Intellectual Property – General
Wikipedia defines Intellectual Property as: “a term referring to a number of distinct types of creations of the mind for which property rights are recognized – and the corresponding fields of law.” Well, more simply put, you had that brilliant idea and now you want to make sure that nobody else can legally steal it from you. As you can imagine, lots of legal minds have spent innumerable hours and client money trying to protect those “creations of the mind” with varying degrees of success. Your goal should be to understand, on the most basic level, what protections are available to you and which ones make sense for your business and budget. The most common of these protections include confidentiality, patents, copyright, trade secret and trademarks/service marks. Protection in this global environment is, of course, not a simple path and may involve US federal and state law as well as the laws of the countries where your products are made available. When you start thinking about protection focus on these basic questions: (i) what do you want to protect; (ii) what do you want this protection to prohibit others from doing; (iii) what do you need to do to get your protection; (iv) what is the geographic coverage of your protection; and (v) what is the duration of your protection. As I’ve stated in this journal before, and you will hear again, the Internet is an excellent resource for finding basic information on the protections available. Google “comparison charts for patents, trade secrets, copyright and trademark” and see what pops up.
Next installment, Intellectual Property – Confidentiality, and remember, ALWAYS CONSULT AN ATTORNEY FIRST.
Intellectual Property – Confidentiality
The Beatles defined it best in the song “Do You Want to Know a Secret” – take the time and listen to the lyrics of https://www.youtube.com/watch?v=BVQU6xH96k8 (if nothing else you’ll smile for a while). If only the business world was that informal. Just a simple “promise not to tell”. Well, we’re all smart enough to know that telling your secrets to anyone without a proper Confidentiality Agreement is a sure sign you really don’t mean it. After all, try enforcing that promise in court. Bottom line for the protection of your intellectual property is to always start with a good confidentiality agreement and make sure that everyone (partners, employees, customers, and vendors) signs it BEFORE you give them access to that brilliant idea. That’s the first step in letting the general public know that you have something you believe is worth protecting. It doesn’t cost much to do it and all you need is a good form which should include at a minimum: (i) a definition of what you consider the “Confidential Information” to be, (ii) who can have access to the Confidential Information (name names), (iii) what those identified individuals can do with your Confidential information (and therefore cannot do with it) and (iv) when the Confidential Information should be returned.
Next installment, Intellectual Property – Patents, and remember, ALWAYS CONSULT AN ATTORNEY FIRST.
Intellectual Property – Patents
So, what is a patent? Let’s go right to the source: As the government (in the form of the United States Patent and Trademark Office – USPTO) issues all US patents let’s go to their definition: http://www.uspto.gov/web/offices/pac/doc/general/whatis.htm “A patent for an invention is the grant of a property right to the inventor, issued by the Patent and Trademark Office. The term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. US patent grants are effective only within the US, US territories, and US possessions. The right conferred by the patent grant is, in the language of the statute and of the grant itself, ‘the right to exclude others from making, using, offering for sale, or selling’ the invention in the United States or ‘importing’ the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.”
WOW, do you have all that — OK, in simplest terms what is a patent — it is the protection of your know-how, your invention or “that brilliant idea” that got you started down this path in the first place. Some things to think about while you’re contemplating taking this path: (i) is your brilliant idea “patentable subject matter” (e.g. you can’t patent a mathematical formula); (ii) does it make sense to file a “provisional patent” (a place holder for one year while you decide if it makes sense to file the real patent application); (iii) are you going to be comfortable disclosing to the public at large the “how to” of your brilliant idea (a patent is required to fully disclose to the general public how your brilliant idea is made and then prohibit anyone from making that same invention – see the definition above); (iv) do you have the funding to file the patent application (a patent application can cost tens of thousands of dollars to file and prosecute – but if that idea really is unique and brilliant it may be a good investment); (v) do you have the fortitude to police the market for infringers and prosecute them (otherwise what was the point in getting the patent to begin with); (vi) will you need protection in more than the US (start to multiply those filing dollars); and (vii) a patent must be filed within one year of the brilliant idea being made available to the general public (such as disclosing at a conference) — so think quickly.
Next installment, Intellectual Property – Copyright, and remember, ALWAYS CONSULT AN ATTORNEY FIRST.
Intellectual Property – Copyright
So what is a copyright — once again I’m going back to the government who grants these rights: http://www.uspto.gov/web/offices/pac/doc/general/whatis.htm “Copyright is a form of protection provided to the authors of ‘original works of authorship’ including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly. The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Copyrights are registered by the Copyright Office of the Library of Congress.”
