Intellectual Property Primer
Intellectual property (IP) is generally characterized as patents, copyright, trademark, know-how, trade secret, or mask works. In some cases the categories of intellectual property are mutually exclusive. For example, it is not possible to maintain a trade secret and also obtain a patent on the same subject matter because by definition, a patent is a public disclosure (i.e., it’s no longer a secret). However it is possible to both copyright and patent various aspects of the same intellectual advancement.
Types of Intellectual Property
When you think of IP protection, the first thing that comes to mind might be patents. Patents offer inventors the exclusive right, for a set period of time, to make, use, or sell a new idea or process that is new, useful, and non-obvious.
If patents protect ideas, copyrights protect the way in which ideas are expressed. Types of work that might be copyrighted include written works, art, architectural drawings, music, programming code, or algorithms. With a few exceptions, copyrights allow the owner of protected work to control its reproduction and distribution.
Trademark and service marks
Trademarks and Service Marks are branding vehicles. A Trademark can be a word, a name, a symbol, a sound, a color or a combination of two or more of the foregoing that are associated with a good or goods (e.g. a product or products). A Service Mark can be a word, a name, a symbol, a sound, a color, or a combination of the foregoing that are associated with a service.
In the United States, a Trademark and Service Mark is generally protected under both state and federal law. Unlike patents and copyrights, a trademark is not exclusively subject to federal jurisdiction. Indeed trademarks are territory-based. One acquires a trademark or service mark right simply by using the Trademark or Service Mark in association with a good or service (as appropriate) within a given territory. No registration is needed to acquire this right. However, like copyright enforcement, often a registration is needed to enforce a Trademark or Service Mark.
Alternatively, filing an application for registration of a Trademark or Service Mark with the United States Patent and Trademark Office (“USPTO”) will reserve the Trademark or Service Mark within the entire United States (assuming you are the first to file for the registration and the Trademark or Service Mark otherwise qualifies for registration). Because the United States government solely regulates commerce between states, it is a prerequisite of filing with the USPTO that the Trademark or Service Mark owner either does, or intends to, use the mark within interstate commerce.
The Trademark or Service Mark owner, through time, develops a connection in the mind of its customers about the quality and characteristics of its products and/or services. Perhaps somewhat surprisingly, the laws surrounding Trademarks and Service Marks are intended to protect consumers (not the owner) based upon public policy concerns from confusion caused by those who would seek to copy the Trademark or Service Mark of another. Generally the test of infringement is whether or not the other parties Trademark or Service Mark is “confusingly similar” to the original Trademark or Service Mark.
Trademarks and Service Marks, unlike patents, can be retained indefinitely. The caveat is that the Trademark or Service Mark owner must continue to use the Trademark or Service Mark and periodically pay registration fees associated with maintaining the Trademark or Service Mark with any local, state or federal registration agency.
At Boston University, the Office of General Counsel handles the registration of all University owned trademarks.
The technical knowledge and skill required to perform a task is referred to as “know-how”. Hence, “know-how” is distinct from patents, copyright, and trademarks. Know-how can, in certain circumstances, be a trade secret if it is maintained as a secret.
Know-how generally resides with certain individuals and therefore can sometimes be difficult to transfer to third parties. In some cases, the individual does not even realize that he/she possesses certain “know-how” (i.e. unique knowledge or skill) that is essential for the successful practice of a process, an invention or a discovery. In some cases, the “know-how” can be identified and/or reduced to writing. In any case, the value of the “know-how” lies in its unique character that is not easily discovered or understood and because the “know-how” is not generally known.
Because “know-how” generally resides in the individuals’ (often our faculty’s) mind and skillset, our office will generally try to avoid licensing “know-how” and if licensed, licensing of “know-how” is typically done on a non-exclusive basis. Exclusive licensing of “know-how” generally conflicts with the University’s mission of broadly disseminating knowledge and skill for the benefit of mankind as well as negatively impacts our faculty’s ability to conduct future research that might require use of said “know-how”.
