Intellectual Property Law Insights - November 11, 2024
Protecting Secret Processes: Patents vs. Trade Secrets
Imagine that for years, you have been using a secret process to create the best widgets in the world. No other widgets compare to yours in quality or durability. But recently you have been losing sleep. Information breaches and leaks have become commonplace, and you are wondering how long you can keep your secret process secret. Should you think about patenting that process? Unfortunately, it may be too late, but don’t worry, there is a silver lining.
Patent law has long included an “On-Sale Bar” that prevents an inventor from patenting an invention that was on sale for more than one year before the patent application was filed.[1] In August 2024, the Federal Circuit Court issued an opinion in Celanese International Corporation v. International Trade Commission[2], reiterating that selling a product that was made according to a secret method triggers the On-Sale Bar. The Court noted that this has been the case since at least 1829 when it was first addressed by the Supreme Court.[3] However, the newly enacted America Invents Act of 2011 gave an overhaul to patent law in the United States and the question arose whether the On-Sale Bar still applies to secret processes. The Federal Circuit held that it does.
What that means is that if you have been using a secret process to create a product that you have been selling for more than a year, you cannot obtain a patent on that secret process. So, what is the good news? The good news is that you are not the only person prevented from obtaining a patent on your secret process – no one can – so no one can prevent you from using your own process. Further, by developing strong trade secret practices, including employee non-disclosure agreements; company access and usage policies; and industry standard protective measures, you can help ensure that your secret process is well protected.
[1] See 35 U.S.C. § 102(a)(1); See also 35 U.S.C. § 102(b) (1952).
[2] 111 F.4th 1338 (2024).
[3] Celanese, 111 F.4th, at 1343 (referring to Pennock v. Dialogue, 27 U.S. 1).
Idaho Trademark Law: Protecting Your Brand in the Gem State
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While a federal registration with the United States Patent and Trademark Office is the gold standard for trademarks, state trademark registration can be a relatively inexpensive and valuable option for securing local brand protection. In Idaho, the registration process is relatively simple. Specifically, to register a trademark with the Idaho Secretary of State, applicants must confirm that they are actively using their mark in commerce and provide specific details with their application, including their name and address, a description of the goods or services associated with the mark and an example of how the mark is used. The application fee is currently only $30 per Class of goods or services.
Idaho trademark registration offers mark owners several benefits. For instance, registrants may bring trademark infringement actions under Idaho law when another’s use of the mark is likely to cause confusion among consumers. The law also protects famous trademarks from losing their distinctive quality, and it protects brand owners from counterfeit uses of their marks. Under the Idaho Consumer Protection Act, unauthorized use of trademarks may also be considered a deceptive trade practice. As an additional benefit, registered trademarks are also made public through Idaho’s trademark registration database, offering a measure of deterrence against unauthorized use by putting potential infringers on notice.
Despite these benefits, however, there are drawbacks to only owning an Idaho trademark registration. Notably, marks registered in Idaho are not reviewed for validity or for likelihood of confusion with other state or federal trademarks. In addition, a state registration does not come with a presumption of validity or ownership, and it also does not constitute nationwide constructive use of a mark, like a federal registration would. Nonetheless, if a federal registration is not yet within the budget, a state registration is recommended until a federal registration can be obtained.
Right of Publicity and Privacy Laws: Key Insights for Marketing Professionals
Technological advances have made it easier than ever to use a person’s name, voice or likeness in advertising. But before doing so, it is imperative to understand the legal framework that protects individuals who have not consented to such use.
Rights of publicity and privacy are generally governed by state law. For example, Idaho is in the minority of states in the U.S. that do not recognize a “right of publicity,” which protects an individual’s ability to control the commercial use of their name, image and likeness. However, Idaho does provide certain protections against the unauthorized uses of a living person’s name or likeness under the umbrella of privacy rights, particularly through its common law "invasion of privacy" law and regulations against the unauthorized use of drones to take photos or videos of an individual. In addition, the unauthorized use of a person’s name, voice, or likeness for a commercial purpose would also likely violate the Idaho Consumer Protection Act, which makes it illegal to cause confusion about an individual’s sponsorship or certification of goods or services.
These state-specific limitations should be top-of-mind before using an individual’s identifying characteristics to market goods or services. Notably, there has also been a wave of proposed federal legislation this year addressing the unauthorized use of an individual’s name, image, voice, or likeness, whether the content is real or AI-generated. We expect to see several of these laws enacted next year. Overall, the risks associated with using a person’s identifying characteristics without consent are not likely worth the reward.
Before embarking on your next project featuring anyone’s name, image, voice or likeness, we recommend consulting with an attorney to ensure you’re in compliance with the law.