Intellectual Property Legal Terms Glossary
Explore definitions, related concepts, and supporting case briefs.
Definitions
Patent
A patent is a government-granted exclusive right to make, use, sell, offer to sell, or import an invention for a limited period, typically 20 years from the filing date for utility patents. Under 35 U.S.C. sections 101-103, an invention must satisfy four requirements: patentable subject matter, novelty, non-obviousness, and utility. The Supreme Court in Alice Corp. v. CLS Bank International (2014) significantly narrowed patentable subject matter by holding that abstract ideas implemented on a generic computer are not patent-eligible, establishing a two-step framework for determining whether a claim is directed to a patent-ineligible concept.
Copyright
Copyright is a form of intellectual property protection granted under the Copyright Act (17 U.S.C. sections 101 et seq.) to original works of authorship fixed in a tangible medium of expression, including literary, musical, dramatic, and artistic works. Protection attaches automatically upon fixation and lasts for the life of the author plus 70 years (or 95 years from publication for works for hire). Copyright grants the holder exclusive rights to reproduce, distribute, perform, display, and create derivative works. Importantly, copyright protects expression, not underlying ideas or facts, a distinction known as the idea-expression dichotomy codified in section 102(b).
Trademark
A trademark is any word, name, symbol, device, or combination thereof used in commerce to identify and distinguish the goods or services of one producer from those of others and to indicate the source of the goods. Trademark rights arise from actual use in commerce rather than mere registration, though federal registration under the Lanham Act provides significant advantages including nationwide constructive notice and the ability to achieve incontestable status after five years. The strength of a trademark is analyzed along the Abercrombie spectrum, established in Abercrombie & Fitch Co. v. Hunting World (1976), which classifies marks as generic, descriptive, suggestive, arbitrary, or fanciful, with only the latter three being inherently distinctive.
Trade Secret
A trade secret is any information, including formulas, patterns, compilations, programs, devices, methods, techniques, or processes, that derives independent economic value from not being generally known or readily ascertainable by others who could obtain economic value from its disclosure or use. Under both the Uniform Trade Secrets Act (adopted in most states) and the federal Defend Trade Secrets Act of 2016, the owner must take reasonable measures to maintain the information's secrecy. Unlike patents, trade secret protection has no fixed duration and lasts as long as the information remains secret, but it provides no protection against independent discovery or reverse engineering.
Fair Use
Fair use is an affirmative defense to copyright infringement codified in 17 U.S.C. section 107 that permits limited use of copyrighted material without the copyright holder's permission. Courts evaluate four statutory factors: (1) the purpose and character of the use, including whether it is commercial or transformative; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the whole; and (4) the effect of the use on the potential market for the copyrighted work. In A&M Records, Inc. v. Napster, Inc. (2001), the Ninth Circuit held that Napster users' wholesale copying of copyrighted music files was not fair use, particularly because the copying was commercial in nature and displaced the market for authorized sales.
Infringement (Copyright)
Copyright infringement occurs when a person violates any of the exclusive rights granted to a copyright holder under 17 U.S.C. section 106 without authorization or a valid defense such as fair use. A plaintiff must prove two elements: (1) ownership of a valid copyright and (2) copying of constituent elements of the work that are original. Copying can be proven through direct evidence or, more commonly, by showing the defendant had access to the work and the two works are substantially similar. In A&M Records v. Napster (2001), the court found both direct infringement by users who uploaded and downloaded copyrighted music files and contributory and vicarious infringement by Napster for facilitating that copying.
Infringement (Patent)
Patent infringement occurs when a person or entity makes, uses, sells, offers to sell, or imports into the United States a patented invention without the patent holder's authorization, as governed by 35 U.S.C. section 271. Infringement analysis requires comparing each element of the patent claims to the accused product or process; literal infringement exists when every claim limitation is met, while the doctrine of equivalents extends liability to devices performing substantially the same function in substantially the same way to achieve the same result. In Apple Inc. v. Samsung Electronics (2012), Apple successfully argued that Samsung's smartphones infringed several of its design and utility patents, leading to a landmark damages verdict.
Infringement (Trademark)
Trademark infringement under the Lanham Act (15 U.S.C. section 1114 for registered marks and section 1125(a) for unregistered marks) occurs when a person uses a mark in commerce that is likely to cause confusion, mistake, or deception as to the origin, sponsorship, or approval of goods or services. The central test is the likelihood of confusion, which courts evaluate using multi-factor tests such as the Sleekcraft factors established in AMF Inc. v. Sleekcraft Boats (1979). Remedies include injunctive relief, actual damages, the infringer's profits, and in exceptional cases, attorney's fees and treble damages.
Likelihood of Confusion
Likelihood of confusion is the central test for trademark infringement, asking whether an appreciable number of ordinarily prudent consumers are likely to be confused about the source, sponsorship, or affiliation of goods or services bearing the accused mark. In AMF Inc. v. Sleekcraft Boats (1979), the Ninth Circuit established eight factors for this analysis: (1) strength of the mark, (2) proximity of the goods, (3) similarity of the marks, (4) evidence of actual confusion, (5) marketing channels used, (6) type of goods and degree of consumer care, (7) defendant's intent, and (8) likelihood of expansion. No single factor is dispositive, and courts weigh them holistically based on the circumstances of each case.
