Intellectual Property

(Image of Tracy Jong's Logo)

There are several types of Intellectual Property.  What are you seeking to protect?

Patent

Are you protecting an inventive concept? A utility patent can protect a product, a manufacturing process, a business method, an intermediate product, a component, an improvement of a process or component, an apparatus used to produce a product, electronic business processes and other novel things.

Are you protecting a product design that attracts consumers or that helps consumers identify your brand of product? A design patent protects novel designs that are primarily ornamental rather than functional.

When a patent is granted by the United States Patent and Trademark Office, the patent right conferred is the right to exclude others from making, using, offering for sale, or selling the invention in the Untied States or importing the invention into the United States for the term of the patent (generally around 20 years from filing the application for utility patents and 14 years from issuance for design patents). The Patent Office grants this limited monopoly in exchange for disclosure of the technology behind the innovations in the invention. Patent protection must be applied for in every country where protection is sought because the exclusive right granted by each government is only enforceable within the territorial limits of the granting government and the jurisdictional limits of its courts.

Some reasons you may find patent rights valuable

  • Exclusive rights help secure business loans, grants, and investors
  • Competitors, especially larger businesses, may be able to copy your invention and beat your prices
  • Significant R & D costs may be recovered by the exclusive market
  • Patents protect against independently invented apparatus or processes

Trademark

Are you protecting your trade name, brand name, clever slogan or logo? Are you protecting your trade dress (packaging and product design)? A trademark or service mark is a name, symbol, or logo that is applied to a product or service that distinguishes it from other products or services.

When a trademark or service mark registration is granted by the United States Patent and Trademark Office, the right conferred is the right to exclude others from using the mark in commerce in the product or service group where registration has been granted. A trademark or service mark protects words, slogans, names, symbols, logos, sounds, scents, and colors that distinguish goods and services from those manufactured or sold by others. A mark indicates the source of the goods (although the consumer does not need to know the actual source). Trademarks and service marks can be renewed forever as long as they are being used in commerce. State law and common law afford some protection to trademarks that are not registered, however, there are very significant advantages to federal registration. Trademark and service mark protection must be applied for in every country where protection is sought because the exclusive right granted by each government is only enforceable within the territorial limits of the granting government and the jurisdictional limits of its courts.

Copyright

Are you protecting a software program, a cartoon, a song, a literary work, artistic work, a sound, a smell, a photograph or digital graphic work? A copyright protects the form of expression of a creator against copying.  Literary (including computer programs, websites and databases), dramatic, musical and artistic works are included within the protection of U.S. copyright law. It does not protect the idea or concept, only the way it is expressed. For example, a computer software algorithm would need patent protection while the expression of the algorithm in code language would receive copyright protection.  Some computer programs receive copyright protection while maintaining the proprietary program as trade secret.

When a copyright registration is granted by the United States Copyright Office (not the Patent and Trademark Office, but the Library of Congress) to authors of original works of authorship, the form of expression is protected against use by others. State law and common law afford some protection to copyrights that are not registered, however, there are very significant advantages to federal registration. Some foreign countries will grant copyright protection to foreign authors, while others may not grant such rights.

Trade Secret

Trade secret is a secret that cannot be discovered without improper means which has economic value by virtue of its secrecy.  This may be a secret manufacturing process, product formula or even a recipe. A trade secret requires secrecy.  You may be surprised to learn that reverse-engineering is a proper means!

Trade secret is sometimes hard to define, but we generally know what one is from "gut instinct." The Restatement of Torts defines a trade secret as "a trade secret may consist of any formula, pattern, devise or compilation of information which is used in one's business, and which gives him an advantage over competitors who do not know or use it." The Uniform Trade Secret Act defines a trade secret as "information, including a formula, patterns, compilation, program, device, method, technique, or process, that (i) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means, by other persons who can obtain some economic value from its disclosure or use, and (ii) is the subject of efforts that are reasonable under the circumstances to maintain secrecy."

How long does patent, trademark or copyright protection last?

A U.S. utility patent is granted for 20 years from the date the patent application is filed or 17 years from issuance whichever is longer. Periodic maintenance fees must be timely paid. U.S. trademarks can last forever, as long as the trademark is used in commerce, samples are provided to the Trademark Office every 5 years and the mark defended against infringement from competitor's. For works created after January 1, 1978, copyrights last for 70 years after the death of their owner. For works made for hire, the copyright lasts for a term of 95 years from the year of its first publication or a term of 120 years from the year of its creation, whichever expires first.

