Today’s blog post is by guest blogger Jim Ruttler, a Seattle-based intellectual property attorney and founder of Ruttler and Long PLLC.
There are four primary steps to protecting intellectual property in a business.
The first is to identify whether you have any intellectual property to protect. There are trademarks for product/service identifiers, design patents for ornamental product designs, utility patents for functional inventions, and copyrights for creative works. Typically, every business has a name, logo, or slogan that is important in identifying their products or services and distinguishing those products or services from others. These are the typical trademarks, but trademarks can also include colors, product shapes, sounds, smells, and anything else that indicates the source of products or services in the eyes of consumers. Utility patents are the traditional patent that most individuals are aware of as they are often associated with consumer goods, software applications, and mixtures. Similarly, most people are familiar with copyrights and their applicability to writings, paintings, music, movies, and other creative works. However, design patents are often overlooked. Design patents overlap trademarks, utility patents, and copyrights and are applicable to ornamental designs of existing products, such as new artistic bottle shapes, sunglasses, or even golf club heads.
Once your intellectual property rights are identified, you’ll need to make sure you actually own those intellectual property rights. The default rules are that trademarks are owned by the entity using the mark, patents are owned by the individual who conceived of the invention, and copyrights are owned by the individual who created the work of art. These default rules apply unless there is some exception, such as an assignment agreement or some other legal doctrine like Work-For-Hire. If the default rules apply and there isn’t an exception, it will be necessary to acquire those intellectual property rights.
Third, once IP is identified and rights are confirmed, it is necessary to formally register those rights. Patents require registration for protection of an invention, with a limited exception for trade secrets, and there are strict time windows for filing for patent protection. The process generally takes at least a year and is relatively expensive, but the rewards can be exceptional for deterrence and attracting investors. Trademarks don’t actually require registration for protection, but failing to register a mark that is important is extremely risky. The advantages to registration include presumptions of ownership and validity, nationwide priority in a mark, and the availability of a mark on a central database to notify others of your rights. Copyrights also do not technically require registration, but you can’t enforce your copyright unless there is registration and your damages are severely curtailed while the copyright is unregistered.
Lastly, once registration is accomplished, it is necessary to monitor the market for potential infringers and immediately address that infringement. Catching infringement early as the greatest potential for avoiding costly disputes given that it is relatively easy for new businesses to change course. Also, new businesses don’t usually have money laying around for engaging in lawsuits.
This is a high level summary of best practices, but it should assist you with providing a framework for having a meaningful conversation with your attorney and maximizing the value of your intellectual property.