Got IP?

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Of course you do. Every business has IP (intellectual property) in one form or another, whether a trademark, a logo, a customer list, a newly-developed device or process, a secret formula or recipe, a product manual, or advertising copy, to name just a few.

Is your IP important to your business? It sure is. Your proprietary technology and inventions might allow you to offer goods or services that are a better value or otherwise more desirable than your competitors’ goods and services. Your trademarks identify you as the source of those goods and services, and they further distinguish you from your competitors. Your written materials help you describe and promote your goods and services.

Are you protecting your IP? If you’re not, you should be. Your IP is a valuable asset. You probably put a lot of time, effort, and expense into developing it. Unfortunately, because IP is intangible, it is easily misappropriated by others. Unlike a tangible asset such as a computer or an industrial machine, IP generally can’t be protected by simply keeping it behind a locked door.

How can you protect your IP? That depends on what it is. Just as IP comes in various forms, various mechanisms exist to protect it. Chief among these are patents, trade secrets, trademarks and copyrights.

New inventions, such as new devices, materials, processes, chemical formulations, plant varieties, drugs, and the like, can be protected with patents or under trade secret law. A patent gives its owner the right to prevent others from making, using, and selling the technology covered by the patent for a limited time (typically no more than 20 years), in exchange for a complete written disclosure of the technology in sufficient detail to allow those skilled in the field to practice the technology.

A patent is a good means for protecting technology that can be readily discovered or reverse engineered. For example, if the invention is a device having certain features combined or interacting in a particular way, and the features and their combination or interaction is evident from inspection of the device, a patent might be the best way to protect the invention. Penalties for patent infringement can include money damages to compensate for the infringement and injunctive relief to preclude further infringement.

Some technologies, such as processes and formulas (e.g., the formula for Coca-Cola®), may not be readily discoverable by inspection of a product. Although patents can sometimes be used to protect this sort of technology, trade secret protection might be a better choice for at least three reasons. First, a trade secret, in theory, has infinite duration (as long as it is kept secret), whereas patent rights are time limited. Second, if use of the technology by a competitor would not be readily apparent through inspection of the competitor’s products, it might be difficult to determine whether the competitor is using the technology and thus infringing a patent covering it. Third, some technology is in the form of know-how that might not be patentable, but that nevertheless has a lot of value.

Maintaining a trade secret, however, requires considerable diligence, and failure to maintain a trade secret as such will destroy its value. Also, trade secret law offers no protection against independent development of technology by others. Penalties for trade secret misappropriation can include money damages and injunctive relief. In extreme cases, the penalties can include fines and imprisonment.

Brands and trademarks can be protected under trademark law. Trademarks can take many forms, including words, phrases, logos, sounds (the MGM lion’s roar), and colors (green and yellow for John Deere tractors). In the U.S., trademark rights initially accrue through use of a mark in connection with goods or services, regardless of whether the mark is registered. Although registration is not required to establish trademark rights, rights in an unregistered trademark generally are limited to the particular geographic area or areas in which the mark is used. Federal registration of a mark provides numerous benefits, such as nationwide rights and notice to others of the ownership of the mark. Federal trademark registrations have a term of 10 years, but may be renewed indefinitely, so long as the mark remains in use. Penalties for trademark infringement can include money damages and injunctive relief.

Copyright law protects original works of authorship, for example, literary, musical, pictorial, audiovisual, and architectural works, as well as sound recordings. As suggested above, literary works can include a business’ product manuals and advertising copy, among other written works. Copyright protection accrues upon fixing the original work of authorship in a tangible medium. Registration is not required to establish copyright, but it is required for enforcement. Under current law, a copyright in most works endures for a term extending 50 years after the author’s death. For some works, including so-called works made for hire, copyright endures for a term the lesser of 95 years from the year of its first publication or 120 years from its creation. Penalties for copyright infringement can include money damages and injunctive relief.

As you might imagine, this article merely scratches the surface of the issues and law relating to these forms of IP and IP protection. Future articles will address each of these forms of IP and means for protecting them in greater detail.  

This article should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general informational purposes only, and you are urged to consult your own lawyer on any specific legal questions you may have concerning your situation.

Barnes & Thornburg LLP is a large, full-service law firm that seeks to take a more entrepreneurial and cost-effective approach both to client service and its own business.

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