YOUR IDEAS ARE INTELLECTUAL PROPERTY
While PATENTS protect
inventions (functional and design), TRADEMARKS
identify of the origin of goods and services. TRADE NAMES represent
the goodwill and reputation of a business. COPYRIGHTS protect creative
expression (artistic and literary).
The ideas with which we are concerned here are known as intellectual property. Intellectual property is a broad term which includes know-how, trade secrets or patents. Other intellectual property includes copyrights, trademarks and the like. Each type is governed by different legal requisites. Although each is unique in some aspects, all are capable of being pledged, mortgaged, assigned, sold or licensed.
The concepts of intellectual property are founded upon the recognition by the legal system, state governments, the U.S. Government and most foreign governments that endeavors which are solely intellectual constitute assets or property rights which are of value to the owner, as well as to society in general. Therefore they deserve protection similar to that given other property. Intellectual property is intangible and therefore must be embodied in a form such that the metes and bounds may be readily determined. Various legalistic rules and classifications have evolved in order to help determine ownership as well as the scope and limitations of the property. Such determinations are necessary in order to protect the rights of the owner and third parties.
Because of the purely intangible form of intellectual property rights, problems occur in determining the boundary or limits as well as the time of vesting of rights. Thus, you must adopt procedures in the day-to-day operation of your company in order to ensure that evidentiary material is available to "prove up" ownership and legally "perfect" your interest. These procedures are predicated upon fulfilling formal legal requisites which have been laid down over the years in statutes and by the courts.
Like all property, intellectual property can be stolen or lost through inattention. You must "close the barn door before the horse is gone." MEYER & ASSOCIATES, LLC can help you set up an
Intellectual Property Management System.
WHAT IS KNOW-HOW? Know-how is generally defined as technical expertise, that is, a method of operation or "tricks of the trade" which a company acquires merely by being engaged in a particular business--it need not be secret per se. The value of know-how is determined by what a third party is willing to pay in order to obtain this information from the owners, whether the information is generally available from other sources or not. Know-how is often embodied in sketches, engineering drawings, process procedures manuals and the like. The exact nature of the know-how is usually defined by a contract when know-how is sold or licensed to others.
WHAT ARE TRADE SECRETS?
A trade secret is any formula, pattern, device or compilation of information which is used in your business and gives you the opportunity to obtain an advantage over competitors who do not know of the trade secret or use it. Generally a trade secret must be maintained in secrecy and known only in the particular business in which it is used. The courts have additionally required that in order to show the status of a trade secret, reasonable measures be taken to protect the secret from unauthorized knowledge. MEYER & ASSOCIATES LLC can help you set up such a system including employee non-compete and property assignment agreements. Generally, employees' knowledge of a trade secret and knowledge of the trade secret by those pledged to secrecy will not negate the status of a trade secret.
A trade secret need not meet the requisites for patentability to receive protection, i.e. it need not be novel or unobvious. Probably, however, it does need to be useful, although this specific issue has not been the subject of recent litigation. Although it need not be novel or unobvious, a certain amount of unobviousness is required to maintain secrecy, i.e. to show that it is not generally known to others.
In one sense, trade secrets are not property since the owner has no right of exclusive use or enjoyment over those persons who innocently discover or are told a secret. The sole remedy and protection afforded a trade secret owner is against breach of faith or trust or against a reprehensible means of discovery (such as through industrial espionage).
A trade secret does have certain property aspects and can be assigned, sold and licensed. Additionally, trade secrets have traditionally been held as the property of a business entity at large, not as the property of a particular inventor (in contrast to patent rights).
MORE ABOUT PATENTS The United States Constitution established the American patent system. Utility Patents protect IDEAS. Utility patents can be obtained on devices, chemical processes, drugs, methods, software, and other inventions. Design Patents protect the aesthetic value of a design. To get a patent it is necessary that the invention be novel, useful and non-obvious. The government grants to the holder of a patent the exclusive right to exclude others from making, using or selling the device or method disclosed in a utility patent for 20 years from the date of application. Any person or business who infringes that right can be sued by the patent holder in federal court for damages and for injunctive relief. A finding of Wilful infringement permits the court to award treble damages and attorneys fees to the patent holder.
