The ability to take action to protect your intellectual property or seek damages for infringement are subject to expiration. Both federal and state statutes include time limits after which you may be barred from asserting your rights.
This article will briefly review key statutes of limitations relating to patent, trademark, copyright and trade secret law.
Suspect infringement of your intellectual property? Do you act now or bide your time? While immediately filing a complaint may not be your preferred strategy, waiting could be fatal to your case.
Copyright:
There are two statutes of limitations under copyright law: five years for criminal proceedings and three years for civil actions.
Under 17 U.S.C. § 507:
(a) Criminal Proceedings.—Except as expressly provided otherwise in this title, no criminal proceeding shall be maintained under the provisions of this title unless it is commenced within 5 years after the cause of action arose.
(b) Civil Actions.—No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.
The criminal statute protecting copyrighted works is 17 U.S.C. § 506(a), which provides for prosecution of "[a]ny person who willfully infringes a copyright...if the infringement was committed--for purposes of commercial advantage or private financial gain...." Felony or misdemeanor penalties may apply, depending on the numerical and monetary amounts involved.
Directing our attention to civil actions, the three year statute of limitations begins to run when the infringement is discovered by the copyright owner. Courts are divided, however, as to whether each successive violation of a copyright is a new infringing act with its own statute of limitations, in which case damages may only be recovered for acts of infringement which occurred within the three years leading up to the lawsuit, or if a plaintiff can recover damages for the entirety of the infringement so long as a complaint is filed within three years of the last infringing act.
Patent:
The period of enforceability of a patent is typically the length of the term of the patent plus the 6 years provided under the statute of limitations for bringing an infringement action. 35 U.S.C. 286: "Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action." Therefore, the six year period is not started by the injured party gaining knowledge of the infringement but is defined as a period of six years prior to the filing of suit.
Trademark:
Trademark infringement cases may be brought under either state law or more preferably under federal law, particularly if the trademark owner has obtained federal registration of the mark. Federal law, however, does provide a statute of limitations. Therefore, federal courts typically apply the most relevant or analogous state law statute of limitations, use limitations periods contained in related contracts between the parties, or apply the equitable doctrine of laches, which can bar a party from bringing a legal action if they have unreasonably delayed.
Trade Secrets:
State law governs trade secrets, however, most states have adopted their own modified version of the Uniform Trade Secret Act (UTSA). The statute of limitations is set by state law and, while some states use the UTSA three year statute of limitations, other states may extend it to as much as five years.