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Intellectual Property


Is your critical intellectual property protected? Are you unwittingly infringing on someone else’s intellectual property rights?

Intellectual property, or “IP,” is often the most valuable asset of a new or growing company – sometimes by far! But many companies haven’t protected their IP through trademark or copyright registrations, or worse, they may have unintentionally created IP that infringes a third party’s IP rights. We see these scenarios all the time – and can help determine your biggest risks and how to mitigate them.

Protecting your IP is crucial for individuals and businesses to safeguard their innovative ideas, creations, and inventions. There are two major risks in this area: your IP may infringe on another party’s, or a third party may use IP that is similar to yours, causing confusion in the marketplace that dilutes your brand. 

Below, we’ll discuss the different “types” of IP, as well as the best way to safeguard your own IP and avoid infringing on others’ ideas or creations.

The Different Types of IP – and Why It Matters for Your Business

The three most common “registrable” types of IP are trademarks, copyrights, and patents. Although most business owners have heard of these terms, many don’t know how they differ. Let’s dive into what each protects, how long they last, and how they get registered:

Trademarks

  • What they protect: Trademarks protect symbols, names, slogans, and other distinctive identifiers used to represent goods or services. A trademark could even protect a color or sound if it was distinctive enough to be associated with the relevant brand (for example, the famous Tiffany Blue is trademarked). Trademarks safeguard brand identity and consumer recognition.
  • Duration: Trademarks can be renewed indefinitely as long as they are in use and their maintenance fees are paid.
  • Registration process: Trademarks are registered with the government, and apply to specific classes of goods or services.

Copyrights

  • What they protect: Copyrights protect original works of authorship, such as literature, music, art, photographs, and software. They grant the creator exclusive rights to reproduce, distribute, and display the work.
  • Duration: Copyrights typically last for the author’s lifetime plus 70 years.
  • Registration process: Copyrights are automatically granted upon the creation and fixation of a work. However, registering with the copyright office provides additional legal benefits, including the ability to sue for statutory damages and attorney’s fees in case of infringement.

Patents

  • What they protect: Patents protect new, useful, and non-obvious inventions, processes, machines, articles of manufacture, or compositions of matter. They grant the inventor exclusive rights to make, use, and sell the invention.
  • Duration: Patents typically last for 20 years from the date of filing, after which the invention becomes public domain.
  • Registration process: Patents require a formal application process and examination by the government patent office. The application may be subject to rigorous review.

In summary: trademarks protect branding elements, copyrights protect creative works, and patents protect new inventions. Each type of IP serves a different purpose and offers distinct legal protections for creators and innovators.

Trademarks

Obtaining and maintaining a trademark registration involves a series of steps to protect your brand identity. Here’s an overview of the process for obtaining and maintaining a trademark registration in the United States; the process varies by country, so be sure to consult with a qualified attorney before embarking on your own trademark journey:

  • Preliminary search: Before applying for a trademark, it’s critical that you conduct a comprehensive search to ensure that your desired trademark is unique and not already in use by others. You can use online databases, such as the USPTO’s TESS (Trademark Electronic Search System) to run a quick “direct hit” search, and, if that comes back clean, retain a trademark attorney for a more thorough search.
  • Application filing: Assuming your search doesn’t turn up any concerning results, the next step will be to prepare and submit a trademark application with the United States Patent and Trademark Office (USPTO) in the United States or the equivalent agency in your country. The application typically includes details about your trademark, the class of goods or services it will cover, and specimens showing the use of the mark.
  • Examination and review: The trademark office will review your application to ensure it meets all the necessary requirements, including distinctiveness and compliance with their guidelines. If the examining attorney finds any issues, you may be required to address them through amendments or additional documentation.
  • Opposition period: If your application is approved, it is published in an official gazette or database to allow third parties to oppose it. This typically happens after the examining attorney’s approval. Third parties then have a set period of time (in the United States, 30 days) to oppose your trademark registration if they believe it may infringe on their existing rights.
  • Registration certificate: If no oppositions are filed, or if you successfully overcome any oppositions, and your trademark application is approved, you will receive a registration certificate. This document officially grants you exclusive rights to the trademark.
  • Maintain and protect your trademark: After registration, you must actively use the trademark in connection with the goods or services it covers. Failure to do so may result in the cancellation of your registration. Additionally, you should monitor the marketplace for potential infringements on your trademark, and take appropriate action to protect your rights.
  • Renewal: Trademarks must be renewed periodically to maintain their protection. In the United States, trademarks must be renewed between the 5th and 6th year after registration and every 10 years thereafter.
  • International protection (if needed): If you plan to use your trademark in multiple countries, consider filing for international protection under the Madrid Protocol or regional trademark systems like the European Union Intellectual Property Office (EUIPO).

Of course, It’s important to work with a qualified trademark attorney throughout the process. They can help you navigate complex legal requirements, conduct thorough searches, and address any issues that may arise during the application process.

