How Do I Protect My Idea? Patents Revisited

Protect My Idea

You have a brilliant idea. With all your might, you are making it grow. You nurture it with your time, your energy, your hopes, your sweat, your dollars and your dreams.

This idea? Its time has arrived.

When you have put so much creativity, time and energy into something, you want to know that it is as well-protected as possible. My job as your attorney is to help you with the “how.” Sometimes, you know what kind of protection will work best for your idea. Sometimes, you don’t, or you aren’t sure which of your options is the best. This four-part series is a brief introduction to the various types of intellectual property. This is an updated version of the Patents post.

Patents are perhaps the most often-requested type of intellectual property protection; ironically, they can also be the least practical for many creators. Patents protect only a very limited scope of intellectual property:

Inventions and discoveries that are: 1) novel; 2) non-obvious; and 3) useful.

The only way to obtain patent protection is to apply for federal registration. The U.S. Patent and Trademark Office (PTO) will examine your patent application, and if it is found lacking in any of the three factors listed above, it will not register. Each of the three factors is a term of art. Although you may represent yourself in applying for a patent, an attorney’s guidance is often helpful in determining whether your invention or discovery meets the three-part test. Only a registered patent attorney or patent agent may act on your behalf in applying for a patent. Obtaining patent protection can be expensive, generally in the neighborhood of $10,000 between PTO fees and attorney fees, and after that, you have to make regular payments to the PTO to maintain it. If you have the right kind of invention or discovery, though, it can be worth every penny to get that registration.

Individuals considering patent protection should generally avoid sharing the invention or discovery with anyone, at least without a non-disclosure agreement in place. Publicly disclosing a patentable idea can destroy the chances of obtaining a patent in many foreign jurisdictions; and in the United States, it starts a one-year clock ticking on filing a patent application. After that one year is up, it will no longer be possible to obtain U.S. patent protection. In general, it is a good idea to keep an invention under wraps until you have had an opportunity to consult with an attorney about how best to protect it.

The major benefit of obtaining patent registration is that it grants you a monopoly on “making, using, offering for sale, or selling” the patented item for twenty years, even for personal use and even if the other party independently created it. That is a greater degree of protection, though a much shorter duration, than any other type of intellectual property.

The major drawback of obtaining patent registration is that you must publish your patent, so when your monopoly ends at the 20-year mark, everyone else knows how to make your formerly-patented item. If the patented material is still commercially viable at that point, you will have a lot of competition, though you will have a substantial head-start in the marketplace. If your branding is good, you may be able to continue to dominate for years to come. For further information, check out another kind of intellectual property, trademarks.

Further Reading

Patent section of the PTO website: http://www.uspto.gov/patents/index.jsp

How Do I Protect My Idea? Part IV: Trade Secrets

Internet Law - Trade Secret - Protect My Idea

You have a brilliant idea. With all your might, you are making it grow. You nurture it with your time, your energy, your hopes, your sweat, your dollars and your dreams.

This idea? Its time has arrived.

When you have put so much creativity, time and energy into something, you want to know that it is as well-protected as possible. My job as your attorney is to help you with the “how.” Sometimes, you know what kind of protection will work best for your idea. Sometimes, you don’t, or you aren’t sure which of your options is the best. This four-part series is a brief introduction to the various types of intellectual property. Today’s topic: trade secrets.

Trade secrets are often ignored in the excitement surrounding the federally registrable types of intellectual property, but this is a mistake. Trade secrets can be among the more versatile types of protection, and are the only way to protect ideas, as opposed to the expression or physical embodiment of those ideas. Trade secrets protect:

Information and/or ideas that: 1) have actual or potential economic value if they are kept secret; 2) cannot be easily ascertained by others who are using proper means; 3) are minimally novel; and 4) are the subject of reasonable efforts to maintain them as secret.

Trade secrets are an excellent choice for protecting an invention or discovery that does not meet the rigorous novelty standards of patent law, so long as it is not easy to reverse-engineer. They are also ideal for certain types of software, tests, recipes, and other intellectual property that is possible to keep secret.

How does one obtain trademark protection? It is simple enough in theory: all you need to do is keep the material secret using reasonable efforts. However, what constitutes reasonable efforts varies depending on the nature of the secret and the size of the company. In general, protection involves legal safeguards such as nondisclosure agreements and physical safeguards such as locks. Maintenance is also facially straightforward: continue to keep the material secret, and take action against anyone who threatens to reveal it (e.g., get an injunction). You should consult with an attorney about how best to protect and maintain your trade secrets and what to include in your nondisclosure agreement.

