Skip to content
Peter Toren | Experienced Intellectual Property Lawyer

Learn More About Intellectual Property Law

The general public has become more aware of intellectual property.

This does not mean, however, that most people understand that intellectual property is not a single concept, but is composed of four different and distinct areas of the law: copyrights, trademarks, trade secrets, and patents. While these areas have some things in common, they are governed by a unique body of rules and requirements and are generally designed to protect different sorts of intellectual creations. For example, copyright law protect works of authorship whereas patents protect inventions. In addition, while there are federal criminal statutes that protect copyrights, trademarks and trade secrets, there is no statute that criminalizes patent infringement.


Patents are the law of inventions. In general, the subject matter of patents may include products, processes, compositions of matter and improvements. Excluded from patent protection are laws of nature, natural phenomena, and abstract ideas.


Copyright protects almost all works of creative expression so long as they have some modicum of originality and are fixed in a tangible medium of expression.


If copyright is the law of authorship and patent is the law of inventions, trademark is the law of consumer marketing and advertising. A trademark is any symbol, word, name, device or any combination of these used to identify products, services, or their producers in the marketplace.


Trade secret protection is very broad. Virtually any sort of information may qualify as a trade secret so long as it is used in a business, has some independent economic value and is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

If copyright is the law of authorship and patent is the law of inventions, trademark is the law of consumer marketing and advertising.  A trademark is any symbol, work, name, device or any combination of these used to identify products, services, or their producers in the marketplace.  Trademarks are not limited to words or written symbols but may include sounds, fragrances, the distinctive features of items and the trade dress of both the packaging of a product and the non-functional features.  A non-traditional example of a trademark is the  distinctive deep rumble of a Harley Davidson motorcycle.

Trademarks plan an important role in a modern consumer drive society.  For the merchant or manufacturer, a trademark serves to identify and distinguish the goods or services of that person or company.  This allow manufacturers to create “brand quality” and ensure that customers will continue to purchase their products.  In turn, consumers rely on trademarks to distinguish among competing products and to select those which are of high quality.  “Without trademarks and he identifying functions they serve, competition in product quality could not exist.”

While there are important advantages to be gained by registering a mark with the United States Patent and Trademark Office, unregistered marks may be protected under both federal and state law.  In particular, the protection of unregistered marks is limited to the geographical area in which the mark is actually used, whereas, federal registration provides the owner with the exclusive right to use that mark in the United States.

Unlike copyrights and trademarks, Congress’s power to regulate trademarks is not derived from a specific constitution grant.  The Supreme Court has ruled that the patent and copyright clause of the Constitution does not apply to trademarks.  The authority for trademark protection is based on the “commerce clause.”  The Lanham Act for a system of registering and administering trademarks with the Patent and Trademark Office.  In addition to the nationwide protection of trademarks, federal registration also offers a number of other important advantages.  First, a registrant has access to the federal courts without pleading any required amount in controversy.  Second evidence of registration is prima facie evidence of the validity of the registered mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark.  Third, registration may be used as a jurisdictional prerequisite to federal criminal prosecution and is an essential element in a prosecution for trafficking in counterfeit goods.

In order to obtain a federal trademark registration from the Patent and Trademark Office, the applicant must establish (1) distinctiveness of the mark, and (2) use or intent to use the mark in interstate or foreign commerce.  Marks may be inherently distinctive or non-inherently distinctive.  Within these two basic categories trademarks are grouped in descending order roughly reflecting their eligibility to trademark status and the degree of protection afforded, as follows: (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; and (5) generic.  Fanciful, arbitrary, and suggestive terms are considered inherently distinctive and are entitled to trademark protection without a showing of secondary meaning.  In contrast, descriptive terms are not inherently distinctive and before being accorded trademark protection the user must establish secondary meaning.  The prime element of secondary meaning is a mental association in buyers’ minds between the alleged mark and a single source of the product.  Finally, generic terms can never be trademarks

Copyright law, in general, protects “original works of authorship,” which is broadly defined by statute to include “literary works, musical works, dramatic works, pantomimes, pictorial graphic, sculptural works, motion pictures, sound recordings and architectural works.”  In other words, copyright law protects almost all works of creative expression as long as they have some modicum of originality and are “fixed in a tangible medium of expression.  Copyright law protects, however, only a work’s expression, not its underlying ideas.  This distinction is not always easy to make and courts having expended a great deal of effort in fashioning a bright line test to differentiate an expression from the underlying idea.  At its most basic level, it would permit, for example, a person to use all of the ideas and information contained in a book, such as in Intellectual Property & Computer Crimes, so long as that person did not duplicate the manner in which these ideas are expressed or organized.  Regardless of how much effort or time it took to compile the information, it can be freely used without violation of copyright.   In another example, facts about the September 11, 2001, attacks on the United States are not protected by copyright.

