by Howard N. Aronson, managing partner, Lackenbach Siegel LLP
As with most philosophical and theological questions, what Saint Thomas Aquinas could have answered in a few sentences, 21st-century humanity ponders endlessly. It’s lucky that, as reported in the New York Post, Toy Story director Lee Unkrich recently ended the debate about the survival of toys — at least regarding the film’s characters — when he said, “’They live as long as they exist. But if they were to be utterly destroyed? Say, in an incinerator? Game over.’”
But what about intellectual property (IP) — specifically, your IP? Because, like a toy, IP is not a living thing. It cannot die, but it can expire, be canceled, be invalidated, or end in some other fashion.
Some IP can — theoretically — exist indefinitely. Other forms of IP have limited duration. Those differences must be understood and considered when protecting your valuable IP.
In the U.S., and by international agreement in most countries, the term of a utility patent (a useful article, method, or other invention) is 20 years from the filing date of the application. Before expiration of the 20-year term, a patent can expire by renouncement or because of non-payment of annuity fees.
After 20 years, the patent expires, and the invention may be used by everyone — most notably, your competitor. In the U.S., if the Patent Office stalls the prosecution longer than average, the life of the patent extends by the number of days beyond the usual. Otherwise, the 20-year term applies, so expert preparation and filing can help to maximize the duration of a utility patent.
“Like a toy, IP is not a living thing. It cannot die, but it can expire, be canceled, be invalidated, or end in some other fashion.”
Design patents — covering the ornamental appearance of products, as opposed to the utilitarian aspects — endure for 15 years from the date of grant, not the application date. (Patents issued from design applications filed before May 13, 2015, have a 14-year term.) Design patents can cover the unique ornamental appearance of a toy that isn’t a new invention, such as the pieces of a board game or the appearance of a figure or toy vehicle.
Copyright protection, which can cover the non-utilitarian aspects of toys, exists from the time the work is created in fixed form, and endures for the life of the author plus 70 years. For joint authorship, the term ends 70 years after the last surviving author’s death. For anonymous and pseudonymous works, the duration of copyright is 95 years from first publication or 120 years from creation, whichever is shorter. The term of a work made for hire is 95 years from the date of publication or 120 years from the date of creation, whichever expires first.
There are different rules, including requirements for copyright renewal, for works created before Jan. 1, 1978.
TRADEMARKS AND TRADE DRESS
Trademarks and trade dress — the “look and feel” of a product — can theoretically last forever because the right in the U.S. is based on use. Once the trademark is registered, the owner must prove continued use in commerce between the fifth and sixth years following registration, between the ninth and 10th years after registration, and every 10 years thereafter. Thus, the trademark can remain active indefinitely. The trademark for Monopoly, for example, has been renewed for each ensuing term since 1935.
Like trademarks, trade secrets can endure indefinitely. There are no registration requirements, so the trade secret is not disclosed as long as the owner takes certain steps under various, but similar, U.S. state laws — with additional federal protection under the 2016 Defend Trade Secrets Act, an amendment to the Economic Espionage Act. To maintain its trade secret, a company must take “reasonable measures” to protect valuable, commercially beneficial information. The Coca-Cola formula and Thomas’ English Muffin recipe are trade secrets, which would have been in the public domain decades ago if the owners had chosen patent protection rather than trade secret protection — so the choice is important. Except for processes of manufacture, trade secret protection is not usually an option for toys.
Your IP counsel can help you decide which forms of IP protection fit your company’s needs, and how long that protection will last.
This article was originally published in the October 2020 edition of the Toy Book. Click here to read the full issue!