Protecting and Enforcing Your Intellectual Property
Intellectual Property (IP) includes patents, trademarks, copyrights and trade secrets. Each one is valuable in its own right and understanding the different forms of IP is a good place to start.
Patents protect embodiments of ideas, such as machines, improvements, methods of manufacturing, chemical compounds and sometimes even computer software applications. Patents do not cover concepts, rather they protect the realization of those ideas. However, before a patent expires (typically around 20 years from the filing date, subject to exceptions), it allows you to stop others from making, using, selling, offering to sell or importing embodiments covered by the claims of your patent—the “claims” delineate what you own and can therefore protect, and they are found numbered at the end of a patent.
Trademarks cover IP such as the name of a company or product or a logo. In essence, they protect the goodwill you create in your company’s name and brands so competitors cannot use confusingly similar names or logos to fool consumers into thinking the two competing companies are related.
Copyrights protect “original works of authorship” that are fixed in a tangible form of expression, such as sculptures, music, literary works, videos and even computer source code. Finally, trade secret laws protect valuable confidential information that you take reasonable precautions to keep secret. An example of a trade secret might be a formula like Coca-Cola’s recipe. If it can be reverse-engineered, you should consider a patent on such subject matter.
All of these forms of IP add value to your company. They allow you exclusivity in your marketplace; they may be licensed for royalty payments, etc. But they are only as valuable as your ability to enforce them, which is what we’ll explore in this article.
Establishing IP Rights
How to establish ownership of your rights will depend on what type of IP you’re protecting. Let’s consider each one:
Patents: For patents, you need to file and prosecute a patent application at the U.S. Patent & Trademark Office (USPTO). Typically, this process starts with understanding what is already in the public domain worldwide, such as issued patents, published patent applications and literature (so-called “prior art”). If you look at the prior art and it appears your idea is novel, non-obvious, and something more than a general concept or abstract principle, you should consider filing a patent application. Over the course of approximately two to four years, you will argue back-and-forth with the USPTO to show that your invention passes muster under the rules. If you are successful in obtaining an issued patent, what you own will be expressed in the claims of your patent.
Tip: For useful information on the process, as well as to conduct searches on issued U.S. patents and published U.S. patent applications, visit www.uspto.gov.
Trademarks: For trademarks, you may have some limited common law rights in your mark simply through exclusive continuous use, for example, in the specific geographic location where your business is located, even if you don’t file for a trademark. However, to put competitors on notice nationally, it makes inherent sense to file for a trademark registration at the USPTO. Generally speaking, if your mark is not merely descriptive (e.g., “hamburger restaurant”), and it is not confusingly similar to another previously registered mark, you can get a registration for your trademark. Tip: Once again, information on the process and previously registered marks is found at www.uspto.gov.
Copyrights: Copyrights are different, because copyright protection exists the moment you create an original work, and it is fixed in a tangible medium of expression (such as a book or DVD). However, if you wish to enforce such a work in court, you first have to file it with the U.S. Copyright Office at the Library of Congress. There are several benefits to registering your copyright prior to learning that it has been infringed. For instance, early filing increases your damages remedies. Tip: A searchable database of all registered copyrights can be found at www.copyright.gov.
Regarding trade secrets, you do not have to file anything, but you do have to maintain reasonable safeguards to keep the idea secret, such as by having employees/contractors sign non-disclosure agreements, and/or keeping it hidden from public inspection.
Enforcing IP Rights
Once you have IP, you should take measures to be on the lookout for potential infringers. Of course, enforcement will be a business decision based on, to a large extent, financial considerations (e.g., legal fees vs. possible damages). On the other hand, sometimes showing you will enforce your rights when infringed will deter other potential infringers in the future. Below is an exemplary timeline of what IP enforcement looks like from an IP holder’s perspective.
First, monitor for potential infringers. When you find them, compare what they are doing against your patent, trademark or copyright. In the case of trade secrets, determine whether they may have misappropriated your trade secret.
If you believe infringement or misappropriation has occurred, you have several options. Before filing a lawsuit, many companies prefer to first send a cease-and-desist letter in the hopes the wrongdoer will stop or that a resolution short of court intervention may be reached. Sometimes this leads to a mediation, which is typically faster and less expensive than litigation, although it does not bind the parties to the extent of a court-mandated judgment. Otherwise, you may choose to file a lawsuit, but only do so after conducting an adequate due diligence into the sufficiency of your legal claims against the infringer or party who misappropriated your trade secrets.
IP disputes are typically handled in federal court, although trade secrets can be litigated in state courts. Litigations typically last at least a year before trial, unless the parties settle during the process, or a party can convince the court to rule on the issue(s) before trial. Litigation is frequently engaged in as a last resort, but it can be useful for particularly valuable IP and to show competitors you mean business.
In conclusion, determine if you have IP, take steps to protect it and, if anybody infringes that IP, consider consulting with an attorney to discuss available options for enforcing your IP.
By Nathan A. Evans
Registered Patent Attorney, Woods Rogers PLC