Properly Protecting Your Business’s Intellectual Property
Intellectual Property, or simply “IP,” is not just for creative companies and design firms. If you have a brand, you’ve got IP issues. This applies whether you’re a small business working out of your living room or you’re a large corporation selling all over the world.
So, what exactly is IP? IP refers to creations of the mind, such as inventions, literary and artistic works, designs, names, and images used in commerce. Just like with real property, such as your home, you are also afforded protection over your intellectual property.
How do I go about protecting my mind’s creations? To start, there are 4 main types of IP:
- Patents – If you believe you have invented a new, useful and non-obvious process, machine, manufacture, composition of matter or an improvement thereof, you can apply for a patent with the United States Patent & Trademark Office (“USPTO”). If granted, a patent will give you rights for a period of up to 20 years to pursue anyone who copies it. The actual protection time will vary depending upon the type of patent, and may be extended under certain circumstances. In exchange for the patent protection, you must reveal the details of the IP. There are 3 types of patents: utility (for any invention that actually accomplishes something, such as iPhone software), design (for ornamental designs, such as the actual design appearance of the iPhone), and plant patents (for when you find a new species of plant which can be duplicated through asexual reproduction). Something to remember when looking to obtain a patent is that there is a 1-year grace period to file for a patent application once you reveal it to the public, otherwise you are barred from seeking protection. This means you must take precautions to ensure your invention is kept a secret until you file with the USPTO by not showing it to vendors, potential partners, or anyone unless you have proper non-disclosure agreements (“NDA”) in place. Once you expose it to the public, even if it is just a few people, without a proper NDA in place, the clock starts ticking. When you believe you are close to exposing your invention to the public, you can either file a provisional patent application first and then a full application within 12-months of filing the provision patent application, or you can file a full application right off the bat. To determine which is best for you, you should speak with a licensed patent attorney.
- Trademarks – The names, logos and symbols that identify the brands you use in marketing your products or services can be legally protected as trademarks. These may include words (g., Coke); designs and logos (e.g., the Apple logo or Nike logo); slogans (e.g., “Just Do It”); sounds (e.g., Aflac’s quack); and even colors (e.g., Tiffany blue). You can apply for federal trademark protection with the USPTO which will afford you presumption of validity and nationwide protection in addition to other rights; for state trademark protection with your state which will afford you presumption of validity and statewide protection in addition to other rights; or you can rely on common law rights where you do not have to file a formal application, which will be limited to the geographic region in which you use your trademark. Trademark rights arise out of use, so you must make sure you are continuously using your trademark or else you will lose protection. Trademark rights last for as long as you use the trademarks (but if you register them with the USPTO or state, you must make sure you renew them periodically).
- Copyrights – Copyrights are to creative works such as literary works, pictures, graphics, sculptures, music, sound recordings, movies, plays choreographic works, and architectural works. You obtain federal protection automatically and do not need to register with the Copyright Office, but registration amplifies the copyright holder’s rights (and only costs $55 to register!). These rights generally last for the life of the author + 70 years.
- Trade Secrets – Trade secrets are the secret sauce you don’t want any of your competitors to know about (think Coke’s recipe). Unlike patents, which have a limited protection period, a trade secret remains secret so long as you take appropriate measures to not disclose it. You can protect your trade secrets by using NDAs and being specific as to the trade secrets, by identifying and labeling any materials applicable to the trade secrets as confidential material, and making sure you limit disclosure to a need to know basis.
General tips for businesses:
- Use common sense – Make sure that anytime you work with anyone else, whether it be an employee, a contractor, a third-party, a photographer, a website designer and the like, you have a proper agreement in place that provides for ownership of IP rights. Otherwise, it may get sticky when both of you want to own the IP.
- Do your homework – Before investing a bunch of time and resources into your IP, you should speak with a qualified IP attorney to make sure that what you are thinking of using does not infringe upon someone else’s IP rights. Otherwise, all that time and money spent may be a lost cause when the holder of those rights comes knocking on your door claiming infringement. It can also get pretty expensive defending.
- Get permission (from the right person) – If you believe you need to use another’s IP, you want to make sure you obtain permission to use it. This can be in the form of a license agreement or even a waiver that your attorney can help you with to make sure it is effective and keeps you out of trouble.
- Get help – call me or any of our qualified IP attorneys at Graydon Law. We can take care of the complexities involved when dealing with IP to leave you to focus on what you really care about, your business.