The greatest benefit of trade secret protection is that it is the only way to protect certain types of intellectual property, such as ideas or inventions that are not sufficiently novel to obtain patent protection. Trade secret protection can be combined with copyright or patent protection (at least until the point of patent registration). Trade secrets can also last indefinitely; the recipe for Coca-Cola, for example, has been maintained as a trade secret for over one hundred years.

The greatest drawback of trade secrets is that they are destroyed by being revealed. There are some remedies for this, but an unhappy former employee has the potential to do a great deal of damage to a company whose most important intellectual property is protected by trade secrets.

Well-known intellectual property protected as a trade secret includes the formula for Coca-Cola and the recipe for Thomas English Muffins’ “nooks and crannies.”

How Do I Protect My Idea? Part III: Copyright

Intellectual Property - Copyright

You have a brilliant idea. With all your might, you are making it grow. You nurture it with your time, your energy, your hopes, your sweat, your dollars and your dreams.

This idea? Its time has arrived.

When you have put so much creativity, time and energy into something, you want to know that it is as well-protected as possible. My job as your attorney is to help you with the “how.” Sometimes, you know what kind of protection will work best for your idea. Sometimes, you don’t, or you aren’t sure which of your options is the best. This four-part series is a brief introduction to the various types of intellectual property. Today’s topic: copyright.

Copyright protects creative works fixed in a tangible medium of expression. This includes everything from books to sculptures to video games. Copyright exists at common law at the moment of creation: that is, as soon as the work has been written, recorded, or otherwise memorialized. An unrecorded musical improvisation, for example, is not protected by copyright law. Copyrighted material can be federally registered for additional protections, such as statutory damages, and to help others who might want to obtain your permission to use your work to find you.

Copyright is unique among intellectual property types in that, under current law, it requires no maintenance. It is possible to enforce your rights in copyrighted material through a variety of mechanisms such as demand letters, DMCA take-down notices, and law suits (generally a last recourse).

There are many benefits to copyright protection. Copyrights are relatively cheap to register, as compared to other types of intellectual property. It is free to obtain copyright protection at common law because it exists inherently in any creative work fixed in a tangible medium of expression (i.e., as soon as you have written or otherwise made your idea into something others can access at a later date). Copyright protection also has an unusually long duration. The duration of the protection varies depending on who created the work, but it will always be a minimum of 50 years.

There are also many drawbacks to copyright protection. Copyright law does not protect ideas, only the expression of those ideas. For example, the idea of a novel about a young orphan discovering that he is a wizard and going to a special school for wizards is not protected by copyright law; but the Harry Potter books themselves most certainly are. Another drawback is that fair use (use for certain purposes specified by the Copyright Act) and independent creation (creating the exact same work without having access or reference to the original, which can be difficult to prove) are defenses to copyright infringement charges. Finally, to register copyrighted material, you must deposit a copy of the work with the Copyright Office, and that copy is then part of the public record. There are procedures for registration of works that cannot be revealed to the public, such as standardized tests or trade secret material, but these are special exceptions to the registration rule.

Further Reading

Copyright Office website: http://copyright.gov/

How Do I Protect My Idea? Part II: Trademarks and Service Marks

Protect My Idea - Trademark

You have a brilliant idea. With all your might, you are making it grow. You nurture it with your time, your energy, your hopes, your sweat, your dollars and your dreams.

This idea? Its time has arrived.

When you have put so much creativity, time and energy into something, you want to know that it is as well-protected as possible. My job as your attorney is to help you with the “how.” Sometimes, you know what kind of protection will work best for your idea. Sometimes, you don’t, or you aren’t sure which of your options is the best. This four-part series is a brief introduction to the various types of intellectual property. Today’s topic: trademarks and service marks.

A trademark (for products) or a service mark (for services) is something that identifies the source of a product or service. A mark (meaning either a trademark or service mark) may be a word, design, color, scent, or sound. However, it cannot be useful (referred to in trademark lingo as “functional”) in referring to the product or service whose source it is identifying. This is to prevent someone from removing a term or other identifier essential to selling a good or service from the marketplace—for example, you could not register a cylindrical shape as a trademark (trade dress) for a wheel. It would prevent anyone else from competing with you.

