Intellectual Property in the United States

This primer covers US-specific IP processes, registration requirements, and examination standards. For universal IP concepts (what each type protects, ownership principles, licensing basics), see IP Primer.

US Patent Process

The United States uses a first-inventor-to-file system (changed from first-to-invent by the America Invents Act in 2013). The first inventor to file a patent application typically has priority, though exceptions exist for prior public disclosures, prior inventors who kept inventions secret, and derivation proceedings.

USPTO examination: The US Patent and Trademark Office (USPTO) examines non-provisional utility applications. Examiners search prior art (patents, publications, public use, sales) and issue office actions citing prior art and raising objections. Applicants respond by amending claims, arguing against rejections, or both. This prosecution process continues until the application issues as a patent, is abandoned, or is finally rejected.

Provisional applications: Provide a lower-cost way to establish an earlier filing date. Must include written description and drawings (if needed), cover sheet or Application Data Sheet, and filing fee. Claims are not required. Provisional applications automatically abandon 12 months after filing. To obtain a patent, must file a non-provisional application within 12 months claiming priority to the provisional, with claims supported by the provisional's disclosure.

Non-provisional applications: Require specification (written description plus claims), abstract, drawings (if needed), oath or declaration, and filing/search/examination fees. Claims must particularly point out and distinctly claim the invention. At least one claim is required. Formatting requirements include margins (top ≥ 2 cm, left ≥ 2.5 cm, right and bottom ≥ 2 cm), standard font (preferably 12-point), line spacing (1.5 or double), page numbering. As of January 17, 2024, DOCX format submission is required for specification, claims, and abstract or an extra fee applies.

Patent term: Utility patents last 20 years from the earliest non-provisional filing date, subject to maintenance fees at 3.5, 7.5, and 11.5 years. Design patents last 15 years from grant if filed on or after May 13, 2015 (no maintenance fees). Patent terms may be adjusted for USPTO delays (Patent Term Adjustment) or extended for regulatory delays in certain industries (Patent Term Extension).

Claims practice: Independent claims stand alone; dependent claims refer back to and further limit other claims. Claims define the enforceable scope—broad claims provide more protection but face higher scrutiny. Multiple dependent claims (referring to more than one claim in the alternative) are allowed under specific rules. Claims must be novel (not anticipated by prior art) and non-obvious (not an obvious combination of existing knowledge to someone skilled in the art).

Entity status and fees: Small entities pay approximately 60% of standard fees; micro-entities pay approximately 80% off. To qualify as small entity: organization has fewer than 500 employees (or individual inventor/assignee). To qualify as micro-entity: meets small entity requirements plus income limitations, hasn't been named inventor on more than 4 prior applications, and hasn't assigned applications to entities exceeding income thresholds.

Post-grant procedures: After grant, patents can be challenged through inter partes review (IPR), post-grant review (PGR), or ex parte reexamination. These proceedings occur before the Patent Trial and Appeal Board (PTAB) rather than federal courts and have different standards and procedures.

US Trademark Process

The US follows first-use priority—the first party to use a mark in commerce has priority over later users, regardless of registration. However, registration provides significant benefits including nationwide constructive notice, presumption of validity, exclusive rights (subject to prior users in specific geographic areas), and eligibility for incontestability after five years.

Use in commerce: For goods, use means placing the mark on goods, packaging, or associated displays plus actual sale or transport in interstate or foreign commerce. For services, use means use in advertising or rendering services in interstate or foreign commerce. "Interstate commerce" includes commerce between states, territories, or foreign nations—even minimal interstate activity typically qualifies.

Filing bases: Section 1(a) (Actual Use) requires use in commerce at time of filing and provision of first-use dates and specimens showing use. Section 1(b) (Intent-to-Use) requires bona fide intention to use in commerce later; must file Statement of Use before registration issues. The filing date provides constructive use priority once registration issues, but earlier actual users still prevail. Section 44(d) claims priority based on earlier foreign filing within six months but still requires a US registration basis. Section 44(e) relies on foreign registration in country of origin as registration basis without US use. Section 66(a) covers international registrations under Madrid Protocol.

USPTO examination: Examiners search prior marks and assess likelihood of confusion with registered or pending marks. Examiners evaluate distinctiveness, descriptiveness, genericness, and other bars to registration. Office actions cite issues; applicants respond with arguments, amendments, or evidence. After publication, third parties can oppose registration. Applications proceed through examination, publication, and opposition periods before registration issues.

Classes and fees: Uses International Classification system—Classes 1-34 for goods, Classes 35-45 for services. Each class requires separate fees. Goods/services descriptions must fit acceptable format per Trademark Manual of Examining Procedure (TMEP) and USPTO ID manual. Applications can cover multiple classes; fees apply per class.

Registration and maintenance: Registration issues after successful examination, publication, and opposition periods (if applicable). Registrations require maintenance filings: Section 8 affidavit of use between 5th and 6th years after registration, Section 8 renewal and Section 15 affidavit of incontestability between 9th and 10th years, then Section 8 renewal every 10 years thereafter. Failure to file maintenance filings results in cancellation.

Incontestability: After five years of continuous use following registration, registrants can file a Section 15 affidavit of incontestability. Incontestability provides immunity from cancellation on certain grounds (descriptiveness, confusion with prior marks used before registration) and strengthens enforcement rights.