“Know-how” that is not actively maintained as a trade secret is generally protected by contract and enforced in accordance with the terms of said contract. Trade secrets are discussed below.
A trade secret is any non-public information that is treated as a secret and that provides a person or entity with a competitive advantage. Trade secrets are generally not held by Universities given our mission to freely publish and disseminate knowledge and skill for the benefit of mankind. Trade Secrets also generally conflict with federal funding agencies mandate to broadly disseminate the results, data, and information that result from the work performed using the federal funds. Hence, the University will rarely hold or license a “trade secret”.
To be a “trade secret” the possessor of the secret must take reasonable steps to maintain the secret. A “trade secret” can be maintained for as long as it remains a secret. A “trade secret” is lost when the secret becomes publicly known (i.e. it is no longer a secret). If properly maintained as a secret, courts will enforce the rights of the “trade secret” owner, including by court order that prohibits those who improperly possess the secret (for example those who steal it despite the reasonable protective steps taken by the “trade secret” owner) from using or disclosing the “trade secret”.
Notwithstanding the foregoing, the following describe some situations where a “trade secret” can be compatible with University principles and federal funding requirements.
Biological Materials as a Trade Secret
Although in accordance with federal funding guidelines there is an obligation to make novel biological materials freely available to others so that they can replicate your work, some aspects can still be kept as a trade secret. For example, if you’ve created a useful antibody, you don’t have to give out the hybridoma; you only have to make the antibody available to the public. The hybridoma itself can be licensed to one or more companies.
Protecting Software as a Trade Secret
As a University, it is possible to only make available the compiled version of software to collaborators and not the source code. The source code can be a form of a trade secret.
It is also possible to patent certain aspects of software because the source code, object code, procedures, and documentation can be associated with the operation of the computer, its performance, or the production of an output by the computer.
However, most often, software (primarily the source code) is protected via copyright as an original work of authorship that has been reduced to a fixed form.
Under the Semiconductor Chip Protection Act (“SCPA”), the owner of certain kinds of original mask works (as defined by the SCPA) has exclusive rights in that work. Mask works include the predetermined, three-dimensional images or patterns formed on or in the layers of metallic, insulating, or semiconductor material and fixed in a semiconductor chip. The owner’s exclusive rights include the right to reproduce the mask work, to import or distribute a semiconductor chip in which the mask work is embodied, and to authorize others to do any of these acts.
The identity of the owner of a mask work depends on the particular facts and circumstances surrounding creation of the work. The owner may be
- the person who created the mask work,
- an employer, where an employee has created the mask work within the scope of a his/her employment, or
- a party to whom all the rights of such person or employer are transferred in accordance with statutory requirements.
Protection for a mask work commences on the earlier of: (1) the date the mask work is registered with the Copyright Office as required by the SCPA, or (2) the date the mask work is first commercially exploited anywhere in the world. Protection of a mask work lasts for 10 years (terminating at the end of the calendar year in which it would otherwise expire). To secure protection of a mask work for the entire 10-year term, owners must apply to register their mask works with the Copyright Office within two years of the date on which the mask work is first commercially exploited. Failure to register within the proscribed period will terminate protection of the mask work under the SCPA. Although administered by the US Copyright Office, protection for mask works is not copyright protection.
As mentioned above, protection under the SCPA extends to the three-dimensional images or patterns formed on or in the layers of metallic, insulating or semiconductor material and fixed in a semiconductor chip. Protection under the SCPA does not extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery associated with a mask work. Although not protected by the SCPA, these discoveries may be the subject of patent protection.
Please contact Technology Development if you believe there may be a commercial opportunity for a mask work in which Boston University has an interest.
For more information on mask works, you can visit the US Copyright Office website, which includes Circular 100, titled “Federal Statutory Protection for Mask Works.”