Rights in a mark can be obtained merely by using the mark in association with the sale of goods and services—this gives you rights in the mark at common law. You need not do more than this; however, there are many limitations to common law use, not the least of which is that it can be difficult to prove that you have the rights you claim. To show that you have common-law ownership of a mark, it may be necessary to demonstrate advertising over time and to show that consumers associate your company with the mark through surveys in the relevant geographical area. It is much simpler to obtain a registered mark, which grants rights throughout the state of registration or, for federal registration, throughout the United States. Other benefits of federal registration include being allowed to use the ® symbol; having a legal presumption of ownership nationwide; having the exclusive right to use the mark on or in connection with the goods or services set forth in the registration throughout the U.S.; and having your trademark visible in the fully searchable PTO database of registered trademarks, which can often deter would-be infringers.

Marks do require some maintenance. Most importantly, a mark must be used consistently in connection with the product or service that you are selling. If your mark is protected only at common law, this is all that you must do. If your mark is registered in your state, it will need to be renewed periodically; you should consult your state’s registration authority (usually the Secretary of State). If your mark is federally registered with the PTO, a Statement of Use must be filed between the fifth and sixth year following registration, and the mark must be renewed every ten years. There are small fees associated with these actions.

The greatest benefit of having a trademark is that no one else can use your mark (or a confusingly similar mark) for the same or similar goods and services within the protected geographic area. If you have elected to protect your mark only by common law use, that geographic area is limited to the places where the mark is in use and widely enough recognized to be a source identifier. If you have registered your mark with your state, that geographic area is limited to the state of registration. If you have registered your mark federally with the PTO, that geographic area is throughout the U.S. It is also possible to register trademarks in other countries, many of which do not have any common-law use, so if you wish to use and protect a mark in a foreign country, you should speak with an attorney.

The greatest drawback to having a trademark is that if you do not search carefully enough before adopting it, you may find that someone else is already using it and you are an infringer. If you are infringing on someone else’s mark, you may be forced to change your mark and lose any goodwill you have built up in it.

Further Reading

Trademark section of the PTO website: http://www.uspto.gov/trademarks/index.jsp

How Do I Protect My Idea? Part I: Patents

Protect My Idea

You have a brilliant idea. With all your might, you are making it grow. You nurture it with your time, your energy, your hopes, your sweat, your dollars and your dreams.

This idea? Its time has arrived.

When you have put so much creativity, time and energy into something, you want to know that it is as well-protected as possible. My job as your attorney is to help you with the “how.” Sometimes, you know what kind of protection will work best for your idea. Sometimes, you don’t, or you aren’t sure which of your options is the best. This four-part series is a brief introduction to the various types of intellectual property. Today’s topic: patents.

Patents are perhaps the most often-requested type of protection; ironically, they can also be the least practical for most creators. Patents protect only a very limited scope of intellectual property:

Inventions and discoveries that are: 1) novel; 2) non-obvious; and 3) useful.

The only way to obtain patent protection is to apply for federal registration. The U.S. Patent and Trademark Office (PTO) will examine your patent application, and if it is found lacking in any of the three factors listed above, it will not register. Each of the three factors is a term of art. Although you may represent yourself in applying for a patent, an attorney’s guidance is often helpful in determining whether your invention or discovery meets the three-part test. Only a registered patent attorney may act on your behalf in applying for a patent. Obtaining patent protection can be expensive, generally in the neighborhood of $10,000 between PTO fees and attorney fees, and after that, you have to make regular payments to the PTO to maintain it. If you have the right kind of invention or discovery, though, it can be worth every penny to get that registration.

The major benefit of obtaining patent registration is that it grants you a monopoly on “making, using, offering for sale, or selling” the patented item for twenty years, even for personal use and even if the other party independently created it. That is a greater degree of protection, though a much shorter duration, than any other type of intellectual property.

The major drawback of obtaining patent registration is that you must publish your patent, so when your monopoly ends at the 20-year mark, everyone else knows how to make your formerly-patented item. If the patented material is still commercially viable at that point, you will have a lot of competition, though you will have a substantial head-start in the marketplace. If your branding is good, you may be able to continue to dominate for years to come. This brings us to our next type of intellectual property, trademarks.

Further Reading

Patent section of the PTO website: http://www.uspto.gov/patents/index.jsp