The fundamental purpose underlying U.S. copyright law is to promote the creation and dissemination of knowledge.  The idea is that authors and artists would not be willing to devote their time and effort  to developing new works if others can simply copy their works for free and the authors and artists are not compensated for their efforts.

One way that copyright encourages the creation of new works is to allow a new generation of authors and artists to build on the works that have come before them, either by using the unprotectable ideas conveyed in existing works or by using works that have fallen into the public domain because, for example, the term of copyright has expired.  The tension or balance between rewarding artists for their creations and promoting innovations by limiting copyright protection came to a head in Metro-Goldwyn Studios, Inc. v. Grokster 545 U.S. 913 (2005), in which the Supreme Court held, in general, that inducement liability for copyright infringement goes beyond encouraging a particular consumer to infringe a copyright, and the distribution of a product intended and encouraged the product to be used to infringe.  Thus, a distributor of peer-to-peer software that allows a user to swap copyrighted material may be liable for copyright infringement.

Courts have struggled to determine the scope of copyright and patent protection as applied to computer software.  Since both protections are available, computer programmers routinely turn to both copyright and patent for protection.  For example, a computer program can by copyrighted, but this may not prevent the copying of the functional aspects of the program to be incorporated into a new program.  The functional aspects of computer software can be patented so long as they meet the requirements for patent protection including novelty, non-obviousness and utility.

There is no longer any steps that an author or artist must undertake to obtain copyright protection.  Under United States law, copyright protection attaches as soon as the work is fixed in a tangible medium of expression.  However, many routinely seek to register a work with the United States Copyright Office because there are a number of advantages.  First, a registration certificate generally constitutes prima facie evidence of the validity of the copyright and the claim of the registrant to be the owner of the copyright.  Second, prompt registration is necessary to qualify for an  award of attorney fees or statutory damages.  Third, a registration certificate is a necessary precondition to bring an infringement action.

Copyright law grants the owner of a copyright the exclusive right to reproduce, distribute, and publicly display or perform the copyrighted work, as well as to prepare derivative works based upon the original copyrighted work.  The concept of civil  copyright infringement is defined by reference to violating one of these exclusive rights.  Unlike patent law, copyright law protects against only the copying of works, and not to making, using or selling works.  Hence, copyright law does not prevent others who independently develop a work from competing with the author.

These exclusive rights, however, are subject to a number of important limitations.  First, the Constitution authorizes Congress to enact legislation “securing for limited times to Authors and Inventors the exclusive Right to their Writings and Discoveries.”  Thus, Congress is explicitly prohibited from creating monopolies in perpetuity over intellectual property in general, and copyright, in particular.

Second, under the first sale doctrine, the copyright owner has no right to control the distribution of a work after the original copy has been sold.  In other words, a sale of a “lawfully made” copy terminates the copyright holder’s authority to interfere with or control subsequent sales or distributions of that particular copy.

Third, “fair use” allows the public to use not only facts and ideas contained in a copyrighted work but also the expression itself for purposes, such as teaching, scholarship, or research.

In addition to these general exceptions, there are also a number of very specific and narrow ones.  For example, broadcasting organizations licensed to broadcast a musical recording are allowed to make a copy of the work to facilitate the broadcast.  Libraries may make photocopies provided they comply with certain conditions and limitations.  If cable television operators pay a statutory license fee, they can rebroadcast without the permission of the owners of copyrights of the work being broadcast.  A restaurant under a certain size may play radio or television broadcasts, but may not play prerecorded music.

In order to be eligible for patent protection in the United States, an invention must fall within the class of patentable subject matter  In addition, the invention must also meet several requirements.  First, it must be useful.   (35 U.S.C section 101.)  This requirement is generally not difficult for the inventor to satisfy as long as it can meet one of the invention’s stated objective.  It does not have to be embodied in a commercial product although success in the marketplace is seen as establishing utility.

Second, the resulting product or process must be novel.  This means that the invention as compared to what has gone before must be new.  For the purposes of patent law, the universe of “what has gone before” is known as “prior art” and includes prior inventions, as well as patents, patent applications and publications that disclose prior inventions.  The date of invention is complete when it is both conceived and reduced to practice.  If the claimed invention is identical to subject matter disclosed or embodied in the prior art reference, the invention or a particular claim (the portion of the patent defining the invention) is “anticipated” and invalid for lack of novelty.

Third, the invention must be non-obvious.  Unlike novelty, obviousness does not require that the claimed invention be identical to the prior art, rather the test for obviousness focuses on the differences between the claim and the prior art, and asks whether a “a person of ordinary skill in the art” at the time the invention was made might have come up with the invention.  Further, while anticipation requires that all the elements of the claimed invention be found in a single prior art reference, obviousness can be based on the combination of more than one reference.

At present a patent is still awarded in the United States to the first to invent, not the first to file a claim as is true in almost all other countries.  A major exception to this rule allows a later inventor a patent when the first inventor has “suppressed” or concealed the invention.

