With effective IP protection built into the fabric of your business from the first day, you can better protect your business, AND add intellectual property to your list of business assets.
What types of intellectual property protection are there and which ones do I need?
Below is a list of some of the most common types of intellectual property with the typical uses for each and some steps you might want to consider when thinking about IP protection.
There are generally four forms of intellectual property that can be applied for: patents, trademarks, copyrights and design patents (also called designs).
Each has a distinct definition and purpose. You may not choose among these protections the ones that suits you the best or that on paper seems to offer the best protection, as different subject matter is awarded different kinds of protection.
The musical partition of a song cannot be patented and a new machine cannot be protected by copyright. To each its own.
Here’s how you can tell them apart:
· Patents: relate to technical inventions, sciences
· Copyrights: essentially pertain to the arts, works of authorships
· Trademarks: used for business purposes to identify goods or services
· Design patents: used in a trade or industrial context to protect the original shape of a product or of a packaging.
Let’s have a closer look.
What are copyrights?
Typically, you can copyright literary and artistic works that are unique, original, and to which you can claim authorship. Examples are:
To be afforded copyright protection, a work must be both creative and fixed in a tangible medium. Ideas, facts, and processes are not eligible for copyright protection even if the author expends time and efforts into bringing such facts to light.
This is because copyright protects the form of expression, not the subject matter of the work.
For example, anyone is entitled to write his/her own novel about a woman’s love affairs set during the secession war in the US, but no one is entitled to call that woman Scarlet and have her fight to keep a house called Tara. That would just be borrowing too much from Margaret Mitchell’s’ original work Gone with the wind. Until that work falls into the public domain, permission should be obtained prior to using more than a fair use portion of the work.
How to protect your copyrights?
While copyright is automatic assuming you can prove original authorship, these simple steps will help ensure that your copyright is protected and that you can act in the event it is being infringed upon.
Finally, in the US there is a preregistration process available to works that are being prepared for publication and that have a history of being infringed upon before publication. This is often the case for movies and video games (as many people collaborate to their creation, the risk of unauthorized disclosure prior to the release increases). A person who has preregistered a work with the US Copyright Office must register the work within one month after the copyright owner becomes aware of infringement and no later than three months after first publication.
What are the common copyrights pitfalls?
· Using The “Poor Man’s Copyright” as a substitute to registration. This is a method that has been used to protect copyrights in which a creator mails the work through the postal service to themselves, but is NOT considered valid protection in many jurisdictions.
· Assuming registration is unnecessary. Some people wait until they are actually infringed upon to proceed with registration but this may reduce the amount of damages ultimately awarded as a result of the infringement. In the US timely registration entitles the copyright holder to statutory damages.
· Believing copyright clearance extends to rights of privacy (or right to likeness). Copyright will protect a work of authorship such as a drawing or photograph but only as to the artistic elements featured in the work. The likeness of person, her voice, her body are not protected under copyrights. They are afforded protection under rights of privacy, meaning that when you use the photograph of a person, permission from both the photographer and the person featured in the photograph are required (in the former case as part of copyrights, in the latter as part of privacy rights).
· Relying on a mere citation of the author to demonstrate fair use when borrowing on a preexisting work. Most countries allow for citation of a third party work and require in such case that credit should be given to the original author. But the mere fact of citing the author is not sufficient in itself to demonstrate fair use. Whether such use is fair is determined by courts on a case by case basis. The use is not considered fair when large portions of the work are borrowed or when the bits borrowed constitute a core part of the work. So if you use third party copyrighted material, either obtain a permission or make sure:
How can I register my copyright?
Typically, you can register your copyright by filing a simple application and depositing one or two samples of the work (depending on what it is). In the US, this would be with the U.S. Copyright Office, either online using the Copyright Office’s electronic eCO system), or by filing a traditional printed copyright form in exchange for a higher fee ($85 for a basic paper application instead of $35). www.copyright.gov.
While filing remains a rather simple process, things get trickier when you start noticing infringements and believe those are hurting your business, or when your work is accused of infringing upon others. At that stage, the help of an attorney becomes essential.
Ultimately, the level copyright protection you may be afforded will be determined by national laws, so before you publish any work, make sure you check into what is required to perfect your rights with the help of a local specialized attorney.
What are trademarks?
Trademarks represent your goodwill, the reputation of the goods and services you provide. They are an essential part of a business and they help people tell the difference between products and services from different sources.
They are typically embodied in the following:
Trademarks are meant to inform consumers regarding the source, the origin of the goods, not to describe the goods themselves. This is why the strongest marks typically have no meaning in relation to the goods or services for which they are used (ex: Nestlé).
