns a copyright for the work simply by virtue of being the creator.
In the U.S., software is currently protected under the same rights as literary works and can thus be copyrighted to prevent the end user from reproducing it.
There are a number of situations in which reproductions of a copyrighted work may be considered fair use, and are thus permitted without the permission of the copyright holder. There are no clear regulations addressing what constitutes fair use, and so caution must be used unless one is certain that their usage falls under this category. In general, reproduction of some small portion of the copyrighted work is permitted in the context of a criticism or review of the work, education, a news report, judicial proceedings, or a parody (the last of which is protected by the first amendment). In addition, the impact of a reproduction or derivative work on the marketability and sales of the original is generally used to determine whether fair use criteria has been met.
A number of options exist to allow one to distribute their work in a manner which permits users to reproduce and/or modify the work, while maintaining restrictions on the manner in which this can be done. Copyleft refers to any license under which a work is published which grants the end user the right to modify the work with the requirement that any modified/redistributed versions of the work must grant the same rights. The objective of such licenses is to ensure that a work remains freely available and open to modification. Licenses that allow reproduction are particularly common in the case of software, with software licenses such as GNU GPL (which is a form of copyleft) and the family of BSD licenses (minimal restrictions on redistribution).
A trademark refers to such distinctive items as words, logos, symbols, designs, and slogans used by an entity to identify their products and services to consumers.
Registering a Trademark in the U.S.
Trademark applications can be filed online in a manner similar to copyright and patent applications. As with those for patents, trademark filings involve a range of fees, although the fee schedules are simpler and do not distinquish among types of entities. In order for a trademark to be valid, a basis for application must be clearly demonstrated (either current use in commerce or intent to use) and the relevant information including the mark in question and the goods/services to which the mark will apply must be included in the application.
When attempting to assess whether a mark has been violated, a number of issues must be examined. Namely, the strength of the mark, the similarity of the products/services as well as the marks in question, the defendant’s intent, and demonstrated consumer confusion as a result of the defendant’s mark. If the defendant is found to be guilty of infringement, an injunction is normally issued to halt production of the infringing good/service and damages are potentially awarded to the plaintiff.
A trade secret refers to information that is not publicly known and cannot by easily learned used by an entity to yield some competitive advantage. This can include practices, formulas, designs, etc. This can also include elements of a patent-protected property that the patent-holder wishes to keep private. For instance, some parameters involved in the manufacture of a patented good may be kept a trade secret.
Rather than protect their work through patents/copyright, entities choosing to keep information about their goods/services a trade secret rely on a number of security measures to ensure that competitors cannot access the information. Often, this includes the practice of requiring employees to sign a non-disclosure agreement stating that they will not divulge proprietary information. Such agreements often include severe financial penalties in case the agreement is violated, although it can be quite difficult to prove that.
Trade secrets carry the risk of being discovered by competitors, in which case the competitors can use the information obtained without risk of being prosecuted (as long as the method used to obtain the information was not itself illegal). Reverse engineering and espionage are commonly employed methods of revealing trade secrets.
Application to Senior Project
In general, most work produced through a student’s ECE Senior Project is their intellectual property (Tufts and project sponsors also are potential inventors and “assignees”), and it is entirely possible that a student will produce a patentable result. As such, becoming familiar with the protections available by law and the means to obtain them is extremely beneficial.
- Apple Inc. v. Samsung Electronics Co., Ltd., 768 F. Supp. 2d 1040 (Dist. Court, ND California 2011). Retrieved from http://cand.uscourts.gov/lhk/applevsamsung
- Boucher, P. M. (2012). Recent developments in US patent law. Physics Today, 65(1), 27–32. DOI: 10.1063/PT.3.1397
- Leaffer, M. A. (2005). Understanding copyright law (4th ed.). Newark, N.J: LexisNexis. OCLC WorldCat Permalink: http://www.worldcat.org/oclc/61520350
- United States. (2011). Leahy-Smith America Invents Act. Washington, D.C: U.S. G.P.O. Available at http://www.gpo.gov/fdsys/pkg/PLAW-112publ29/html/PLAW-112publ29.htm
- United States. (1787). Constitution of the United States, art. I, § 8. Washington, D.C: U.S. G.P.O. Available at http://www.senate.gov/civics/constitution_item/constitution.htm
- United States Patent & Trademark Office (USPTO). (2012, January). “Nonprovisional (Utility) Patent Application Filing Guide,” USPTO, January 2012. Retrieved from http://www.uspto.gov/patents/resources/types/utility.jsp
- University of Washington School of Law. (n.d.). “Copyright v. Patent: A Primer on Copyright and Patent Protection for Software.” Retrieved from http://www.law.washington.edu/lta/swp/law/copyvpatent.html
- World Intellectual Property Organization (WIPO). (n.d.). What kinds of inventions can be protected? Patents: Frequently Asked Questions. Retrieved from http://www.wipo.int/patentscope/en/patents_faq.html#inventions
- Wherry, T. L. (2002). The librarian’s guide to intellectual property in the digital age: Copyrights, patents, and trademarks. Chicago: American Library Association. OCLC WorldCat Permalink: http://www.worldcat.org/oclc/49502685
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