Can You Protect An Idea?

Weintraub Tobin
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Is it possible to legally protect an idea?  The answer is: not really.

Intellectual property is intangible personal property.  There are four types of intellectual property that are protected by law:  patents, copyrights, trademarks, and trade secrets.  A separate set of laws governs each one.  Although ideas may be intangible personal property, ideas do not fit in any one of the types of intellectual property.

Patents protect inventions.  A utility patent covers a functional invention that is a machine, article of manufacture, composition of matter (such as a chemical or an isolated gene), or a process (a method of doing something).  A design patent covers an ornamental design for an article of manufacture.  A plant patent covers a new type of plant.  Some things cannot be patented: laws of nature, natural phenomena, and abstract ideas.

In order to get a patent a patent application must be filed in the United States Patent and Trademark Office.  A patent examiner reviews the application.  If the application satisfies certain requirements, a patent is granted.  First, the invention must be novel (new).  Second, the invention must be a nonobvious difference over what has been done before in the technological field.  From the time the application is filed, it may take several years before the applicant is granted a patent or the application is finally rejected.

The owner of a patent has the right to exclude others in the U.S. from making, using, selling, offering to sell, or importing the patented invention.  A patent is good from 20 years from its filing date.  If someone violates the rights of the patent owner, the owner may sue for patent infringement.  Patents are governed by federal law.

Copyrights cover original forms of authorship or expression fixed in a tangible medium.  They include books, film, computer programs or software, songs, plays, dance, photographs, sculpture, and other types of artwork.  Certain types of expression cannot be copyrighted.  For example, works that are not original because there is only way of expressing the work (such as phone books, forms, and instructions) cannot be copyrighted.  In addition, ideas, concepts, and discoveries are not protectable by copyright.

A copyright exists as soon as the work is created and fixed in a tangible medium.  The work can be registered in the U.S. Copyright Office.  The owner of a copyright has the exclusive rights to: reproduce and make copies of the work, distribute copies of the work, publicly perform and display the work, and create derivative works.  In general, a copyright is good for the life of the author plus 70 years.  If someone violates the copyright owner’s rights, the owner may sue for copyright infringement.  Like patents, copyrights are governed by federal law.

Trademarks are words, phrases, symbols, or designs used in commerce to identify the source of goods or services and to distinguish them from those of others.  A trademark (sometimes called a brand) provides the consumer with the knowledge the product or service they are purchasing comes from the source they associate with that mark.  Certain words cannot be trademarked, in particular, marks that are “merely descriptive” (i.e., marks that simply describe the product or service or its characteristics).  Ideas cannot be trademarked.

A person who uses a trademark in commerce has some common law rights.  A mark may also be federally registered in the PTO.  Some states also offer their own trademark registration systems, although federal registration provides the most protection.  In order to federally register a mark, an application must be filed in the PTO.  The application must contain a sample of the mark in use in commerce (unless the application is an “intent to use” application which reserves future rights), identify the goods or services for which the mark is being used, and list the date of first use of the mark in commerce.  The trademark examiner will review the application to see if certain requirements are met, including whether the mark is likely to be confused with other registered marks for the same or similar goods or services.  The registration process may take up to a year or possibly longer before the mark is granted registration or is finally rejected.

A trademark owner has the rights to prevent others from using the same or a similar mark in connection with the sale of the same or similar goods or services if the other mark is likely to confuse consumers as to the source of the goods or services.  If a trademark owner’s rights are violated, the trademark owner may sue for trademark infringement in federal court under the Lanham Act or in state court.  A federal registration for a trademark may be renewed every 10 years if the mark is in continuous use.

The fourth type of intellectual property is a trade secret.  Trade secrets are different from the other three types of intellectual property in that there is no federal registration system and the owner does not obtain any “monopoly” rights.  A trade secret is information that has economic value from being kept secret and that is the subject of reasonable efforts to keep it secret.  The owner of a trade secret may sue anyone who misappropriates (wrongfully acquires, discloses, or uses) the trade secret.

Trade secrets are governed by state law, although there are some federal statutes that also protect trade secrets.  Trade secret protection lasts as long as the information is kept secret.

Thus, none of the four areas of intellectual property law directly protects an idea.  While it may be possible to further develop an idea to make it into a patentable invention or to use the idea to create a copyrightable expression, trademark, or a valuable trade secret, the pure idea itself is not protected by these areas of law.

So, is there anything one can do to protect an idea?  If one wants to disclose an idea to someone else, the best choice is to enter into a nondisclosure agreement with the party to whom the idea will be disclosed.  A nondisclosure agreement prevents the receiving party from disclosing or using the idea without the discloser’s consent.  Of course, a nondisclosure agreement is only as good as the receiving party can be trusted.  If the receiving party breaches the nondisclosure agreement by disclosing the idea, the discloser has remedies for the breach, but cannot regain the idea’s secrecy.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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