Home > Topics > The IP Toolbox > The Statutory Toolbox: An Introduction > Editor's Summary, Implications and Best Practices

In order to define and implement best practices in the management of intellectual property, a brief review of the various forms of IP protection is appropriate. IP protection can take the form of utility patents, trademarks, geographical indications, copyrights, plant variety protection, and trade secrets. Each of these different types of statutory IP protection protects a different type of intellectual property and grants different rights to the owner. By using statutory IP protection strategically (using a single type or several types in combination, depending on circumstances), organizations can make the most of their own IP assets.

Intellectual property is property that is intangible: that is, it is a product of human intellect. The owner of intellectual property, like the owner of real property, can protect his or her property and assert his or her rights to it.

A utility patent applies to any invention that is a new and useful process, machine, article, manufacture, composition of matter, or any new and useful improvement thereof. The utility patent confers certain rights to its owner, including the right to exclude others from making, using, selling, offering for sale, or importing the invention into or in the country where the patent was issued. Such patents are normally in force for a period of 20 years from the date of the first patent application.

A trademark indicates the source of a good or service. It can be a word, phrase, symbol, design, or a combination thereof; it can even be a sound, smell, or color. In any case, it must be distinctive enough to be immediately recognizable by consumers: the Coca-Cola® logo is a well-known example. A trademark is only IP-protected—that is, its owner has the exclusive right to use the mark in commerce—when it can be demonstrated that there is a strong association in consumers’ minds between the trademark and the goods and/or services that it represents.

A geographical indication is another type of source indicator. Most commonly, it is a word or phrase used to demarcate goods with a specific geographic origin that possess qualities or a reputation strongly associated with that place of origin. Examples of geographical indications are “Idaho” (for potatoes) and “Roquefort” (for cheese). Geographical indications are IP-protected only if there is a demonstrable and specific association in the mind of the consumer between the indication and the good or product and if it is recognized by respective governments.

A copyright protects an original literary, musical, dramatic, choreographic, or architectural work. The copyright protects the work the moment that it is fixed in a tangible medium: for example, an author’s words are copyrighted the moment they are typed on a page. The owner of the copyright (for example, me, the author of this executive overview) has certain rights regarding the use of his or her work. Typically, these rights include the right to reproduce the work, to prepare adaptations of the work, and to distribute the work to the public. These rights can, however, be either licensed or assigned to others. Furthermore, there are important limitations to these exclusive rights (for example, so-called “fair use” and “library” exceptions).

A trade secret protects know-how that gives the holder some sort of commercial advantage. To be protected as a trade secret, the know-how must be, of course, kept secret. The holder of a trade secret, like the owner of other protected intellectual property, may enforce his or her IP rights if the secret has been misappropriated. Patents and trade secrets are complementary intellectual property assets: depending on the nature of the know-how or the invention, an organization may choose to either file a patent or hold the knowledge as a trade secret.

There are many possibilities for using the various forms of statutory IP protection. For example, a valuable pharmaceutical can be protected by both a utility patent and a trademark (such as Claritin^® or Viagra^®). Formulae and methods that are valuable but that are not patentable inventions can still be protected as trade secrets.

Finally, it is important for organizations to spell out their policies regarding IP protection. IP policies should be consistent with the mission of the organization; employee handbooks should define how ownership of intellectual property is to be determined; and how the institution balances IP protection with appropriate disclosure. Most importantly, everyone should understand the value of intellectual property and the importance of properly managing it.

The first step in instituting and implementing best practices in IP management is understanding the available types of statutory IP protection. Depending on how it is managed, intellectual property can create either constraints and obstacles or options and opportunities.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

• With the basic statutory tools, R&D institutions should be able to make the most of their intellectual property they generate. These tools (such as patents, trademarks, and copyrights) can create either opportunities or difficulties, depending on how they are used. However, unprotected intellectual property has limited uses.
• Work towards legislating and implementing IP laws and infrastructure in your country so that your R&D institutions have the options and tools available. Without the statutory IP toolbox, they have far fewer options available.

For Senior Management (university president, R&D manager, etc)

• Recognize the importance of managing intellectual property. Implement an IP policy that is consistent with the institution’s mission, and that takes into account all available forms of IP protection.
• A carefully drafted IP policy will inform scientists, staff, and IP professionals of best practices in IP management.

For Scientists

• Recognize that the value of your R&D activities (to your program, your institution, and the larger good) can only be realized if IP tools are used wisely.
• Every scientist should have a basic understanding of statutory IP tools: patents, copyrights, trademarks, trade secrets, and plant variety protection.

For Technology Transfer Officers

• When managed poorly, intellectual property can create constraints and obstacles; when managed well, it can create options and opportunities. It is the job of your office to implement your institution’s IP policy so that options are realized and opportunities are captured.
• Communicate with others in your organization. Make sure they know which IP tools are available to them (patents, copyrights, trademarks), how they can make full use of these tools, and how these tools can be used in a complementary fashion.