Yet another mouthful. But here the advice is much easier to give. You can copyright your website, your technology, your documentation, pretty much anything you develop which has a physical manifestation. So why not do it? “© year, [name of company]. All rights reserved” that’s all you need to put on your material. Now, of course, nothing is ever quite that simple so here are some things to think about: (i) copyright protects “expression” not “ideas” (the “idea” of a web site that allows users to use simple phrases to search the Internet (who could I be referring to) is not protectable; but the “expression” of that idea in the form of the software that drives the website, the way that website looks, feels and functions, these can all be protected under the law of copyright); (ii) you should formally register your copyright with the government for all your “important” copyrightable material (e.g. source code) – this will ensure you an easier time asserting ownership and entitles you to statutory damages if you win your case http://www.copyright.gov/eco/; (iii) your work must be “original” in order to be eligible for protection (you can’t just change a couple of things on someone else’s material and claim it as your own); and (iv) the work must be “creative” – by that I mean not solely utilitarian or functional (e.g. a handbag – but if the handbag looks like an alligator it may be copyrightable) by the way, if it turns out there is really only one logical way to accomplish a task, you can’t copyright that either.
Next installment, Intellectual Property – Trade Secret, and remember, ALWAYS CONSULT AN ATTORNEY FIRST.
Intellectual Property – Trade Secret
What is a trade secret? A trade secret is your “know-how”. Now you can always protect your know-how as “confidential information” (see my previous entry on Intellectual Property – Confidentiality), so why do we need a separate discussion? Because for information to qualify as a trade secret it has to meet certain criteria. Of course, these criteria vary from jurisdiction to jurisdiction – BUT, here are some common characteristics: (i) not generally known to the public (hence the parallel with confidential information); (ii) reasonable measures must be taken to protect its secrecy (leaving a copy on your desk won’t qualify – even if you do lock the offices at night); and (iii) it confers some sort of economic benefit on the holder by not being generally known (think of the formula for Coca-Cola). As a general rule, you should always rely on trade secret protection – unless, of course, you can’t. For example, while you can license and customers can enjoy your software product without access to the source code (No Reverse Engineering Allowed!), you might find your customers won’t license your proprietary stock index if they don’t understand how it works. Maybe more importantly, trade secret protection should be used to keep the special knowledge of your employees from getting into the hands of your competitors (e.g. client lists, marketing strategy, etc). This can be accomplished through non-disclosure agreements, non-compete clauses and similar protections – more to come on this topic.
Next installment, Intellectual Property – Trademark or Service Mark, and remember, ALWAYS CONSULT AN ATTORNEY FIRST.
Intellectual Property – Trademark or Service Mark
So what is a trademark or service mark — once again (and I promise – maybe – this is the last time) I’m going back to the government who grants these rights: http://www.uspto.gov/web/offices/pac/doc/general/whatis.htm. “A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the Patent and Trademark Office.” Some additional basics: (i) generic terms may not be registered as a trademark – try to think of something unique (e.g. EXXON for petroleum products) or a word that suggests a meaning but does not describe the product (e.g. APPLE for computers); (ii) in order for you to get trademark protection you will need to use the mark “in commerce” (e.g. make it available to the public), however, an “intent-to-use” application lets you protect the name from others for up to one year while you work on developing your product; (iii) trademarks are registered in classes ( depending on the type of goods which are being covered – e.g. goods/services and then subcategories under those headings) (iv) trademarks must be registered in each country in which you wish protection; and (v) a registration is not perpetual so it must continue to be used in commerce and must be renewed periodically (the time period is dependent on the jurisdiction in which the mark is filed).
OK, pretty simple – right? Well, not so fast, there are a lot of things to focus on here, your company name, logo, domain name(s), etc. So let’s look at these in a logical progression. You need a company name – your identity to the outside world. In an ideal world that name will serve as the initial branding for your company and hopefully, as the domain name for your company’s website. You’ll need to make sure that no one else has already taken that name so start by checking the government website at: http://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4810:8ee8td.1.1 ; then check and see if the name (or some reasonable facsimile) is available as a url. If both of these check out then you should make haste to file an intent-to-use application for the trademark with the USPTO and register the domain name. There are lots of ways to register the domain name so why don’t you go to http://www.thesitewizard.com/archive/registerdomain.shtml for a short tutorial. With respect to the intent to use for your trademark, while it may seem simple, the registration of a trademark has lots of pitfalls and it would be my advice to work with an attorney who specializes in this area. Notwithstanding, if you wish to try a standard service check out http://www.vcorpservices.com/. Well of course there are lots of other questions – but it’s time for a new topic.
Next installment, Contract, Contracts and More Contracts, and remember, ALWAYS CONSULT AN ATTORNEY FIRST.
An Introduction –
Need I say more?
Next installment, Contracts – Employee Agreements, and remember, ALWAYS CONSULT AN ATTORNEY FIRST.