Vail Daily column: Part 1 on intellectual property |

Vail Daily column: Part 1 on intellectual property

Most folks likely have at least some sense as to what patents, trademarks, copyrights and trade secrets are.

“Ah, let’s see … they’re … well, they’ve got something to do with … OK, I give up.”

If they can’t exactly define what they are, at least folks figure they have something to do with “intellectual property.”

“Yeah. That’s it! Exactly!”

But what, then, constitutes an intellectual property? Logically, that should be our starting point.

Broadly speaking, “intellectual property” may be defined as any product of the human intellect that the law protects from unauthorized use by others. Hmmm. Let’s delve into this a little further. But before we do, note a couple of key words here. First is the word “property.” “Property” is something susceptible of ownership. A simple definition of property is “that which someone owns.” Second is the word “intellectual” which, for our purposes, may be defined as a product of one’s thought, design or intellect. It is something someone thought up.

The ownership of intellectual property inherently creates a limited monopoly in the protected property. Intellectual property is traditionally comprised of four categories: patent, copyright, trademark and trade secrets.

See how easy this all is?

What’s intellectual property?

The law of intellectual property is in many ways analogous to the law of “tangible” property (that is, property you can hold and touch). Both consist of certain rights conferred upon the property owner. But the law of intellectual property is different, too. Where the right of exclusive possession is the very essence protecting one’s interest in “real” (land at its attachment; thus the term “real estate”) and personal property (“all other property except intellectual property”), the same cannot be said of intellectual property. The law of intellectual property is commonly understood as providing an incentive to authors and inventors to produce works for the benefit of the public by regulating (and limiting) the public’s use of such works in order to ensure that authors and inventors are compensated for their efforts.

Congress derives its power to regulate patents and copyrights from the “intellectual property clause” of the Constitution (Article I, Section 8). Congress’ power to regulate trademarks is constitutionally grounded in the Commerce Clause. The U.S. Patent and Trademark Office is responsible for issuing and monitoring federally registered patents and trademarks. Although patents are exclusively governed by federal law, trademarks may also be regulated by state law. Copyrights are exclusively regulated by federal law and must be registered with the U.S. Copyright Office to be enforceable. Trade secrets are primarily regulated at the state level and are traditionally subject to the laws of unfair competition.

With this as background, let’s define the various “categories” of intellectual enterprise.

Patents apply to inventions.

A patent grants the patent holder the exclusive right to exclude others from making, using, importing and selling the patented innovation for a limited period of time. The U.S. Patent Act was enacted by Congress under its Constitutional grant of authority to secure for limited times to inventors the exclusive right to their discoveries. No doubt the computer I am writing this on is patented.

The deal with patents

Although beyond the scope of this article, there are five primary requirements for patentability:

Patentable subject matter





The “patentable subject matter” requirement addresses the issue of which types of inventions will be considered for patent protection.

The categories for patentable subject matter are broadly defined as any process, machine, manufacture, or composition of matter, or improvement thereof. In the 1980 case of Diamond v. Chakrabarty, the Supreme Court found that Congress intended patentable subject matter to “include anything under the sun that is made by man.” However, the court also stated that this broad definition has limits and does not embrace every discovery. According to the court, the laws of nature, physical phenomena and abstract ideas are not patentable. The relevant distinction between patentable and un-patentable subject matter is between products of nature, living or not, and human-made inventions.

The second “leg” of patentability is “utility.” In short, the thing sought to be patented must be “useful.” According to USPTO guidelines, the utility asserted in the application must be “credible, specific and substantial.”

“Novelty” is the third requirement. The thing to be patented must be something new. The invention was not known or used by others in this country, or patented or described in a printed publication in this or another country, prior to invention by the patent applicant. What is being presented for protection is a whole new thing or a whole new way of doing things.

The definition of “non-obviousness” is, well … not obvious. What it means, though, is that the subject matter sought to be patented would not have been obvious to a person having ordinary skill in the art it effects at the time the invention was made. Going a little further, in determining non-obviousness, it must be considered that “the improvement is more than the predictable use of prior art elements according to their established functions.”

Last, we come to “enablement,” which means, simply, an explanation of how the new product is put together and works.

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains … to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

If all these elements are met, then voila, upon proper application, a patent may be yours to claim.

In the next part, copyrights, trademarks and trade secrets. Oh my!

Rohn K. Robbins is an attorney licensed before the bars of Colorado and California who practices of counsel in the Vail Valley with the law firm of Stevens, Littman, Biddison, Tharp & Weinberg LLC. His practice areas include business and commercial transactions, real estate and development, family law, custody, and divorce and civil litigation. He may be reached at 970-926-4461 and

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