To obtain a patent an application must be filed with the Patent Office which fully and accurately discloses the background of the "art" most closely associated with the invention and must disclose "prior art" known to the patent applicant. A patent search is required before the application is prepared to determine what prior art may exist. Prior art includes any material U.S. and foreign patents, and commercial products which are related to the claims made. The best mode known to the inventor at the time of filing for making or using the invention must also be disclosed.
The heart of the application are the "Claims" which are the "metes and bounds" of the intellectual property and describe in careful detail the invention. One or more claims can be included in the application. After paying the filing fees and corresponding with a Patent Examiner to answer questions and clarify what protection is claimed, the patent will be issued unless the Patent Office decides that the invention is not novel, useful, or otherwise does not meet the statutory requisites for a patent.
Contrary to popular belief, it is not normally necessary to build a model to obtain a patent. The Patent Office ordinarily wants drawings which are necessary to describe the claimed invention.
After a patent is allowed, additional fees must be paid for issuance and thereafter maintenance fees must be paid at specified intervals to maintain the patent as active.
If you want more detailed information about Patents click to our
Patent Technical Page COPYRIGHTS
The United States Constitution also established copyright. A copyright protects the original EXPRESSION of ideas and not ideas themselves. So many people may write murder mysteries with essentially the same plot but the expression of that plot may be protected if it is original enough. An author’s copyright arises automatically and immediately when the work is created. It is not necessary to file any form or register it to own the copyright. However, registration of the copyright is necessary before a lawsuit can be filed for any infringement. There are benefits to early registration including the possibility of obtaining treble damages and attorneys fees in the event of a successful suit against an infringer. The copyright owner must also show that the case is exceptional in order to get these.
Registering a copyright is done through the U.S. Registrar of Copyrights in the Library of Congress. Use of specific forms and payment of fees are necessary. Usually copyrights are routinely issued if properly applied for.
A copyright gives exclusive rights to use the material to the owner for his or her lifetime plus 50 years.
Many people are confused about the ownership of a copyright. The owner is the creator unless he or she is an employee of a business or a contractor to another with a written agreement that the work was a "work for hire." Thus, a company does not obtain ownership of material created at their expense unless they had the foresight to make a written agreement with the right language.
Suits for copyright infringement must be brought in federal court.
If you want more technical information about Copyrights, click to our
Copyright Technical Page TRADEMARKS
YOUR COMPANY'S GOOD NAME
It has been said that while patents are good for twenty years, trademarks are forever. This statement is true only if the marks are properly used and vigilantly protected. Your company has worked hard to earn a reputation for quality. Your trademarks are the harbingers of your reputation. Properly used and protected, they will serve you well.
In today's competitive marketplace, however, your company's marks are constantly under fire. As competition becomes more intense and costs of introducing new products and services escalate, competitors may emulate your marks in order to derive the benefit of your company's reputation. It is important that your company's marks be properly used and protected to help the public distinguish your goods and services from those of the competition. This protection becomes increasingly important as imitators adopt a strategy of trading on particular established products and names to gain quick acceptance into the marketplace.
Your company spends its hard earned dollars to maintain its quality reputation, develop its products, and promote its brand names. It is good business to protect this investment by properly using your company's trademarks, calling immediate attention to infringers and participating in the generation and establishment of new and fanciful marks for emerging product lines.
The development of new products and the improvement of existing products are requisites for your company's continued growth. In order to establish and maintain the competitive edge and remain a leader in your industry, your company must constantly protect its products, reputation, and market position. Having a protected trademark encourages a company to maintain the quality of the product or products linked to the mark, as well as to promote the image of the product through advertising and other marketing techniques. Trademarks, trade names and copyrights play an important role in assuring that market position and reputation are secure from impostors and imitators.
Trademarks, or brand names, identify and distinguish your company's products from similar products of competitors. Your marks are among your most valuable assets because they "are" your company. They represent and engender in the minds of the public, and especially your customers, an aura of quality, good faith, and honest dealing.
Once a consumer has established a preference for your brand of product, he need only look for your trademark, thus short circuiting the shopping process. In essence, your marks assure, without further explanation, consistent quality and high standards of excellence.
