Protecting Intellectual Property |
Most people deal with intellectual property every day of their lives. The term "intellectual property" covers the content of the morning paper (copyright), the logo and styling of a cereal box (trademark), and the car radio's scanning function (patent). There are four basic categories of intellectual property: patents, trademarks, copyrights and trade secrets. While there can be overlap, each category affords different protections and is used with different types of material.
The Basics
Trade secrets are perhaps the most straightforward: they cover information used in trade that provide a commercial advantage and are not known to the general public. They include things like a manufacturing process, the formula for making a product or compound (Coca-Cola®, for instance), or a business' customer lists. A court decides whether a piece of information qualifies for trade secret protection by examining a variety of factors, most of which deal with how well-known the information is to the general public and what steps were taken to protect its disclosure. Assuming that the material is found to be a trade secret by the court, it will be entitled to protection with no specific time limit - Coca-Cola has been protected for nearly 100 years. Disclosure of the trade secret to the public at any time will likely destroy any previously enjoyed protection.
Copyrights protect the tangible expression of ideas. Common uses include protecting the contents of books, movie plots, paintings and sound recordings. Copyright protection attaches when the creator puts pen to paper and creates a tangible expression of the idea. This basic protection may be registered by filing an application for federal copyright registration, which requires a simple form, a modest fee, and a copy of the work you want to protect. Federal copyrights for works created and registered after 1978 generally last for seventy years after the author's death. If someone infringes your federally registered copyright, the statute provides for substantial damages as well as attorneys' fees. Not all use of copyrighted material is unlawful; the public is allowed to make "fair use" - loosely defined as selective use or quotation for educational and literary purposes.
Trademarks protect the product identifiers - the names, logos and general visual attributes that distinguish a business from its competitors. The primary purpose of trademarking is to prevent consumer confusion over the origin of the products. If someone put up some golden arches and started peddling burgers, for instance, McDonald's® could sue for unlawful use (infringement). Registration of generic names, like "orange juice" for juice, typically isn't allowed, as that would prevent competitors from referring to their product by its proper name. Federal trademark registration affords the strongest protection, but each state has trademark protections that should be considered as well.
Patents are by far the most technically demanding branch of intellectual property. In basic terms, a patent is given to an inventor of some novel machine, process, or product that has utility to the public. In exchange for disclosing this new invention to the public, the federal government gives back to the inventor an exclusionary right (the patent) to prevent anyone else from making, using or selling the invented device or process in the United States. The term of the patent has changed recently and patents issuing today have a life of approximately twenty years from the date the application is filed. To get a patent, the inventor must file a formal application with the Patent and Trademark Office, disclosing the substance of the invention, providing a sufficient written description to allow the public to make the invention, and suggesting the best mode of the invention contemplated by the inventor. Since the process can take several years, it's important to apply as soon as possible. Once the patent is granted, you can use it to preclude others who seek to copy or otherwise use your invention and license the technology for fees.
One particular area of patents that has received much attention lately is the so-called business method patent. Based on recent federal court decisions, patents are now obtainable for a way of doing business - provided it has a tangible expression. Amazon.com, for example, has patented the "one-click" method of ordering merchandise with one click of your mouse button. Such patents can be very valuable to businesses and comprise a significant portion of the business' assets.
Getting Help
It's best if your lawyer is familiar with each category of intellectual property, so he or she can help you select the appropriate type.
Dealing in trade secrets, copyrights, and trademarks requires no special licensing above the normal bar credentials. But patent lawyers and patent agents (non-lawyers who are licensed to prosecute applications before the Patent and Trademark Office) must not only have the appropriate academic qualifications, but also pass a rigorous examination. If you think that your product might need patent protection, make sure that your lawyer or his firm has the capability and the competence to do patent work. One way to check is to ask to see their registration with the Patent and Trademark Office.
Because the contents of the patent application will ultimately determine the scope of the rights of the inventor, it is very important that someone skilled in the art of drafting ("prosecuting") patent applications be consulted prior to submitting the formal patent application to the Patent and Trademark Office.
In addition to seeking recommendations from the local bar organization, you might want to contact certain trade organizations that deal with intellectual property. Probably the largest and most well respected of these is the American Intellectual Property Law Association (AIPLA), based in Arlington, Virginia.
Review prospective lawyers' backgrounds on the Internet or through a firm brochure prior to your first meeting. They should have a demonstrated track record of handling the type of filing you require.
Your lawyer should be willing to give you a fair estimate of the fees involved.
Because of the technical complexity of certain intellectual property matters, particularly patents, your lawyer must not only be competent, but also someone with whom you are comfortable. Patent applications can often be pending for several years, so you will have ample opportunity to deal with your attorney under a variety of circumstances. Make sure you make the right choice.
What's Next?
Protecting your intellectual property can be a short, simple process or a long, complicated one, depending on which route you take.
Copyright applications are fairly simple and should require a minimum of effort and a fairly modest fee. You could even consider filing your own.
Because of the variables involved in a trademark application, neither the timing nor the cost can be estimated with much precision. Most applicants first conduct a search of the U.S. Trademark Registry to determine if the mark is even available. Those searches are normally done by service firms hired by your lawyer, and represent an additional cost. There are also fees involved with filing a trademark application, typically advanced on your behalf by your lawyer. Once the application is filed, there will be give and take with the Patent & Trademark Office. A third party who objects to the proposed registration may also participate in these proceedings (and consequently make them longer).
Patent cases are by far the most complex and usually the most expensive to handle. When you show your invention to an attorney, they will evaluate it for "patentability" by investigating prior inventions to see if yours is truly novel and has utility. One challenge with this early evaluation is that your attorney will not know of what other patents are pending in applications before the Patent and Trademark Office ("PTO"), since they are kept secret. The attorney must then prepare the patent application, which is a combination of art and science. Once the application is completed, it is then filed with the PTO. The office responds to the application with an initial "office action," which is most often a rejection. Thus begins the dance between the patent attorney and the PTO, as the lawyer tries to overcome the initial rejection. This is where costs can mount. Assuming the patent is eventually approved (the average application takes two to three years, but some have gone much longer), you will be required to pay an issuance fee.
Once the patent's granted, if a large corporation decides to infringe upon it, you will need to file suit to protect it, a process that will require a significant amount of time and money. Alternatively, you can make your patent into a revenue source by licensing (renting) the technology to others. That way, you never have to make the capital investment to produce it yourself.
Eric Vance is an attorney with the intellectual property law firm of Woodcock Washburn Kurtz Mackiewicz & Norris with offices in Philadelphia and Seattle. He concentrates in intellectual property litigation, with an emphasis on patent and trademark disputes.
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