(PART OF AN ON-GOING INTELLECTUAL PROPERTY SERIES FOR BUSINESS OWNERS)
Business Owners know that Intellectual Property (IP) and Technology are daily realties and aspects in our modern business world today. Each Business Owner needs to be aware of what IP is and the different forms of protections available to ensure it has obtained the proper protections for its business and also, does not risk infringing or misappropriating a third party’s IP rights. The following Top Ten List provides Business Owners basics on what IP is and what protections are available.
DO YOU KNOW YOUR INTELLECTUAL PROPERTY BASICS?
IS YOUR INTELLECTUAL PROPERTY PROTECTED?
1.) IP Rights are Intangible Rights and Most are Created by Statute. These are unlike personal tangible property rights that can be touched and seen and most IP rights are created by statute. Established Areas of IP Law: Copyright, Trademark (may also be referred to as service marks), Patent, and Trade Secrets.
2.) Two General Classes of IP Rights Exist: (i) “Hard” IP rights, which is a category protected by legislation and registrations (Patents, Trademarks and Copyrights); and (ii) “Soft” IP rights, which is a category protected by some legislation and not by registration but through Confidentiality Agreements and company procedural policies with agreements and processes to protect the rights (Confidential Information, Trade Secrets and Know-how).
3.) IP is Found in all Forms of Technology, Software, and Multi-media Products. Different technologies and multimedia products may incorporate different types of IP and it is important for a Business Owner to be able to recognize the different IP involved.
4.) Patents. A Patent gives the owner the exclusive right to manufacture, use and sell the invention claimed in the patent with the ability to prevent others from doing the same (most exclusive of all IP rights – protects the ideas in the invention and not just the expression and even protects against independent development). Patentable Subject Matter: New and Useful Art, Process, Machine, Manufacture or composition of Matter, or Improvement; Novelty; Non-Obviousness; Utility. The term of a Patent is 20 years from the earliest application filing date of which the Patent was granted. Since Patents eventually become public, some businesses may choose not to Patent (disclose to the public) but maintain the IP as a Trade Secret instead.
5.) Trademark Rights (Service Mark Rights). A Trademark (or Service Mark) is any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods (or services with a Service Mark) of one owner, manufacturer or seller from those of another and to indicate the source of the goods. If registered with the USPTO, a Trademark gives the owner the exclusive right to the use the Trademark in the US with respect to goods and services associated with it, including the right to prevent others from using the same or confusingly similar marks. Registering your Trademark with the USPTO provides a number of benefits to a Business Owner such as the statutory presumption that the mark is valid, the exclusive right to use the mark and the registration provides constructive notice of ownership. If registered, registrations may be renewed indefinitely with continued use of the mark. If not registered, common law rights do exist to the owner of the mark.
6.) Copyright. Copyright gives its owner the sole right to produce or reproduce the protected work. Copyright can exist in any original literary, artistic, musical or dramatic work, or any substantial part thereof, in any material form whatsoever. The Copyright arises automatically upon creation of the work as no registration is required (but registration does offer some limited presumptions of validity in the event of litigation). Under Copyright Law, a number of related and more specific rights exist with the right to authorize others to do any of these rights (usually through a license agreement).
7.) Trade Secrets. A Trade Secret is considered to be information that is actually secret in an objective sense and provides value to a company. The benefit of a Trade Secret is that it does not expire. A Trade Secret needs to be very closely held within a company and protected to ensure it is actually a Trade Secret and does not get into the hands a third party (without protections) or become public information.
8.) Confidential Information (or Proprietary Information). Confidential or Proprietary Information may not necessarily be known only to the owner but may be a compilation of information that has been collected by a company through expenditure of time and resources and therefore, has value without being inherently “secret”. Confidential and Proprietary Information is protected with NDAs, Confidentiality Agreements, and Protection of Proprietary Information Agreements.
9.) Know-how and Residuals. Know-how and Residuals may be a subset of Trade Secrets or Confidential Information and are often licensed concurrently with other IP Rights, including with Patent Rights.
10.) Business Owners Should Make Sure the Following are Done/Considered for Their Business: (i) Identify very carefully the IP rights that you may have or that you are using and/or licensing; and (ii) Always, consider the following: (a) How are you protecting your IP?; (b) What protections do you need to implement and what practices should you begin doing now?; and (c) How can yours or a third party’s IP be used along with the limitations required for such use.
AN UNDERSTANDING OF INTELLECTUAL PROPERTY WILL ASSIST IN PROTECTING THE BUSINESS’ ASSETS AND WILL ENSURE THAT THE BUSINESS IS NOT POTENTIALLY INFRINGING, USING WITHOUT AUTHORIZATION, OR MISAPPROPRIATING THE IP OF A THIRD PARTY.
In conclusion, Business Owners should keep in mind the importance of understanding IP to ensure their business’ assets are protected (registering where appropriate and necessary and using the necessary contracts and license agreement as your valuable tools to protect your assets and rights for your business) and to ensure that the business is not potentially infringing, using without authorization, or misappropriating the IP of a third party. Business Owners’ IP, contracts and templates should be reviewed by lawyers on a regular basis to ensure that the necessary protections and registrations have been obtained for the Business and the contracts contain the important protections and comply with and are in accordance with the most current applicable law. Waltz, Palmer & Dawson’s IP and Business Transaction Lawyers can assist with this to ensure you are protecting your business in the most beneficial and optimal way.
PLEASE LOOK FORWARD TO FUTURE ARTICLES ON THE TOPIC OF IP and LICENSING COMING TO YOU SOON ON THIS WEBSITE FROM WALTZ, PALMER & DAWSON, LLC
Should you have any questions about IP law and protections, including licensing, please contact Waltz, Palmer & Dawson, LLC at (847) 253-8800.
Waltz, Palmer & Dawson, LLC is a full-service law firm with various areas of service to assist your business, including: Employment Law, Intellectual Property, Commercial Real Estate, Business Immigration, Litigation and general Business Law services. Individual services include Estate Planning, Wills and Trusts, Probate, Guardianship, Divorce and Family Law.
BIBLIOGRAPHY and On-Line Sources: (04/03/17): http://www.inc.com/encyclopedia/licensing-agreements.html;Frost, Charles. “Good Business Means Protecting Your Intellectual Property.” Pipeline & Gas Journal. May 2005; https://www.copyright.gov/circs/circ01.pdf, Copy Right Basics by The United States Copyright Office; https://www.axley.com/publication_article/a-very-brief-summary-of-copyright-law/; https://www.copyright.gov/circs/circ01.pdf; https://www.lib.purdue.edu/uco/CopyrightBasics; http://www.bitlaw.com/copyright/license.html.
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