Your trademarks and trade names are more than just assets, they truly are your "Symbols for Success". It is in the interest of everyone in your company to act as a bulwark against deterioration of your trademarks. Because of your trademarks and trade names:
1. There are thousands of sales calls you do not have to make.
2. There are thousands of letters of assurance you do not have to write.
3. There are thousands of orders you do not lose because at the last minute the customer decides, "We had better go with the brand we know".
4. The customer can distinguish you from the crowd.
5. The customer knows your reputation is on the line.
6. The customer knows standards of quality are associated with the trademark.
Aside from protecting your marks, you are in an excellent position to perpetuate your company's image by thinking up unique, fanciful and creative names for your new products.
A Trademark designates the source, origin and quality of goods. A trademark may be a fanciful name, a symbol or a combination which uniquely identifies the goods to which it is applied. A trademark may not be generic or merely descriptive. A trademark arises from use, not from registration. However, you may get some benefit from registering your "intent to use" a mark. A trademark may be protected by state common law. It may be registered on a state by state basis upon a showing that the trademark has actually been used in commerce. Finally, if used in interstate commerce, the mark may be registered on the federal level by application to the U.S. Patent and Trademark Office. The federal registration process requires an application describing the nature and history of the mark. If it is deemed by a trademark examiner to be worthy of protection, the mark is published by the government for opposition during which time others may object that the mark is confusingly similar to others used. After the opposition period and process has elapsed, the mark may be registered upon payment of a fee. Maintenance fees must be periodically be paid and affidavits of use must be filed to show that the mark is still in use. A registered mark lasts as long as it is used and not abandoned. Many states have application and approval processes which are slightly simpler than the federal process.
Trademarks may not be descriptive of the goods to which they are applied and cannot become "generic." In other words, the mark must identify the source or origin of the goods and not describe the goods themselves. Therefore, it is necessary for owners of trademarks to "police" the use of the marks and take appropriate steps to stop infringement. If this is not done, the mark may lose its value. Many trademarks have become, over time, descriptive or generic. For example, "aspirin," "shredded wheat," and "vacuum" were all once trademarks. However, over time these names came to be so closely associated with the product to which they were applied that they lost their function of describing the source or origin of the products. This explains why Xerox makes so much effort to stop people from using their mark to describe photocopying.
Suits to enforce trademark rights may often be brought in state courts but U.S. statutes also permit suits in federal courts. Suits usually seek injunctions but also may obtain damages (including all profits obtained by the infringement), attorneys fees, and, in exceptional cases, treble damages.
SERVICE MARKS
Service marks are trademarks which are applied to services rather than goods.
TRADE DRESS
The appearance of products, packaging, etc. may, with substantial use, give the consumer a trademark like understanding of the source, origin and quality of the product. This trade dress may be protected from competitors who might otherwise want to take advantage of the public understanding gained from merely looking at the product or its package. The Coca Cola Company many years ago had competitors who tried to trade on the "cola" name and tried to copy the taste of the product. In an effort to distinguish their product from all competitors, the classic coke bottle was developed with its distinctive shape, color and lettering. Few modern products have developed such identifiable trade dress but many are trying.
If you want more information on Trademarks and related matters, click to our
Trademark Technical Page.
TRADE SECRETS
Trade Secrets consist of information, not generally known, which give the owner of the trade secrets a competitive advantage in business. These are protected by state laws, usually a variation of the Uniform Trade Secrets Act. The law requires that the owner take reasonable steps to avoid the secrets from becoming public knowledge. This will usually consist of limiting access to the information, locking it up in various ways, and having "confidentiality agreements" with employees and others who do have access which limits the right to disclose or use the secrets without permission of the owner. The classic trade secret is the formula for Coca Cola. Even after more than a century, the secret remains because of strong efforts to protect it.
The unusual suit for misappropriation of trade secrets is against a former employee, a contractor, a consultant, a competitor or someone who once had access but then decided to use the secret for the benefit of a competitor.
Many states have criminal laws against the misappropriation of trade secrets and recently the United States has enacted special criminal laws punishing the theft of trade secrets, especially when those secrets are given to foreign interests