All businesses have intellectual property (IP), whether they know it or not. Be it a brand, an invention or website content, IP is an intangible asset that, when properly protected, can enhance the overall value of a business. Here are 10 basic tips to help you get your IP house in order after the New Year:
- Patent, trademark, copyright – keeping them straight. Generally speaking, utility patents protect functional ideas embodied in devices, methods and compositions of matter by excluding others from practicing the invention. A trademark is a distinctive word, symbol or device used in connection with goods in commerce to (a) indicate the source of the goods and (b) distinguish them from goods of others. A copyright protects creative expression fixed in a tangible medium, such as videos or literary works including computer software.
- Plan ahead. You may not be able to put in place all at once the protections outlined below. Therefore, it is important to map out a timetable for product launches, website launches and planned disclosures so that IP protection can be a part of the timetable, as well.
- Put employee agreements in place. Employees are an important piece of the IP protection puzzle. A solid employment agreement will require employees to protect your IP by addressing IP ownership, confidentiality and even non-competition in appropriate cases.
- Have agreements with your consultants and vendors. Believe it or not, paying consultants and vendors does not mean that you automatically own the IP you pay them to create. If you want to own that computer software, website content, or invention, you will need a contract that transfers the ownership rights to you.
- File a patent application before you disclose. We have a first-to-file patent system in the U.S.; therefore, with some limited exceptions, the first applicant to file an application at the Patent Office is the inventor for that invention. The safest course is to file a patent application covering the invention before publicly disclosing it.
- Use a non-disclosure agreement. A non-disclosure agreement is a vehicle for protecting your IP from public disclosure. This is a standard piece in the IP protection puzzle.
- If your product or service has a name, protect it. A distinctive product name can function as a trademark by indicating the source of the goods and distinguishing the product from other goods. Trademarks are associated with business goodwill; for your important products or services, they are worth protecting. Although you will develop certain rights in a trademark merely by using it in connection with the sale of your goods, those rights can be enhanced through federal registration.
- Settle on a distinctive trademark. Distinctive marks are stronger and can be more valuable than descriptive ones. For example, Apple's trademarks have been recently valued at $316.1 billion.[1] While many people are often tempted to use marks that are descriptive, descriptive marks are weak and subject to diminished protection, if they can even be protected at all.
- Know the limitations of the internet. Just because you find material posted on the internet does not mean you have the right to use it. Works of creative expression on the internet are still the subject of copyright protection. If you intend to use images or content from the internet for commercial purposes, you will need to secure the right to do so from the copyright owner. By the same token, just because others find material posted on your website does not mean that they have the rights to use that material either. Become familiar with take-down procedures for internet service providers and consider employing mechanisms to improve your ability to have infringing content promptly taken down.
- Keep an eye on your competitors. If your competitors have a trademark that is confusingly similar to yours or if they are using your patented method, then you can (and should) enforce your IP rights against them. While this could include suing for infringement, the remedies could also include licensing either the trademark or the patented invention for royalties. In addition, there are also mechanisms at the U.S. Patent and Trademark Office for opposing confusingly similar trademarks before they are registered or for challenging the validity of recently issued patents.
Susan E. Chetlin is a registered patent attorney who practices intellectual property law at Burch & Cracchiolo, P.A. The statements in this article do not constitute legal advice. Every case is different so you should consult with a lawyer about your own situation.
[1] BrandZ Top 100 Most Valuable U.S. Brands 2019, www.brandz.com.