Trade Dress
Trade dress refers to the overall commercial image or total visual impression of a product or its packaging that serves to identify the source of the product to consumers. Protectable under section 43(a) of the Lanham Act, trade dress can encompass features such as size, shape, color combinations, texture, and graphics. To receive protection, trade dress must be (1) inherently distinctive or have acquired secondary meaning and (2) non-functional, meaning the features are not essential to the product's use or purpose and do not affect its cost or quality. In Apple v. Samsung, Apple's claims included trade dress arguments regarding the distinctive appearance of the iPhone's design.
Patent Claim
Patent claims are the numbered paragraphs at the end of a patent specification that define the precise legal scope of the patent holder's exclusive rights. Claims function as the 'metes and bounds' of the patent, analogous to the property description in a deed, and must particularly point out and distinctly claim the subject matter the inventor regards as the invention under 35 U.S.C. section 112. Independent claims stand alone, while dependent claims incorporate by reference all limitations of the claims from which they depend, adding further narrowing limitations. In Alice Corp. v. CLS Bank (2014), the Supreme Court's analysis focused on whether the patent claims were directed to an abstract idea, demonstrating how claim construction is often the critical battlefield in patent litigation.
Prior Art
Prior art encompasses all publicly available information that existed before a patent application's filing date (or priority date) and that is relevant to the patent's claims of novelty and non-obviousness. Under 35 U.S.C. section 102, prior art includes prior patents, published applications, academic articles, products sold or publicly used, and any other public disclosures anywhere in the world. The America Invents Act of 2011 shifted the United States from a 'first to invent' to a 'first inventor to file' system, making the filing date the critical reference point. Prior art is the primary weapon used to challenge patent validity, both during prosecution at the USPTO and in litigation or inter partes review proceedings.
Obviousness
Obviousness is a statutory bar to patentability under 35 U.S.C. section 103, which provides that a patent may not be obtained if the differences between the claimed invention and the prior art are such that the subject matter as a whole would have been obvious at the time of filing to a person having ordinary skill in the art (PHOSITA). The Supreme Court's landmark framework from Graham v. John Deere Co. (1966) requires courts to consider: (1) the scope and content of the prior art, (2) the differences between the prior art and the claims, (3) the level of ordinary skill in the art, and (4) secondary considerations such as commercial success, long-felt need, and failure of others. Obviousness is the most frequently litigated ground for patent invalidity and requires careful, claim-by-claim analysis.
Novelty
Novelty is a fundamental requirement for patentability under 35 U.S.C. section 102, mandating that an invention must be new and not anticipated by the prior art. An invention lacks novelty if every element of the claimed invention is found in a single prior art reference, a standard known as 'anticipation.' Under the America Invents Act's first-inventor-to-file system, a claim is anticipated if the invention was patented, described in a printed publication, in public use, on sale, or otherwise available to the public before the effective filing date. A one-year grace period exists for the inventor's own disclosures under section 102(b).
Utility Patent
A utility patent, the most common type of patent, protects new and useful processes, machines, manufactures, or compositions of matter, as well as new and useful improvements thereof, under 35 U.S.C. section 101. Utility patents last 20 years from the filing date and require the applicant to satisfy the requirements of novelty, non-obviousness, utility, and adequate written description including enablement. The claims of a utility patent define the invention's functional aspects, distinguishing it from a design patent which covers only ornamental appearance. In Alice Corp. v. CLS Bank (2014), the Supreme Court addressed the boundaries of utility patent eligibility, holding that claims directed to abstract ideas require an 'inventive concept' beyond mere implementation on generic technology.
Design Patent
A design patent protects the new, original, and ornamental design for an article of manufacture under 35 U.S.C. section 171, lasting 15 years from the date of grant (for applications filed after May 13, 2015). Unlike utility patents that protect function, design patents protect only the visual appearance of an object, and the claim is typically embodied in the patent drawings rather than written text. In Apple Inc. v. Samsung Electronics (2012), design patents played a central role when Apple successfully asserted that Samsung had infringed the ornamental design of the iPhone, raising important questions about how to calculate damages for design patent infringement that ultimately reached the Supreme Court.
Work for Hire
Under 17 U.S.C. section 101, a work made for hire is either (1) a work prepared by an employee within the scope of employment, or (2) a work specially ordered or commissioned for use in one of nine enumerated categories (such as a contribution to a collective work, part of a motion picture, or a compilation) if the parties expressly agree in a signed written instrument that it shall be considered a work for hire. When the work-for-hire doctrine applies, the employer or commissioning party is deemed the author and initial copyright owner from the moment of creation, and the standard copyright duration is 95 years from publication or 120 years from creation, whichever is shorter. The Supreme Court in Community for Creative Non-Violence v. Reid (1989) established a multi-factor test for determining employee status under the first prong, focusing on agency law principles.