The more distinctive and arbitrary a mark is the wider the mark’s scope of protection will be. On the opposite end, the generic word for a type of product or service (such as blow-dryer to describe a device blowing hot air) will typically not be afforded a registration. This is because the generic word adequately describes the product, but doesn’t provide any indication as to its source. Furthermore, it would amount to granting the applicant the right to hog a generic name and prevent others from using it in any commercial setting.
Finally, another typical ground for refusal of registration by authorities is what is known as “likelihood of confusion.” This occurs when the mark you want to register is similar to that of a third party and is used to describe related goods and services.
How to protect your trademarks?
What are the common Trademark Pitfalls?
Committing to a mark without having performed a search on pre-existing similar trademarks. Before you engage efforts and money into developing a trademark (for instance by designing a website or printing packaging bearing your trademark) make sure you do a comprehensive search for similar marks. This will avoid costs and glitches during the application process.
Believing domain name business name registrations can afford trademark protection. A domain name can function as a trademark so long as it is used in a way that it identifies the sources of particular goods or services. For instance, Amazon.com is used both as a web address and as a trademark. But each protection required two separate registrations: one with the domain name registry one with the USPTO. Just like a domain name can become a trademark a business name can also be used to describe goods and services. But there again, two separate registrations are required.
Postponing filing an application. Trademark rights are often created by your use of your mark in commerce and not through registration. While registration is not required it will enhance and help you prove your rights. A registration creates the legal presumption that you are the legal owner of the mark and that as such you have the right to use it in the country where it was registered. It informs other people that you are the owner of the mark and often is a prerequisite to act against infringers before courts. In the US, a Federal registration also gives you the right to use the ® symbol.
Not checking on the availability of the corresponding domain name. Trademarks and domain names are different. To avoid potential conflicts, make sure both the trademark you wish to use and the corresponding domain names are available for registration and that no related goods or services are branded in a similar sounding-, looking- or feeling-fashion.
Not using the trademark or otherwise failing to control how it is used by licensees. While this is not the case under the European Union’s Community Trade Mark Regulation, in the U.S., trademark applicants must certify that they are using or have a good faith intent to use a mark in connection with specific goods or services. Accordingly, failing to use the trademark in commerce may result in weaker or harder to demonstrate rights. Similarly, rights in and to a trademark may be lost when licensed to third parties without quality control over how the trademark is used. To avoid this you should always retain some form of quality control over licensed goods or services bearing your mark and ensure you put all licensing terms into writing.
How Do I Apply for a Trademark?
There’s a lot of digging that you can do on your own by performing a basic web search and on the USPTO's Trademark Electronic Search System (TESS) database.
Some companies may offer to help you with your application or evaluating the market value of a potential brand but unless there’s an attorney on staff, these companies will not be able to help you out with any official letters received during the registration process. So you may end up incurring additional fees. While some registration offices such as the French INPI or the Intellectual Property Office in the UK provide paying pre-registration clearance services, the USPTO does not conduct prior trademark searches and is not habilitated to give you legal advice.
For those reasons, many applicants hire the services of an attorney to help them navigate through the process by conducting a comprehensive trademark search (including on those trademarks that are not necessarily registered), and preparing responses to any refusals or requirements that a registration office may issue.
For start-ups in the US, reduced-price options may be available from the registration office or from your local bar association through “pro bono” divisions or law school clinic programs.
What Are Patents?
Patents are afforded to the inventor of a new, useful and non-obvious invention for a period of 20 years from the filing date of a patent application. Once obtained, the patent provides the right to exclude others from exploiting the invention during that period. Types of patents include:
1) Utility patents for new and useful processes, machines, articles of manufacture, or compositions of matter, or any new and useful improvements thereof;
2) Design patents for new, original, and ornamental designs for articles of manufacture; and
3) Plant patents for the discovery and asexual reproduction of any distinct and new variety of plants.
Typically the following can be protected by a utility Patent:
What is a Non-Provisional Application for a Patent?
A non-provisional application for a patent typically must include a specification, including a description and a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing, search, and examination fees. If successful, at the end of the process you will be awarded a utility patent.
A PPA is a simplified and less costly alternative when you need to disclose your invention rapidly but are not in a position to file for a full patent application as of yet. A PPA costs $65 for a micro-entity, $130 for a small entity and $260 for a large company.
A provisional application establishes an early effective filing date in a patent application and permits the term “Patent Pending” to be applied in connection with the invention for 12 months. Provisional applications may not be filed for design inventions.
A provisional patent application will not, by itself, get you a patent. It only lets you preserve your rights while you decide whether to file for a patent.
