Filing for Intellectual Property (IP) will protect a business’s specific product idea including product development. The strategic benefits of establishing ownership over an asset is vast: to deter competitors, raise capital, build a business, etc. The intellectual property you file should support the overall business strategy. There are three ways to protect intellectual property in the United States: patents, trademarks, and copyrights. A patent applies to a specific product design; a trademark to a name, phrase or symbol; and a copyright to a written document. There are key steps, which will help you obtain and protect IP. Andrea Davis, Managing Partner at Bodkin IP, shared a few points to focus on:
Know Your IP Rights
IP rights provide a defensive right to pursue legal action if a third party infringes. Patent infringement occurs when another party makes, uses, or sells a patented item without the permission of the patent holder. The function of a product can be protected with a patent; whereas the appearance can be protected by registering the design. Trademarks protect brands, such as trade names and logos. Lastly, copyright protects the expression of ideas- the words you choose to use to describe your idea, but not an idea itself. If you obtain any of these IP’s, you will own rights to that idea, design, or description and can peruse legal action against infringes.
Most businesses do not need the combination of patents, trademarks, and design registrations; in fact, trademarks are typically the only IP most companies have or need, however for a few companies the full IP protection is required. For example, Apple® and iPad® are two registered trademarks, registered designs, and patents for the way it interacts with the user. Apple also filed copyright for the code and the packaging. Apple then fought in a court battle with Samsung over IP, which effected changes in the law. “Apple denied Samsung permanent injunction against nearly two dozen Samsung products. The Apple/Samsung case was the patent trial of the century” said The Wall Street Journal.
Get Professional Help
To avoid infringement conflicts and extensive research and resources, finding an IP expert, like Bodkin IP, will help guide IP owners and relieve the hassle. Although the process of obtaining IP appears simple, it is a highly detailed procedure. Doing your own research is helpful, but IP professionals have additional resources, which are powerful and effective. “Inventors and start-ups should always do their own research early on to see if somebody else already has thought of the same invention. That includes the internet, also the free patent databases available, such as Google Patents, The Lens or Free Patents Online. If you don’t find anything, it is still wise to enlist a professional patent search firm to get it done professionally. The US alone has close to 10 million patents. When it comes to patentability, any publication counts anywhere in the world, so the number of patents is significantly larger! Without a database that has functionality the free resources don’t have and specialized knowledge on how to use that functionality, e.g. using patent classifications, citations and semantic searching, it’s almost impossible to do a thorough search.” Explained Ms. Davis, of Bodkin IP.
“I’ve heard many times in my career inventors say, “I’ve done my own search and haven’t found anything”, only to perform it in the professional databases and find something very similar within an hour. Out of the hundreds of patents searches I have performed in my two decades as a professional patent information professional, there have been less than five cases where I couldn’t find something close to the invention. That doesn’t mean that those other ideas weren’t pursued! In 99% of the cases they probably were, but in a strategic and informed way, that ended up saving those clients money. By identifying the prior art early on with very little investment, they were able to focus on the features that were not already patented by others both in the development of their product, as well as in the direction their patent applications were drafted. The patent prosecution is likely to take less time with less rejections from the patent office, saving the inventors’ not only that time, but also attorney fees, patent office fees and development resources.” Ms. Davis continues.
Strategize What You Will Do with the IP
Think carefully about why you are investing in protecting your IP. “Any money spent on IP is capital that cannot be spent on production, marketing, etc. There are many good reasons: to stop people from copying you; to add value to your company if you want to sell it; to sell or license to a third party; to hold it in your armory if you suspect you are going to be sued and want to counter-sue. For example, Google has spent a substantial amount of money buying patents recently; even to reduce your tax bill in certain countries profits attributed to patents can be taxed at a lower rate. However, in general, IP is a right to prevent other people from doing something; owning IP does not necessarily give you the right to do anything yourself.” Reports PLOS Computational Biology.
Keep Your Idea Secret until You Have Filed a Patent Application
Once your idea is published by a journal it is too late to file a patent application. It has been released to the public. A provisional patent application is a faster step to temporarily protect the IP until it is fully developed and can be submitted for the patent protection. It is important to understand this form is nothing more than the first step toward receiving a patent. Ultimately you will need to file a nonprovisional patent application in order to obtain a patent in the United States.
“This is often unknown, and I’ve seen entrepreneurs have their own website, start a kickstarter page or even sell items. According to current law, from the time the invention was first sold, offered for sale or used publicly, you have 12 months within which to file either a provisional patent application or a nonprovisional patent application. After that timeframe, it is regarded that the inventor has forfeited the right to obtain a US patent. The best approach is to file at least a nonprovisional patent application before doing any of the above.
Make Sure the IP Is Owned in a Way That Allows Development
Ownership of IP can be particularly difficult in an academic setting where numerous complicating features are involved. Universities, as employers, are likely to have a right to their employees' inventions. Inventorship is not like authorship—the people whose names are on an academic paper are unlikely all to be inventors; and in cross-border collaborations, national laws on ownership may well be in competition with each other. One complicating factor, which is often encountered, is joint ownership: if you can, avoid joint ownership; instead, set up a company to own the IP and license it to partners if necessary. Otherwise you face differing national rules on what joint owners can do with and without each other's permission. If it is necessary to share IP, define who owns what at the beginning, what rights each party has and who will have the right to future inventions.
You can never act too early, but it's very easy to act too late. To avoid the time intensive and complicated process of IP, find the best professional advice you can. If you are working as an employee, speak to your company at the earliest stage.
Bringing all these important IP aspects together provides the full view on approaching and protecting IP. These rights are applicable to all industries, companies, and individuals. Whether filing for a patent, trademark, or copyright, the procedure is complex. Finding an IP expert to help guide the tedious process to owning IP, will ease the progress and help you get to market quickly and correctly. Speed to market is imperative today. No matter the size of the company, there’s no doubt that filing intellectual property quickly after the conception of an invention, innovation, or service is a must.