How to Protect Proprietary Information

Companies should audit themselves, or engage a firm/consultant like our office, to review the company's policies and practices with respect to protecting proprietary information.  An intellectual property audit often reveals how company practices can be improved to maximize protection of intellectual property. For example, inquiries should be made including:

Do you have unambiguous written employment contracts with your employees and consultants?  Consider written employment contracts for management, consultants, R & D personnel and other key employees.  Consider confidentiality provisions, assignment of invention provisions, work for hire provisions, and Non-competition provisions.

Do you have policies in place to protect your intellectual property assets?

Do you regularly use confidentiality agreements with third parties?

Do you have appropriate physical and electronic security measures in place?  Consider practices such as paper shredders, passwords and network security for computers, limited outsider access to premises, and employee policies covering clean desk policies, no removal of corporate property from premises, internet use, and moonlighting.

Are you using your confidentiality agreements correctly?  Most standard agreements require marking files confidential when transmitted to third parties and sending written summary of oral discussions of confidential information.

Protecting Proprietary Software

Computer software inventions are of particular interest to many businesses. Businesses often hire employees or consultants to write custom software applications to accommodate their business operations and provide a marketing, cost efficiency or other competitive advantage.

Potential protection available for software includes patent, copyright, trademark, trade secret, interference with prospective economic advantage, and breach of contract: employment or confidentiality agreement.

Software inventions have potentially patentable subject matter with business method patents for software algorithms. Software inventions also have potentially copyrightable material in the code expression of the algorithm.  Software inventions may also have potentially trademark-able aspects including domain names, brand names for products, and insignia that has a source identifying function for the customer.

Software inventions may themselves be maintained as a trade secret, and may also contain trade secret data in their data bases. Although this is not intended to be an exhaustive list, trade secrets are  things generally not available to the public such as unpatented algorithms, unregistered software code, customer lists, supplier lists, business plans, pricing and marketing information, and testing data.

In some cases, software inventions may enjoy potential tort protection under unfair competition law and interference with prospective economic advantage (inducing third party breach on contract or unfairly diverting anticipated market share).

In some cases, software inventions may enjoy potential contract protection in the way of confidentiality agreements, non-competition agreements, and employment agreements.

Legal Enforcement of Proprietary Rights in Software

If you have an accrued claim, this information can be used to decide on a strategy for enforcing your rights. Even better, this information can be used to decide on a strategy for protecting your intellectual property rights prospectively – choose the protection that best suits your enforcement strategy.

Causes of Action

Let’s look at what each side would need to prove in court to prevail under each of these theories:

Patent infringement

Claim

Defense
  • Accused product meets each element of patent claim
  • If more than 6 years since cause of action arose, must show delay was not undue or prejudicial
  • Patent is invalid or unenforceable
  • Traditional affirmative defenses also available
  • Patent infringement defenses
  • Invention was anticipated by prior art
  • Invention was obvious in light of prior art
  • Best mode requirement not met
  • Enablement requirement not met
  • Inequitable conduct in patent prosecution

Copyright infringement

Claim

Defense
  • Accused work was copied from claimant’s original work
  • Work was registered, if applicable, or work was valid if not registered
  • There will be an inference of copying with access and substantial similarity
  • Work is not valid or not registered
  • Copying constituted fair use
  • Traditional affirmative defenses also available

Trademark infringement

Claim

Defense
  • Substantial likelihood of confusion between claimant’s mark and accused mark
  • If suggestive mark, that secondary meaning has attached
  • Abandonment of mark
  • Accused has prior right of use of mark
  • Accused use is fair use
  • Mark is generic or otherwise unprotectable
  • Traditional affirmative defenses also available

Trade Secret Misappropriation

Claim

Defense
  • Target has misappropriated information
  • Information meets the definition of trade secret
  • Claimant’s information is in the public domain
  • Traditional affirmative defenses also available

Interference with Prospective Economic Advantage

Claim

Defense
  • Target wrongfully interfered with reasonable prospect of economic benefit
  • The challenged conduct was privileged such as bona fide competition
  • Traditional affirmative defenses also available

Breach of contract

Claim

Defense
  • Contract existed(e.g., employment contract or confidentiality agreement)
  • Claimant performed all of its obligations
  • Target’s obligation to perform is presently due
  • Target has failed to perform (breached)
  • Performance was discharged by claimant’s conduct (e.g., claimant’s breach)
  • Traditional affirmative defenses also available

Other potential causes of action include unfair competition, breach of fiduciary duty, unjust enrichment, conversion, tortious interference with a contract.

Tracy Jong can assist you in the following areas:

Patent, trademark, copyright, trade secrets, licensing and technology transfer, intellectual property counseling and new business formation.