Concurrent use: The USPTO permits concurrent use registrations when two or more parties use the same mark in geographically remote areas with no likelihood of confusion. Requires proving good-faith adoption, prior use in specific geographic areas, and no actual confusion.

Trademark Trial and Appeal Board (TTAB): Handles oppositions, cancellations, and appeals from examiner refusals. TTAB proceedings are administrative rather than judicial but can be appealed to federal courts.

US Copyright Process

Copyright arises automatically upon creation and fixation—no registration required. However, US copyright registration provides significant benefits including eligibility for statutory damages (up to $150,000 per work for willful infringement), attorney's fees in infringement actions, and presumptive evidence of ownership and validity. Registration is required before filing infringement lawsuits for US works.

Registration process: File application with US Copyright Office including completed application form, filing fee, and deposit copies of the work. Applications can be filed online or by mail. Registration typically processes within several months, though processing times vary. Registration can be filed before publication (pre-publication registration) or after publication (regular registration).

Registration benefits: For works registered before infringement begins or within three months of first publication, copyright owners can seek statutory damages ($750-$30,000 per work, up to $150,000 for willful infringement) and attorney's fees. These remedies are unavailable for unregistered works or works registered after infringement. Statutory damages provide predictable remedies without proving actual damages.

Work-for-hire specifics: Under US Copyright Act, works created by employees within the scope of employment are automatically "works made for hire"—employer owns copyright without assignment. For independent contractors, work qualifies as work-for-hire only if it falls into one of nine specific statutory categories (contributions to collective works, compilations, instructional texts, tests, answer materials, atlases, audiovisual works, sound recordings, supplementary works) AND the written agreement explicitly states it's "work made for hire." Otherwise, contractors own copyright unless they assign rights. Best practice: include both work-for-hire clauses (where applicable) and fallback present-tense assignment language ("hereby assigns").

State law variations: Some states limit invention assignment clauses in employment contracts. California, Washington, and Minnesota have statutes protecting employee rights to inventions developed entirely on employee's own time, without using employer resources, and unrelated to employer's business. These statutes apply to patentable inventions, not copyrights, but similar principles may apply depending on state law.

Duration: For works created on or after January 1, 1978, copyright lasts for author's life plus 70 years (for individual authors) or 95 years from publication or 120 years from creation (for works made for hire, anonymous, or pseudonymous works). Duration for earlier works depends on publication status, renewal requirements, and other factors under prior law.

US Trade Secret Law

US trade secret protection primarily relies on state law. The Uniform Trade Secrets Act (UTSA) has been adopted by most states, providing a consistent framework. The federal Defend Trade Secrets Act (DTSA) provides federal jurisdiction and remedies but largely mirrors UTSA requirements.

UTSA requirements: Information qualifies as a trade secret if it derives independent economic value from not being generally known or readily ascertainable and is subject to reasonable efforts to maintain secrecy. Reasonable efforts include non-disclosure agreements, access controls, employee training, physical security, marking documents "Confidential," and other measures appropriate to the circumstances.

Remedies: Trade secret misappropriation can result in injunctive relief (stopping use or disclosure), monetary damages (actual losses plus unjust enrichment), or reasonable royalties. Willful and malicious misappropriation can result in punitive damages up to twice the compensatory damages. Attorneys' fees are available in cases of bad faith or willful misappropriation.

State variations: While most states have adopted UTSA, specific requirements and remedies vary. California's version differs somewhat from the uniform model. Some states have additional protections or limitations. Employment agreements with non-disclosure provisions should comply with applicable state law.

Employment context: Trade secrets are commonly protected through non-disclosure agreements (NDAs), employment contracts, and confidentiality policies. However, general skills, knowledge, and experience cannot be protected as trade secrets—employees can use their expertise gained on the job. The distinction between protectable trade secrets and general know-how requires careful analysis. State laws vary on enforceability of non-compete agreements that may protect trade secrets indirectly.

US-Specific Ownership Rules

Employment relationships: For copyright, US work-for-hire doctrine provides that works created by employees within the scope of employment automatically belong to employers. For patents, work-for-hire does not apply—employers must use invention assignment agreements to acquire patent rights from employees. Employment agreements typically include broad invention assignment clauses covering all inventions related to employer's business or developed using employer resources.

State law limitations: California Labor Code Section 2870 protects employee rights to inventions developed entirely on employee's own time, without using employer resources, and unrelated to employer's business or research. Similar statutes exist in Washington, Minnesota, and other states. These statutes limit enforceability of invention assignment clauses but typically permit assignments for inventions related to employer's business or developed using employer resources.

Contractor agreements: Independent contractors retain IP rights unless explicitly assigned. Work-for-hire clauses apply only if work falls into specific statutory categories AND agreement explicitly states it's "work made for hire." Best practice: include both work-for-hire clauses (where applicable) and fallback present-tense assignment language ("hereby assigns") rather than future-tense ("will assign").

Assignment recording: For patents and trademarks, assignments should be recorded with the USPTO to provide constructive notice and protect against subsequent purchasers. Recording is not required for validity but is critical for protection. For copyright, recording with the Copyright Office provides similar benefits—constructive notice and protection against subsequent transferees.

Cross-References

For universal IP concepts (what patents, trademarks, copyright, and trade secrets protect; licensing basics; ownership principles), see IP Primer. For IP clauses in contracts and employment agreements, see Contracts Primer. For IP enforcement and litigation processes, see litigation primer (when available).