Jeffrey Gitchel explains how to protect what makes your business special using intellectual property law
When companies need to protect their unique position in the market, they often turn to intellectual property law. When its protections are available, intellectual property law prevents others from profiting from your work. Without the protection of intellectual property law, your company can face competition from products that are essentially indistinguishable or confusingly similar.
Jeffrey Gitchel, an attorney with decades of intellectual property law experience, explains the basics behind intellectual property law and how your company can work with an attorney to ensure that you retain control of your ideas.
How intellectual property law works
Intellectual property is a creation of the mind, such as an invention or product design, literary or artistic work, or product or service identifier. The four main types of intellectual property used in the U.S. are patents, trade secrets, trademarks, and copyrights. Each of these property types requires different legal approaches. Jeff Gitchel thoroughly explains each type of property, detailing the categories under which many intellectual property concepts fall.
A patent protects innovations by granting a property right that gives the patent owner the right to prevent others from selling, using, or making products that contain the invention within the United States. Thomas Edison famously owned over 1,000 patents.
The most common type of patent is a utility patent. Utility patents protect novel, non-obvious, and useful inventions. Most people know that if you build a better mousetrap, you may be entitled to patent protection. But because patents protect all innovations, big or small, even if you’ve just developed an improvement to mousetraps, like a better spring, that innovation may also be eligible for protection.
Utility patents are valid for 20 years from the date the patent application was filed. During the patent’s life, the patent owner can keep products that include the patented invention off the market.
Other patents are design patents and plant patents. A design patent is granted to the inventor who creates a new, original, and ornamental design for an article of manufacture. Plant patents are specifically for agricultural innovations and involve the creation or discovery of a certain new plant varieties.
Patents are issued by the United States Patent and Trademark Office (USPTO), which requires that every patent describe the invention and educate the public on how to make it. As a result, it is possible for competitors to “design around” the patent. Any inventor can file a patent application, but there are patent attorneys who specialize in patent applications. Jeff Gitchel, who is not a patent attorney, says that having a patent attorney is critical and can vastly improve the quality and value of a patent.
Where patents disclose an innovation to the public in exchange for the protection of the patent, a trade secret is an innovation or other valuable piece of information that is hidden from the public, like the Coke formula, the Colonel’s secret recipe, or even a customer list.
A trade secret can be any information that has independent economic value because it is not generally known and can’t be figured out through proper means (like reverse engineering). If you make reasonable efforts to maintain the secrecy of such valuable information, it can receive protection as a trade secret.
Unlike a patent, there is no limit to the life of a trade secret, so long as the information remains valuable and secret. Once a trade secret becomes publicly known, it can be difficult if not impossible to put that cat back in the bag. Once disclosed, a piece of information often loses its status as a trade secret.
Patent protection can be very powerful, but it is not always the best option. If an innovation cannot be reverse engineered and will have long term value, treating the innovation as a trade secret may be a better option.
A trademark is anything that identifies a product, such as a product or company name, logo, or slogan, jingle, or even in some circumstances, a color, shape, or smell. From a legal perspective, a trademark carries information about product quality and its manufacturer. From a business perspective, a trademark communicates the brand promise. In either case, a trademark helps customers know when they are using a specific brand or variety. According to Jeffrey Gitchel, a trademark can be vitally important in helping a consumer make purchasing decisions.
Because of their meaning, trademarks represent the special qualities of a business. Because of their influence on consumers, trademarks can embody most of a product’s unique value. For these reasons, protecting a trademark often means protecting a unique market position.
If a competitor adopts a confusingly similar mark, it has infringed your trademark. So if a competitor adopts a name that looks and sounds like yours and has a similar meaning, it has likely infringed your trademark. This is true even if the mark is not identical. The question is whether there is a likelihood of consumer confusion, said Jeff Gitchel. He clarified that the confusion has to be with regard to source or sponsorship (that is, whether the same company makes or is otherwise affiliated with both products).
When a competitor adopts a trademark that creates such a likelihood of confusion, it has committed trademark infringement. Under these circumstances, a trademark holder can take legal action to force the infringing party to stop using the infringing mark. Jeffrey Gitchel stressed two additional points. First, he said, a trademark, unlike a patent, cannot prevent a competing product from entering the market; it can change the name or marketing materials for the product, which can be devastating. In rare situations, that can involve the product being pulled from the market for rebranding, but even then, the product can return to the market eventually. Second, monetary damages are rare in trademark infringement cases. The primary remedy is protection of your market position.
To avoid such a potential disruption, a company should search existing trademarks to ensure that its proposed name does not infringe any third-party rights. This search could prevent later disruption if a proposed name could be accused of infringing someone else’s trademark.
Mentioned during every televised sporting event and regularly discussed with regard to modern music, copyrights are perhaps the best known type of intellectual property. Copyright protects all “original works of authorship” that are “fixed in tangible medium,” which includes digital media. Copyrightable works are protected from the moment they are created, even without being registered.
Although a creator does not need to register the copyright or do anything to secure protection, a copyright registration is still valuable. A copyright registration allows a creator to sue for infringement and may increase the penalties for infringement.
Keeping track of copyright ownership when working as a third party creator or with a third party creator is especially important. Jeff Gitchel specifies that ordinarily, copyright is owned by the creator. Sometimes, such as in an employment situation or some contractor contexts, a work may be a “work made for hire.” The copyright in a work made for hire is owned by the company that paid the creator to make it, and the company, not the individual, is legally deemed the creator. Jeff Gitchel stressed the importance of understanding copyright ownership rules at the outset of any business relationship.
When do you need an intellectual property lawyer?
Intellectual property lawyers are prepared to help you protect your creations from misuse. In doing so, they can also protect your profits. If you wait until a company or individual has infringed your rights to call an intellectual property lawyer, it may be too late. For example, obtaining a patent that does not effectively protect your invention is of no help.
You can call on an intellectual property lawyer when someone steals or sells your trade secret, reproduces your copyrighted work, recreates and sells your patented invention, or creates a business using your previously owned trademark. Often, a cease and desist letter from an attorney launches negotiations that can ultimately resolve the matter. And an attorney is indispensable when litigation is necessary.
The role of an intellectual property lawyer
When intellectual property is important to a company, an intellectual property lawyer is necessary to maximize its value and prevent problems. Intellectual property lawyers are prepared to help you identify and protect profitable creations.
A lawyer can educate employees about relevant intellectual property principles, so that they can identify potential assets and know how to protect them. And when those potential assets are identified, the lawyer can help assess their value and assist in protecting the valuable ones.
Seeking legal advice early on allows you to effectively protect the profits you derive from intellectual property assets.If you wait until your rights have been infringed to think about protecting your rights or call an intellectual property lawyer, it may be too late. For example, obtaining a patent that does not effectively protect your invention is of no help, while improper trademark use can limit or even eliminate your rights.
Even the best protected intellectual property can be infringed. When that happens, your intellectual property lawyer can help you protect your investment. Often, an attorney’s cease and desist letter launches negotiations that can end in a satisfying resolution. If negotiations don’t resolve the dispute, litigation remains an option, one where an attorney is invaluable.
Protecting your intellectual property
Because so many of today’s companies deal in information and innovation as their stock in trade, protecting your intellectual property is just as important as protecting your company’s physical possessions, if not more so. It is much easier to find a new manufacturing site or office than to rebuild consumer trust or develop a new and innovative product. Competing without an intellectual property attorney in today’s business environment, where information and innovation are many company’s stock in trade, is stepping into the ring with one hand tied behind your back.
Story by Kay Michael