How to protect your invention?
Write down everything and keep good records. The more details you have from the very start, the better off you will be when you need to describe your invention for patent application purposes. Your description must be detailed enough so that anyone trained in the field is able to reproduce your invention based solely based on your description. To that end, you may also need to be able to draw your invention.
Start by making sure the IP you are inventing doesn’t already exist. A quick Google search can give you an idea, but a more thorough Prior Art Search, performed by a patent attorney, checks all searchable literature, including inventions that are currently in the process of being filed.
If you have good reasons to believe your invention potentially qualifies for a patent, but do not have the funding to launch a full application yet, consider filing a provisional patent application to obtain "patent pending" status.
Own your business. If you allow your foreign business partner to register your IP, in many foreign countries, they become the “rights holder.” You need to register your own IP assets and registrations with the customs administration to block the import and export of infringing items.
· Know your partners. Make sure all potential foreign business partners are qualified and reliable. Include provisions in your contracts that require the use of original and unaltered products to prevent the partners’ registration of your IP.
· Ideas are not usually copied until they show potential to be successful in the market – and at this point, if someone else steals your idea, it may be too late. Make sure to maintain confidentiality when developing a new product by having people sign a non-disclosure agreement and take the necessary steps to ensure it is enforceable.
What are the common mistakes relating to utility patents?
· Underestimating the importance of confidentiality and trade secrets, especially in the early stages. Patent protection typically takes some time. In the meantime, the diligent use of non-disclosure agreements and minimizing the sharing of information can help protect your valuable ideas.
· Writing a patent that is too narrow in scope.
A patent claim and specifications that are too narrow can be easily circumvented by competitors. Conversely a claim that is too wide may trigger chain law suits before you even start exploiting your invention.
· Disclosing all or part of your research prior to filing. Any prior disclosure, will count as prior art. Make sure that you file your patent application before disclosing your invention. This is something that often happens on crowd-funding platforms, so it is a good idea to get a qualified professional through the information you are planning to disclose.
· Ignoring the One Year “On Sale” Bar. In the United States, a patent application must be filed within one year of the first offer for sale or the first public disclosure of the invention.
What Are Design Patents?
Design right only applies to the shape and configuration of objects (how different parts of a design are arranged together). The design patent protects only the appearance of an article, but not its structural or functional features (eg a device in a packaging that allows for a more rapid opening). To be afforded protection, a design must:
· be new
· not be offensive
· not make use of protected emblems or flags
· not be an invention or how a product works
In the UK Design right automatically protects your design for 10 years after the design was first sold or 15 years after it was created - whichever is earliest.
In the US, a design patent has a term of 14 years from grant.
While copyright may protect artistic or literary work incorporated within the finished product, Design rights exist independently of copyright.
How Do I Apply for a Patent?
A useful starting point is to find out what can and cannot be patented. Prior searches may be conducted on the U.S Patent Office website. But to get a US patent you will need to go through a complicated application process. This is why most inventors employ the services of registered patent attorneys or patent agents from the start. Only attorneys and agents recognized by the USPTO for this practice are permitted to represent inventors before the USPTO for the purpose of applying for a patent.
The Pro Bono Program encourages the USPTO to support intellectual property law associations across the country in the establishment of pro bono programs for inventors and small businesses. The eligibility requirements vary for each program but will most of the time entail a revenue threshold.
But remember, the federal or state protections you may obtain in the US only extend throughout the United States, and does not confer protection in other countries. To secure full rights to exploit your IP in another country, you must apply for the relevant IP in that country (or via multiple filing treaty). Whether a mark can be registered in a particular country, or whether an invention is eligible for a patent, or how long you will be able to enjoy exclusive rights over those once published, will depend on the law of that country.
The adoption by the US in 2011 of the first-to-file system for patent applications (as opposed to the first to publish method) helped close part of the gap that existed between the US system and the processes in force throughout Europe. Similarly, multiple-country filings may now be envisioned for trademarks (via the Madrid Protocol) and patents (through the Patent Cooperation Treaty).
Yet, the process of harmonization remains a slow one, and major discrepancies between the level of protection afforded by IP registration and the conditions under which applications are reviewed still exist across countries.
In addition, obtaining multiple registrations in several countries does come at cost (around $80,000 should you elect to register your mark in all 143 member-states of the Madrid Protocol)
Navigating through concurrent filings, local requirements, and deciding on the extent of the protection that should be sought is something that requires both experience and know-how. Accordingly, the first step in determining whether IP protection would advance the interest of your company is to secure the services of specialized legal counsel locally.