Public Domain
The public domain consists of creative works and inventions that are not protected by intellectual property laws and are therefore freely available for anyone to use without permission or payment. Works enter the public domain through several pathways: copyright expiration (life of the author plus 70 years, or 95 years from publication for works for hire), failure to comply with former formalities such as copyright notice or renewal, explicit dedication by the rights holder, or because the work is inherently ineligible for protection (such as U.S. government works under 17 U.S.C. section 105, or unoriginal facts and ideas). Once a work enters the public domain, it cannot be reclaimed by copyright, and anyone may reproduce, adapt, or distribute it.
DMCA
The Digital Millennium Copyright Act (DMCA), enacted in 1998, is a federal statute that addresses copyright issues arising from digital technology. Its most significant provisions include: section 512, which creates safe harbor protections for online service providers from liability for users' infringing activity, provided they implement a notice-and-takedown system and expeditiously remove infringing content upon notification; and section 1201, which prohibits circumvention of technological protection measures (DRM) used to control access to copyrighted works. In A&M Records v. Napster (2001), the court found that Napster could not avail itself of the DMCA's safe harbor provisions because it had actual knowledge of infringing activity and materially contributed to it rather than taking steps to prevent it.
Patent Troll
A patent troll, more formally known as a non-practicing entity (NPE) or patent assertion entity (PAE), is a person or company that acquires patents not to develop or commercialize the underlying technology but primarily to extract licensing fees or litigation settlements from companies that are actually making products. Patent trolls exploit the high cost of patent litigation (often millions of dollars) by asserting broad or questionable patents against operating companies and offering to settle for less than the cost of defense. The Alice Corp. v. CLS Bank (2014) decision has been credited with curbing some patent troll activity by invalidating many broadly-worded software patents directed to abstract ideas, and legislative reforms such as fee-shifting provisions have further addressed the problem.
First Sale Doctrine
The first sale doctrine, codified in 17 U.S.C. section 109(a) for copyright and applied through common law in trademark, provides that once the copyright or trademark owner has sold a lawfully made copy of a work or a genuine trademarked product, the purchaser may resell, lend, or otherwise dispose of that particular copy without the rights holder's permission. This doctrine is the legal foundation for used bookstores, libraries' lending operations, and secondary markets for goods. The doctrine limits only the distribution right; it does not authorize the purchaser to reproduce the work. In the digital context, courts have generally declined to extend the first sale doctrine to digital files because their transfer necessarily involves making a new copy.
Lanham Act
The Lanham Act (15 U.S.C. sections 1051-1141) is the primary federal statute governing trademarks, service marks, and unfair competition in the United States, enacted in 1946. Section 32 provides a cause of action for infringement of registered marks, while section 43(a) extends protection to unregistered marks and trade dress and prohibits false designations of origin and false advertising. The Act establishes the federal trademark registration system administered by the USPTO, provides for remedies including injunctive relief, damages, and profits, and creates the framework for incontestable status after five years of continuous use. The Lanham Act works in conjunction with state trademark laws and common law trademark rights.
Distinctiveness
Distinctiveness is the fundamental requirement for trademark protection, referring to a mark's capacity to identify and distinguish the source of goods or services. Under the spectrum established in Abercrombie & Fitch Co. v. Hunting World (1976), marks are classified in ascending order of distinctiveness: (1) generic (never protectable), (2) descriptive (protectable only with secondary meaning), (3) suggestive (inherently distinctive), (4) arbitrary (inherently distinctive), and (5) fanciful (inherently distinctive). Inherently distinctive marks receive protection upon use in commerce without any additional showing, while descriptive marks must acquire distinctiveness through consumer association over time. This classification is often the threshold question in any trademark dispute.
Secondary Meaning
Secondary meaning, also called acquired distinctiveness, exists when a descriptive mark has been used so extensively and exclusively that the consuming public primarily associates the term with a particular source of goods or services rather than its ordinary descriptive meaning. Proving secondary meaning typically requires evidence of factors such as length and exclusivity of use, advertising expenditure, sales volume, consumer surveys, and unsolicited media coverage. Without secondary meaning, descriptive marks and trade dress cannot receive trademark protection because they do not yet function as source identifiers. The burden of proving secondary meaning falls on the party claiming trademark rights.
Genericide
Genericide occurs when a trademark becomes so commonly used by the public as the generic name for a type of product or service that it loses its ability to function as a source identifier and thus loses trademark protection. Once a mark becomes generic, it falls into the public domain and competitors may freely use the term. Classic examples include 'aspirin,' 'escalator,' and 'thermos,' which were once protected trademarks that became generic through widespread public use as common nouns. Trademark owners combat genericide by policing unauthorized use, educating the public that the mark is a brand name (not a product category), and using the mark as an adjective rather than a noun (e.g., 'Xerox copiers' rather than 'Xeroxes').