Intellectual Property

What is Intellectual Property?  Intellectual property consists primarily of patents, trademarks, copyrights and  trade secrets in the United States.  You may be familiar with it as the protection given to new inventions, product names and marketing slogans, written works ranging from a great novel to product brochures and fact sheets, music, art, sculpture, other creative works and the formula for Coca Cola (and other secret formulas).

Why is Intellectual Property important to my business?  There are many reasons that intellectual property could be important to your business.  On the positive side, if you have developed a new product, product name, marketing slogan or written guide to your products, you may want to obtain the protection that comes with registration and patenting.  To protect the value of your business, you may want to protect these against others who would infringe your rights.  You also might want to avoid the costs associated with picking a product or business name that infringes another party’s rights, violating the copyrights on software or other works (e.g. having more copies of office software than licenses), or infringing  on patents owned by a competitor or someone else.

How often do I need to review my intellectual property issues?  It is best to review them every time you adopt a new product name or marketing slogan, start offering a new product or service and as your business changes.  The more changes that are occurring in your business, the more frequently you should be conducting your review.  If you sell the same product under the same name and using the same marketing ideas as ten years ago, there is less urgency in conducting the review.

The Firm assists clients in identifying and protecting intellectual property assets, identifying, protecting and enforcing intellectual property rights, and in identifying and limiting exposure to potential intellectual property liabilities.  The Firm assists in establishing the processes and procedures to review and monitor the creation and use of intellectual property so that the rights in such property can be protected and potential liabilities can be avoided.

One of the tools that we use to assist clients with the identification, protection and enforcement of intellectual property assets and rights is the intellectual property audit.  Intellectual property audits are done for a number of reasons.  First, they are done when a company has not kept track of its creation and use of intellectual property and needs to obtain a better assessment and understanding of its rights and liabilities. Second, they are done when a company seeks funding either through third party investment or debt, and needs to explain its assets and liabilities to those who would invest in the company.  Third, they are done when a company is contemplating a transaction (sale, purchase, merger, joint venture) and needs to understand what rights and liabilities it brings to the table, as well as the rights and liabilities of the company with which it intends to do business.  Fourth, they are done because a third party asserts that the company is violating that third party’s intellectual property rights, and the company not only needs to know whether the assertion is correct but also wants to better understand what other intellectual property rights and liabilities it might have.  We tailor our audits to a client’s particular needs.

TYPES OF SERVICES

TRADEMARKS:  The Firm obtains and reviews trademark searches to determine the availability of proposed trademarks and to determine the extent of infringement of existing trademarks. It applies for and obtains trademark registration for clients.  It also represents clients when they seek to license a trademark for use on their product or license their trademark to others to use on products. It also provides the same services for service, certification marks and collective membership marks, all of which are sometimes just referred to as trademarks.

PATENTS:  In the United States, for an invention to be patentable, it must be new (i.e. not something you have been doing for many years), novel (sufficiently different from what has been previously done) and non-obvious (not something a person with ordinary skill in the art would think of based on available information and patents).  Moreover, there are specific bars that prevent an inventor from waiting more than a year to apply for a patent after taking certain actions such as writing or advertising it in a publication, using it in public or offering it for sale.  In many other countries, these bars are immediate (i.e. if you publish or offer for sale or publicly display the invention before applying for patent protection, you lose your right to obtain patent protection  in that country).

In our experience, there are three reasons that patents are sought.  First, if an invention is particularly profitable, a patent gives the invention owner a monopoly until either the patent expires or someone comes up with an alternative approach that is competitive both in cost and quality.  Second, a patent protects the patent owner from someone else obtaining a patent on the invention.  This is generally referred to as defensive patenting and is done because the applicant does not want someone to be able to stop them from using the invention.  Third, intellectual property in the form of patents may increase the value of a business.

We assist clients in identifying possible inventions, obtaining and reviewing searches of prior art to determine whether there is a possibility of patenting the invention, determining the scope of protection available for the invention and evaluating the possibility that someone will be able to design around the invention (i.e. duplicating the concept without infringing on the patent).  We also determine whether a claim of invalidity might be asserted against an existing patent.  We prepare patent applications and prosecute them through issuance.  We also represent clients in other patent proceedings before the United States Patent Office.

COPYRIGHTS:  Copyright protection is available to literary works, audiovisual works, motion pictures, phono-records, pictorial, graphic and sculptural works, sound recordings, and for the display and performance of such works.  The term literary works include works expressed in words, numbers or symbols including computer programs, and the term audiovisual works is not limited by the type of media that the work is stored on or in.  Since March, 1989, copyright protection has not required registration, but the United States provides significant incentives and additional protection for copyright owners who register their works and thus it makes sense to obtain such registration if there is a concern about infringement by others. We assist clients in determining what works warrant registration, how frequently to obtain additional registrations and prosecuting such registrations.  We also represent clients when a claim of infringement has been asserted against the client and when the client needs to assert such claims against others.

TRADE SECRETS:  Keep it secret and thus keep it safe has long been the mantra of those advocating for trade secret protection.  While trade secret protection is sometimes the most appropriate form of protection to employ, it is full of traps for the unwary.  Physical security comes first and starts at the door.  In some circumstances, it may require searching of incoming and outgoing containers such as briefcases and pocketbooks.  Physical security should also include scrutiny of electronic transmissions in and out of a facility, and particularly those that have attachments.  It may also be necessary to secure files so that they cannot be uploaded to another website.  Contractual protection is the second requirement.  Agreements with all employees, business partners, vendors and customers  who have access to the trade secrets is critical, because it gives you a contractual basis to stop them from disclosing or using the trade secrets on the side and after the end their relationship with you.

WEBSITES AND SOFTWARE:  Websites and software deserve special mention, because both often involve several of the types of intellectual property discussed above and sometimes can have issues with all of the types of intellectual property.  Websites and software are at the core of many businesses.  Websites are used for marketing and sometimes sales.  Software is used to monitor and perform critical aspects of the business.

There are many layers of intellectual property issues associated with websites.  It starts with patents that have been issued for certain processes used on websites (e.g. checkout processes for on line ordering).  Websites tend to make company names, product names and other marketing names and slogans much more visible.  For companies that have not taken steps to assure themselves that the names and slogans are not infringing the rights of registered trademark owners, the creation of a website can result in a cease and desist letter from the owners of registered trademarks as well as a claim for damages.  The source and originality of content used on a website is also a concern. If a company has borrowed content from other businesses websites or printed materials, display of that content may trigger a cease and desist letter, as well as a claim for damages.  When obtaining content from others to use on a website, it is important to make sure the party you are dealing with has the right to use and license that content.  If content for a website is created for you by third parties, you need to have appropriate agreements in place to provide you with ownership of that content.  We assist clients with all of these issues and many more associated with websites and the use of software.

We also represent software developers with respect to the protection and licensing of computer software.  While patents, copyrights, trade secrets and trademarks may all be used to protect software, copyright and trade secret protection are the most common.  One can obtain copyright registration without revealing all of the source code of the software, which makes it possible for copyright protection and trade secret protection to both be used to protect software.  Patents are used to protect the process embodied in particular software when the process meets the other criteria for obtaining a patent.  For all types of software, license agreements are a critical part of the protection scheme, regardless of whether you are providing software as a downloadable product, or as a service over the internet using an ASP, SAAS or other model.  The Firm has experience in all forms of software licensing and more than thirty years of experience representing both licensors and licensees.