Get smart! About intellectual property.

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Over the past 50 years, there has been a meteoric rise in claims to intellectual property around the globe. In fact, intellectual property has in many ways become the foundation of some economies. Since the existence of and rights surrounding intellectual property are realized only through complete and exacting documentation, records and information managers must assume important and expanded responsibilities in the management and protection of intellectual property. This article focuses on the principal types of intellectual property: patents, trademarks, copyrights, publicity rights, and trade secrets. In addition to a discussion of the nature and structure of each of these types of intellectual property, important international issues, responsibilities, and tasks for the records and information management (RIM) professional will be addressed.

Intellectual Property

The ownership of the expression of ideas, which is at the core of the concept of intellectual property, came late in the development of Western civilization. Most Western philosophers, including Jeremy Bentham and Thomas Hobbes, focused on the ownership of physical property in their discussions of utilitarianism and politics. Until the 17th century, there were no legal protections even for inventions that had a physical component (e.g., textile loom, typewriter, sewing machine, etc.); and it was not until the mid-19th century that these protections were extended to items without a physical component (e.g., commercial processes, medical procedures).

As the legal structure surrounding intellectual property developed, each nation determined the granting of specific types of monopoly to creators or owners. As the global economy developed, harmonization of the various approaches to intellectual property became necessary. Out of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) negotiations in 1994 emerged the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which lays out a set of minimum standards for all the members of the World Trade Organization (WTO) to adopt. The TRIPS agreement is only the beginning. Many practical and concrete outcomes from TRIPS still need to be resolved (e.g., the availability of patented AIDS drugs in developing countries). Efforts to continue the harmonization of intellectual property law continues today through the World Intellectual Property Organization (WIPO), the current successor to the United International Bureaux for the Protection of Intellectual Property founded in 1893.

For the RIM professional, the key element is the recognition that intellectual property is an important asset, not just a collection of information artifacts. The monopoly granted by government to the inventor or owner of a specific piece of intellectual property permits the creation of substantial, protected income (whether the owner/inventor is an independent person, part of a commercial enterprise, an educational entity, or a not-for-profit). Because of the inherent value of the documentation that permits the granting of the monopoly, RIM professionals must view it as a vital record and take a value-based approach to the collection, organization, and preservation of the information resources.

In particular, the approach to the maintenance of intellectual property documentation requires, above all, defined structure and clarity. During the creation and application phases of the process granting an intellectual property monopoly, the RIM professional can augment the process by helping staff to identify all the required documentation, creating dear and comprehensive classifications to organize the material, assuring the proper preservation of the documentation (especially those components that are digital), and providing appropriate vital-record protection.

Patents

Patent law protects inventions that are original and not obvious by granting a monopoly to the inventor for a stated period of time (e.g., in United States and the European Union, the grant is for a period of 20 years). Patents were first granted by medieval kings for property or certain economic rights (e.g., the right to create or to sell a specific cloth). The British passed the first patent law, called the Monopoly Act in 1624; the first U.S. patent law was passed in 1790. Until recently, patents were linked to physical products ("inventions") that had a tangible aspect. U.S. law was changed in the 1950s, however, to permit the patenting of processes. However, until 1998, few, if any, claims of patents for processes were filed. Today, in all of the major developed countries, patents can be granted both for physical inventions and for processes with no physical component. In addition to specific industrial designs, patents are granted for plants, surgical procedures, software algorithms, and genetic modifications.

In addition to the originality and inventiveness of the item or the process that is being patented, the firing date of the patent application can be crucial. If several inventors are working on the same item or process, the first to file a complete application with the patent office has the presumed strongest argument to be granted the patent. One limitation to the granting of a patent is the concept known as "prior art." If it can be demonstrated that the claims in the patent application are either commonly known or have been described before in other patent applications, the patent will not be granted, or a previously granted patent may be revoked.

The importance of patents has been recognized in all legal systems, and the global nature of the current economy has encouraged continued harmonization of the various national patent laws. In 2000, the Patent Law Treaty was adopted in Geneva to provide a framework for consistency in the administration of patents among various nations. Two of the key elements in the treaty deal with the issue of the application date (establishing the priority of the inventor) and the effect of revocation in the case of "prior art" Each of the nations that have signed on as a party to the treaty must adjust their legislation to reflect its stipulations.

Perhaps the most significant element in the treaty is the move from "invention date" to "application date" as the determining factor in assigning ultimate ownership of patents. Before TRIPS, it was important for an inventor to document exactly when the invention was first created. Thus, if two inventors created the same invention, but one created it one day before the other, that inventor would be granted the patent if the application documentation showed that the invention was indeed created on that prior date. After TRIPS, the most important event is the date when the application is submitted to a patent office. Even if another inventor created the same invention months or years prior, the grant to the patent would go to the inventor that first applied for a patent. To align the U.S. legislation with this treaty provision, the Patent Act of 2005 was introduced and is under consideration by Congress.

For RIM professionals, the key task is to gather and to preserve all of the key documentation that contributes to the proof of the uniqueness and newness of the invention. However, because the application date is now the determining factor, the need to document exactly when the invention was created has been removed. More important will be the ability to provide those submitting the application for patent with complete, fully classified documentation about the invention and to preserve that information so that it can serve as a defense if the patent is challenged. Finally, the RIM professional may be required to maintain documentation for patent applications and grants from multiple countries for the same invention and monitor the status and progress of those applications. For all these tasks, close cooperation with those responsible for preparing patent applications or defending challenged patents is essential.

Trademarks

A trademark is a specific identifier that a manufacturer or creator uses to distinguish a specific item, group of items, or even services (i.e., service marks). The granting of trademarks first appeared in United States in the 1870s. At first restricted only to items that actually included the manufacturer's name, the granting of trademarks has expanded dramatically to include arbitrary names, symbols, and the names of newspapers, hotels, and other businesses. In addition, trademarks can be used to protect "trade dress," (i.e., the packaging, form, or color palette associated with the item). Unlike patents and copyrights, a trademark has no time limit unless the owner abandons the mark.

The legal protection for trademarks has expanded from the original focus that prevented others using an identical mark to a broader prevention of other marks that would tarnish, blur, or dilute the value of the original mark. The international development of trademark law has centered on the mutual recognition of a trademark in multiple countries simultaneously. First established in 1891 under the Madrid Agreement, today simultaneous international registration is administered by WIPO under the Madrid Protocol (1989). A trademark owner protects a mark among members of the Madrid Union by filing one application with a national trademark office. Subsequently, it is possible to record changes or to renew the registration through a procedure.