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How To Protect Intellectual Property

By Todd Gerety

Intellectual property is an intangible asset, or a collection of intangible assets, created through the ingenuity of people in the form of their brands, innovations, original works of authorship, and confidential information. Intellectual property may serve as the foundation of many businesses and ventures.  Thus, it is very important to protect your intellectual property as your business develops and grows.

Protecting Your Brand

Trademarks can be used to protect your brand.  A trademark can be a name, a slogan, or a logo used to market your company and/or its goods and services.  For example, a well-known trademark is the AMAZON® “smirk” logo.  When receiving a package with that logo, many would immediately recognize the package as having come from AMAZON®. 

By registering your trademark with the U.S. Patent and Trademark Office, you can exclude others from using your name, slogan, and/or logo in competing goods or services.  You cannot use a trademark that is being used by another as a brand for a similar product or service.  Accordingly, best practice dictates that a trademark clearance search be performed to ensure that a trademark is available before making any significant investment in its use and registration. 

Protecting Your Innovations

            Patents can be used to protect your innovations.  There are different types of patents that can be obtained through the U.S. Patent and Trademark Office.  In particular, utility patents are used to protect new and useful processes, machines, manufactures, compositions of matter, or any new and useful improvement thereof.  Design patents can protect the shape and/or surface ornamentation of a manufactured article.  For example, Apple Inc. has many utility patents directed to the operation of the IPHONE® mobile phones as well as design patents directed to their shape.

A patent grants the holder (or “the patentee”) the exclusive right to make, use, sell, and import the patented invention for a limited time period.  Patent rights are also territorial.  In other words, the exclusive rights granted in a U.S. patent do not extend to other countries.  Thus, if patent protection is desired in more than one country, a separate patent application must be filed and granted in each country. 

It is also important to know that these patent rights vest initially in the inventor(s).  Thus, in order to transfer these patent rights to your company, the inventor(s) must execute a patent assignment to the company.  Best practice also dictates that a company employee or any third party consultant execute an agreement to acknowledge their obligation to assign their patent rights (as well as any other intellectual property rights) to the company before engaging in any work.

Protecting Your Original Works of Authorship

            Copyrights can be used to protect your original works of authorship.  Examples of such authored works may include software, training manuals, design specifications, and marketing brochures.  A copyright grants the copyright holder the right to (i) reproduce the copyrighted work, (ii) prepare derivative works based upon the work, (iii) distribute copies of the work to the public, (iv) perform or display the copyrighted work publicly (if applicable).

A copyright comes into existence as soon as the work is fixed in a tangible medium of expression (e.g., paper, electronic document, file, etc.).  Although not required, copyrights can be registered with the U.S. Copyright Office.  However, in the U.S., a copyright infringement lawsuit cannot be brought until the holder registers their copyright.  Typically, this process involves submitting at least a portion of the authored work. 

Furthermore, the author of the work initially owns the copyright.  However, like patent rights, ownership of a copyright can be transferred to others through a copyright assignment. 

Protecting Your Confidential Information

            Intellectual property in the form of confidential information can be protected as a trade secret.  Trade secrets can include customer lists, business plans, and information that cannot be easily reverse engineered on how a product works.  The most famous trade secret is the recipe for COCA-COLA®.  The recipe has been held in secrecy for over 100 years.  However, once the confidential information becomes known, it may no longer a trade secret.  Therefore, with trade secrets, it is important to limit access to the confidential information to only those persons who need to know it.  Best practices also dictate that a person with whom the confidential information is being shared sign a confidentiality / non-disclosure agreement.   

Takeaways

It is important to have a strategy for protecting your company intellectual property.  As reemphasized below, different aspects of your intellectual property may be protected in different ways. 

  • Trademarks for protecting your brand;
  • Patents for protecting your innovations;
  • Copyrights for protecting your original works of authorship; and
  • Trade secrets for protecting your confidential information.

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