Obtaining and maintaining a trademark registration requires ongoing vigilance and adherence to the rules and deadlines set by the relevant trademark office. Failure to use, renew, or protect your trademark properly can lead to the loss of your exclusive rights. Therefore, it’s important to stay informed and seek legal advice when necessary to ensure the continued protection of your brand identity.

Copyrights

Below is an overview of the process for obtaining a copyright registration in the United States. The general principles are similar in many other countries, but be sure to consult with a qualified attorney who knows the process.

  • Determine eligibility: Ensure that your work is eligible for copyright protection. Copyright law typically covers original works fixed in a tangible medium of expression, including literary, musical, and visual works.
  • Registration application: Prepare and submit a copyright registration application to the United States Copyright Office (or the equivalent office in your country). You can submit your application online through the Electronic Copyright Office (eCO) system in the United States.
  • Application form and fee: Complete the appropriate copyright registration application form based on the type of work you’re registering (e.g., literary, musical, visual arts). Pay the required filing fee, which varies depending on the type of registration and the options chosen.
  • Deposit copy: Provide a “deposit copy” of the work you’re registering. This copy serves as evidence of your work and is used for archival purposes. The specific format and requirements for the deposit copy vary depending on the type of work.
  • Examination and processing: The Copyright Office will review your application to ensure it is complete and in compliance with their requirements. Processing times can vary, but it typically takes several months for the Copyright Office to complete their review.
  • Registration certificate: Once the Copyright Office approves your application, you will receive a copyright registration certificate. This certificate is proof that you have copyright protection for your work.
  • Enforce your copyright: With your copyright registration in hand, you have stronger legal protection and the ability to enforce your copyright by taking legal action against those who use your work without permission.
  • Renewal and maintenance: Copyrights are generally not subject to renewal; they typically last for the life of the author plus 70 years. However, there are certain rules and considerations for works created by multiple authors or works made for hire.
  • International protection (if needed): If your work is used or distributed internationally, consider seeking copyright protection in other countries by registering your copyright in those jurisdictions.

The specific requirements and procedures for copyright registration may vary by country, so it’s critical to consult with the copyright office or a legal expert in your jurisdiction for detailed guidance.

Patents

Below is a high-level summary of what patents protect and how to obtain one. Hood Venture Counsel does not offer patent services, but we are happy to refer you to a trusted patent attorney who can help you navigate this especially complex process.

What Patents Protect

  • Utility patents: These are the most common type of patents and protect new and useful processes, machines, articles of manufacture, or compositions of matter. This includes things like new chemical compounds, mechanical devices, software algorithms, and manufacturing processes.
  • Design patents: Design patents protect the ornamental design or appearance of an article of manufacture. They do not cover the functional aspects of the item but focus on its visual aesthetics. For example, a unique smartphone design or the shape of a bottle can be protected with a design patent.
  • Plant patents: Plant patents, as you may have guessed, protect new and distinct varieties of plants.

How to Obtain a Patent

  • Determine patent eligibility: Ensure your invention is eligible for patent protection. It should be novel, non-obvious, and useful. Abstract ideas, laws of nature, and natural phenomena are generally not patentable.
  • Conduct a patent search: Perform a thorough patent search to determine if your invention is already patented. This helps avoid wasting time and resources on an idea that cannot be patented.
  • Prepare a detailed description: Document your invention’s technical details, including drawings, diagrams, and specifications. A well-drafted patent application is essential.
  • Choose the right type of patent: Decide whether a utility, design, or plant patent is appropriate for your invention.
  • File a patent application: Submit a patent application to the relevant government agency, such as the United States Patent and Trademark Office (USPTO) in the United States. The application should include a detailed description of your invention and claims that define the scope of protection.
  • Patent examination: The patent office will examine your application to ensure it meets the legal requirements. The examination may involve responding to office actions and making amendments to the application.
  • Publication: Once your patent is granted, the details of your invention are typically published and made publicly available.
  • Enforce your patent: As the patent holder, you have the exclusive right to make, use, and sell your invention. You can enforce your patent by taking legal action against those who infringe on your rights.
  • Maintenance: Pay maintenance fees and meet any other requirements set by the patent office to keep your patent in force. Utility patents require maintenance fees at specified intervals, while design and plant patents do not have maintenance fees.
  • Consider international protection: If you plan to protect your invention internationally, you may need to file for patents in multiple countries or regions. Options include the Patent Cooperation Treaty (PCT) and regional patent systems.
  • Seek legal assistance: Of course, it’s important to consult with a patent attorney to navigate the complex patent application process, maximize the protection your patent offers, and ensure compliance with the relevant laws.

Obtaining a patent can be a complex and time-consuming process, but it offers strong legal protection for your invention. A patent can be a valuable asset for inventors and businesses looking to protect their innovative ideas.

Next Steps

It’s crucial for the health of your business that you protect your intellectual property – and avoid infringing on that of third parties. Hood Venture Counsel can help you determine your potential exposure and how to address it. Book an exploratory call with us to give yourself an action plan and peace of mind.

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