Common Myths about Intellectual Property

Myth: You must apply for and obtain a trademark registration before you have a valid trademark.

Truth: Trademarks are created through use. Registration provides additional benefits (which may be significant).

Myth: A patent allows you to practice the patented invention.

Truth: Not necessarily. A patent allows you to exclude others. Anyone can practice an invention unless they infringe the rights of another's patent. Also, a third party may have a patent on a particular component of your product or invention, thus requiring you to obtain a license to produce the product.

Myth: You own the copyright of your business logo created by XYZ Advertising Company.

Truth: Not necessarily. XYZ is the author. Absent a written agreement to the contrary, XYZ owns the copyright, despite the fact that you commissioned the work.

Myth: Once I obtain a patent, I can exclude others from the marketplace.

Truth: Not necessarily. A patent is a piece of paper providing you with the right to exclude others. It may be very expensive to assert those rights which may include bringing a lawsuit.

Myth: If I obtain a patent on my invention, someone else may make a slight modification to escape a claim of infringement.

Truth: Perhaps. This depends upon the scope and interpretation of the claim language. If the modification does not fall within the claim language, then the competitor may practice that modified invention. Claims are similar to meets and bounds real estate descriptions.

Myth: Patents, copyrights, and trademarks all have set expiration dates.

Truth: False. Patents expire twenty years from the date of filing; copyrights expire seventy years after the author's lifetime or if it's an anonymous or work-for-hire, the earlier of ninety-five years from publication or one hundred twenty years from creation. Trademarks and Trade Secrets may last forever.

Myth: I may use the ® designation on my trademark.

Truth: No. The ® designation may only be used to indicate a federally registered trademark.

Myth: I may use the © designation on my published artwork.

Truth: Yes. Use of the copyright notice is the responsibility of the copyright owner and does not require advance permission from the copyright office.
Recommended use: "© 2000 XYZ Company, all rights reserved."

Myth: A customer list is a trade secret.

Truth: No. The Wisconsin courts have held that something more than basic lists of customers is required to provide trade secret protection of customer lists. Special market information or information providing you with a competitive advantage is needed.

Myth: If I reserve XYZ as my corporate name with the Wisconsin Department of Financial Institutions, I can use the mark XYZ to identify my products or services in the marketplace.

Truth: Not necessarily. The Department of Financial Institutions does not conduct a search of corporate name registrations to determine if the name would infringe a trademark. Resolution of trademark disputes come before the courts.

Myth: I can obtain a state copyright and a state patent.

Truth: No. Copyrights and patents are controlled exclusively by the federal government. The states can and do control trademarks concurrently with the federal government.

Myth: I must use an attorney to help me obtain a patent.

Truth: No. You may apply for a patent all by yourself. There are even some helpful how-to books on the subject which can be found in the libraries. See NOLO Press.

Myth: If I have an invention, the best way to protect it is through the patent laws.

Truth: Not necessarily. To obtain a patent you must disclose the best mode of how to practice the invention. If the invention can be practiced in secret (i.e. secret recipe or manufacturing technique) then it may be best to protect the invention as a trade secret.

Myth: Your employer owns any patentable inventions that you create.

Truth: No. The general rule is that absent contractual arrangements to the contrary, an independent discovery belongs to the employee unless it is within the scope and purpose of the employment. A "shop right" is an exception to the rule in that it allows the employer to use, without payment to the employee, an employee's invention that was made using the employer's time, materials, facilities or equipment.

Tips & Information

The information provided on this site and in any associated links are intended for general guidance only. Because professional legal advice must always be specific to the facts and circumstances of a particular client, the information on this site and any associated links cannot and should not be relied upon as legal advice. ©2000,2004,2008 Anthony J. Bourget. All rights reserved.