When counseling clients about their intellectual property rights, I often find they fall on a broad spectrum. This ranges from being hesitant to discuss their idea to pushing full steam ahead and entering the market prior to seeking any protection. When trying to help a client with intellectual property (IP) protection, each case can have its own set of issues. One of the challenges of acquiring IP protection is that it is deadline-driven. So certain actions or inactions by the client can result in the loss of IP protection. Below is a list of quick pointers that will inform as well as reduce any potential issues in pursuing IP protection for entrepreneurs.
There are multiple forms of IP protection including, patents, copyrights, trademarks, or trade secrets. Depending on the aspects of the idea, it may be suited for multiple types of IP protection. For example, a computer application may have aspects that are protectable under a patent and copyright. Further, the brand used to market the application could be protectable as a trademark. Entrepreneurs should also be mindful that IP protection is not limited solely to “technical” inventions. Trade secret protection should also be considered for IP involving: recipes, business methods, client lists, and the like.
After you have identified the types of IP, determine any time constraints that may impact your IP. For example, if your IP involves a patent, there is a provision referred to as the ‘on-sale bar’ (codified in 35. U.S.C § 102). The on-sale bar provides that an invention cannot be patented if it has been for sale for over one year prior to the patent filing. This means that if your product is on the market or you are pitching investors, then you have one year to file a non-provisional application to preserve any patent rights. However, some international rights may be lost because some countries require filing for rights before any public disclosure. Thus, prior to the sales meeting or public disclosure, you can file a provisional application at a reduced cost and less administrative detail. The provisional application also preserves your rights during that year period. Prior to the year period ending, a non-provisional application can be filed and tied to the provisional application, effectively preserving your patent rights.
Getting preliminary searches helps you to learn what marks or inventions are already in existence. Similarly, when purchasing a home it is advisable to get a home inspection. Without proper inspections, you may find that you are investing in a money pit. IP attorneys often hear clients say, “I know I have something special because there is nothing like it out there.” This may indeed be the case. However, a similar idea may have been pursued, but for some reason was not brought to the market. In the patent space, these previous ideas will be used to evaluate the overall novelty of your current idea. Thus, the preliminary search would identify these previous ideas and let you know how flooded the potential patent space is.
Similarly, it is advisable that you do a preliminary search for your trademark. The search can include the wordmark or the design mark. There are multiple levels of trademark searches. An initial “knockout” search may let you know if your mark is already out there at a minimal cost. Please keep in mind that the knockout search may only give you direct results related to the mark. The knockout search may not always give you all of the phonetic combinations of the mark. One remedy to avoid this situation would call for you to request a more extensive search from an IP attorney.
Symbols of federal protection serve as notice and can be placed on your IP, but only under the proper conditions. These symbols can include: Patent No., Patent Pending, ™, ®, and ©. For patents, you can place “patent pending” on your IP after an application (provisional or non-provisional) has been filed at the USPTO. If a patent has been granted on your application, you can place “Patent No, ###,###,###” on the packaging of your IP. With respect to trademarks, the ’™’ symbol can be used when the associated trademark is used in commerce. However, the ‘®’ symbol can only be used when the mark has been officially registered with the USPTO. For patents and trademarks, if the appropriate marking is not used, you risk being accused of fraud, potentially resulting in the loss of the respective IP rights. Providing notice regarding recently copyrighted materials is not as restrictive as patents and trademarks. Placing the © symbol on copyrighted material is more relevant with respect to infringement litigation because IP does not have to be registered with the Copyright Office to receive protection.
If your company created an application, you may have contracted developers to generate a webpage and/or related software. There should be some type of contractual agreement between you and the developer. In particular, the agreement needs to clearly define whether that person is an employee or a contractor. As a side point, you should treat the developers according to the contracted relationship. For example, if you contract the developer to function as an independent contractor but you treat them as an employee, a potential dispute in court may rule that they are indeed an employee. In addition, any employment contract should contain a clause indicating that any work that they do on behalf of your company will be owned by your company, regardless of whether they are an employee or an independent contractor. Consultation with an employment attorney may be needed to evaluate your employment contracts.