In order to obtain a patent the inventor must file an application with the United States Patent and Trademark Office for “examination.”  The application must include a specification describing the invention in detail, drawings and claims.  The specification must enable the practice of the invention and must disclose the inventor’s best mode for practicing the invention and the claims must  be definite.  The standards for granting a patent are quite rigorous and many applications are “rejected,” or are approved only after significant narrowing of the patent claims.  The term of a patent is twenty years from the date the patent application was filed.

While the patent application process is ex parte and generally secret, upon issuance of the patent, the Patent Office publishes the invention so that the public may learn about the invention and can improve on it.    The patent owner has the right to exclude others from making, using, offering to sell, selling or importing the patented invention in the United States during the period of enforceability of the patent.  The patent owner gains no affirmative right — a patentee may infringe another patent by practicing the claimed invention.  Remedies for infringement include an injunction against the infringer and damages for past infringement including the possibility of treble damages for willful infringement.

There are no federal criminal laws that cover patent infringement, perhaps reflecting the difficulty of proving that a person infringed a patent with the requisite mens rea for a criminal violation, given the possibility of independent creation and the arcane nature of the patent approval process conducted by the Patent Office.

Finally, even though it may take four, five or even six years for a patent to issue, a patent applicant only has very limited remedies against infringement during the application process.

The subject matter of trade secret protection is very broad.  Virtually any sort of information may qualify as a trade secret so long as it is used in a business, has some independent economic value, and is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.  Trade secrets are not limited to scientific or technological information and may include business information, such as customer lists, financial projections and marketing plans.  Trade secrets also may include “negative” know-how, i.e., information related to processes or inventions that do not work.  Thus, as compared to patents, the potential scope of protection for trade secrets is significantly broader than for patents.  In addition, even a small improvement to a known process can qualify as a trade secret which is a much lower standard than to qualify for patent protection.  Trade secrets have no definite term of protection.  As long as the information is secret they are protected.  However, once a trade secret is disclosed they are no longer legally protected.  Easy come easy go.

Trade secrets may be misappropriated generally under two distinct circumstances.  First, a trade secret may be misappropriated when a person uses theft or other improper means such as theft or bribery of employees to acquire the secret.  Second, a trade secret may be misappropriated where someone uses or discloses a trade secret in violation of a confidential relationship.  No express promise is necessary, an understanding of secrecy may be implied from the circumstances.  The relationship between an employer and employee is normally considered confidential.

This means that under trade secret law that so long as the information is not acquired through improper means or in violation of a confidential relationship the information may be free.  Trade secret law does not protect against independent discovery or invention of the same information.  Nor does it prevent a competitor from reverse engineering a product and from using the trade secrets uncovered to manufacture and sell an identical product.  Patent law, in contrast, does not distinguish between information acquired legitimately or illegitimately.  A product that has been designed as a result of reverse engineering may still infringe a patent.

Remedies for trade secret misappropriation depend greatly on whether the act of misappropriation has been completed.  To the extent that the defendant has not actually used or disclosed the trade secret, a court may issue an injunction prohibiting any future use or disclosure of the trade secret.  Thus, for example, where an individual has copies the trade secrets of his former employer and left to join a competitor, the former employer may seek injunctive relief against the disclosure and use of the trade secrets.  While at least one of misappropriation has occurred through the unauthorized taking of the trade secrets, the court may prevent serious damage to the owner of the trade secrets by issuing an injunction barring the individual from disclosing the trade secrets and the new employer from using the trade secrets.

Similarly where the trade secrets were taken in some tangible form, such as documents or computer disks, the trade secret owner may seek their return through the established remedy of replevin.

In cases in which the trade secrets have been publicly disclosed or already used by the defendant, monetary damages are generally available.  A trade secret owner may seek recovery for loss caused by the misappropriation, together with any unjust benefit gained by the defendant which is not accounted for in determining the loss to the trade secret owner.

Prior to the enactment of the Economic Espionage Act (EEA) in 1996, there was only a single, very limited federal statute that directly prohibited the misappropriation of trade secrets.  Federal prosecutors were only moderately successful in prosecuting thefts of trade secrets under more general federal criminal laws such as the Interstate Transportation of Stolen Property Act and the Wire Fraud and Mail Fraud Statutes.  The inherent limitations of these laws coupled with the lack of state criminal trade secret laws meant that individuals who were involved in the theft of trade secrets worth potentially millions of dollars could not be prosecuted.

In general, the EEA criminalizes the misappropriation of trade secrets which are broadly defined to include almost all proprietary information, however stored or maintained so long as “the owner has taken reasonable measures to keep such information secret and the information derives independent economic value from not being generally known to, and not being readily ascertainable through proper means by the public.  The broad definition of trade secrets means that almost anything may qualify as a trade secret, including, for example, genetic material, as long as the owner has taken reasonable measures to keep it secret.