We’ve discussed the different categories of IP, and hopefully intellectual property isn’t as mysterious as it may have seemed.
But now what? As someone in charge of your company’s innovation strategy, what are the actual steps you need to take?
In general, the problem is that it’s hard to find a single resource that outlines what to do in all of the different categories of intellectual property. That’s why I’m writing this article.
It turns out the different categories of IP are handled differently, both in how you go about securing the rights and in how long the rights remain in effect. Let’s go through each category and briefly outline how to deal with it.
1. Copyright Protection
To obtain rights under US Copyright law, the first thing you have to do is record your work in a “tangible medium.” That can be on paper, film, saved digitally, as a recording, etc. Just doing that automatically grants you some rights. To obtain full rights, however, you’re required to register your work with the US Copyright Office. Certain deadlines apply, so you’ll want to contact an attorney fairly quickly. Copyright rights last many, many decades.
2. Trademark Protection
Similar to Copyright, limited Trademark rights are obtained automatically as soon as you start using your mark in commerce. Basically, you’ll have rights in the limited geographical area where you sell goods under your trademark, assuming you’re the first one to use it there. Obtaining full rights throughout the US will require you to register your mark with the Trademark Office. To do that, you file an application, which then gets reviewed by a Trademark Examiner. The Examiner will check to see if your mark is confusingly similar to someone else’s. If it looks clear, you’ll be registered. That means you can (and should) put the little ® next to your trademark. Trademarks are essentially registered on a first-come-first-served basis, so you’ll want to apply as soon as you can. You may want to consider filing before you’re actually using your mark in commerce. To do that, you file what’s known as an “intent to use” or ITU application. Once your mark is registered, your rights last as long as you use the mark and pay maintenance fees.
3. Patent Protection
Unlike Copyright and Trademark, there are absolutely no automatic rights under Patent Law. In fact, you may lose potential rights as soon as you make the invention public or offer it for sale. Various deadlines apply, and it’s kind of a race: the first inventor to file an application at the Patent Office will be entitled to any resulting patent. To obtain a US patent, you must file a “nonprovisional” patent application, and have the application examined by the Patent Office. A less formal “provisional” application can be filed to hold your place for up to twelve months, but the nonprovisional version will still be required if you want to actually go through the examination process and obtain any patent rights. Once granted, your rights under a patent will generally last 20 years from the filing date, subject to maintenance fees. Patents and patent strategy can be highly complicated and nonintuitive. I would highly recommend contacting a registered US patent attorney to help you with the process.
4. Trade Secret Protection
Trade secret rights are automatic, as long as you use reasonable means to keep the information secret. Those means should be well-documented and enforced throughout your company. Trade Secret rights can last forever, as long as the secret remains a secret.
That’s all there is to it! Actually, I’ve simplified and generalized quite a bit, but I hope this can serve as a sort of starting point as you decide how to move forward. Let me know if you have any questions.
Photo © 2014 Dave Bourgeau (Crater Lake, Oregon)
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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.