Essential Intellectual Property Insights Every General Counsel Must Master

General counsels (GCs) face a broad spectrum of legal challenges daily, including contracts, litigation, and employment matters. However, intellectual property (IP) often does not receive the same level of strategic focus despite its importance as a core company asset. Many in-house lawyers lack a comprehensive understanding of the different types of IP, which can hinder their ability to protect or foster the creation of valuable intellectual property. Practical Law offers resources to help GCs quickly familiarize themselves with the four main categories of IP.

Patents grant inventors a government-backed monopoly to make, use, and sell their inventions, preventing others from doing so for a limited time. Typically, utility patents last 20 years, while design patents have a 14-year term. After expiration, the invention enters the public domain, allowing free use. To obtain a patent, the invention must be disclosed in sufficient detail for someone skilled in the relevant field to replicate it. Patent eligibility requires meeting specific criteria.

1. Utility patents cover new and useful processes, machines, articles of manufacture, compositions of matter, or improvements thereof, with protection lasting 20 years.

3. Plant patents apply to newly invented or discovered asexually reproduced plant varieties, with a 20-year term.

Obtaining and maintaining patents can be costly due to application and maintenance fees. Additionally, patent protection is territorial, valid only in the country where granted. In-house counsel must strategically decide in which jurisdictions to seek patent protection based on market priorities.

Trademarks consist of words, phrases, symbols, designs, or combinations thereof that identify and distinguish a company’s goods or services in the marketplace. The term “trademark” is often used broadly to include service marks, which specifically identify services rather than goods.

Trademark rights arise from actual use in commerce, known as common law rights, which are geographically limited to the area of use. To secure nationwide protection in the United States, companies must register their marks with the United States Patent and Trademark Office (USPTO). Registration confers broader legal rights but is limited to the U.S., necessitating separate registrations abroad for international protection.

- Selecting marks that are distinctive rather than merely descriptive, as unique marks are easier to protect.

- Using appropriate symbols: “™” for unregistered trademarks on goods, “℠” for unregistered service marks, and “®” for registered trademarks.

In-house counsel must vigilantly enforce trademark rights against infringers and prevent marks from becoming generic terms, which can result in loss of protection (e.g., “Band-Aid”).

Copyrights protect original works of authorship fixed in a tangible medium, including paintings, photographs, musical compositions, sound recordings, computer programs, books, blog posts, films, architectural works, and plays. Copyright does not extend to ideas, procedures, methods, systems, concepts, or short phrases such as titles or slogans.

Companies can own copyrights through “works made for hire,” where employees or certain contractors create works within the scope of their employment. Copyright grants exclusive rights to reproduce, distribute, perform, display, and create derivative works.

- For works created on or after January 1, 1978, protection lasts for the life of the author plus 70 years.

- For works made for hire, the term is 95 years from publication or 120 years from creation, whichever is shorter.

While copyright protection arises automatically upon creation, registration with the U.S. Copyright Office enhances enforcement options, including eligibility for statutory damages and attorney’s fees.

Exceptions such as fair use and public domain status permit limited use of copyrighted materials. In-house counsel should monitor copyright terms to ensure continued protection until expiration.