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    Quarterly Newsletter

    Know Your Intellectual Property Rights

    by Deborah A. Basile, Esq.

    It is important to protect those assets of your business known as "intellectual property." Your rights in this area derive from the use of intangibles such as your company name or logo, brand names which your company has developed, client or customer lists, inventories, literary or artistic works, and specially created software or databases. These assets have value to your company and if they are not protected from infringement, piracy or theft, that value could diminish with a significant negative impact on your business.
    Trademarks and Servicemarks

    A trademark is a name and/or design that identifies the source of products. Use of a trademark on products to identify their source will lead to a mental association between the mark and the product. Trademark rights are created by use of the mark in commerce in connection with the goods or services that they identify. Corporate names, slogans, logos, symbols, abbreviations and combinations of letters can all be trademarks. Protection of trademarks also extends to label designs and to characters used in association with the sale of products.

    A servicemark is a type of trademark that identifies the source of services, as opposed to goods, such as restaurant services. If you are not yet using a mark, you may nevertheless protect the mark on a "intent to use" basis to reserve it for future use.

    Protecting and strengthening a trademark benefits your business through the identification of your goods in the marketplace which distinguishes them from others. Trademarks also indicate that the goods from a particular source are of consistent quality.

    Federal registration of a trademark with the United States Patent and Trademark Office offers many substantive rights to the owner, the most important of which is the right to prevent others from using the mark.

    Trade Secrets

    In the United States, the Uniform Trade Secrets Act defines a trade secret as: Information, including a formula, pattern, compilation, program, device, method, technique, or process that:

    • 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 economic value from its disclosure or use; and
    • is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

    The general rule is that you cannot protect a trade secret if someone discovers your trade secret in the following ways:

    • by independent invention;
    • by "reverse engineering," i.e., by starting with the known product and working backwards to find the method by which it was developed;
    • under a license from the owner of the trade secret;
    • by observation of the item in public use or on public display; or
    • by reviewing published literature.

    When relying on trade secret protection for your intellectual property you should consistently treat the information as if it is secret and valuable to your company and specifically, you should:

    • identify that information which you consider to be a trade secret as such;
    • know the party to whom you are disclosing the trade secret; and
    • use confidentiality clauses and agreements to protect your trade secret information when negotiating with others.

    No registration exists for trade secrets. Trade secrets are protected through contracts and by unfair trade practice laws. The key to enforcement is the availability of injunctive relief against the misappropriator of a trade secret through either contract or unfair trade practice laws.

    Protecting and strengthening a trade mark can benefit your business: your goods are identified in the marketplace and are distinguished from others.

    Copyright

    A copyright is a grant of exclusive rights to the author of a literary, artistic or computerized work. The rights include the right to duplicate the work, to distribute it, to display it, to prepare derivative works from the copyrighted work, and to authorize others to do any of these things. Literary or artistic works include advertising, labels, computer programs, audiovisual works, charts, graphs, customer lists and most marketing brochures.

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    		Copyright does not protect the facts or ideas within the work. It protects the work of original authorship as fixed in a "tangible medium" as when an idea for a story is transferred to a printed page.

    Original works of authorship should always include a copyright notice such as:

    © 1996 ABC Company, Inc.
    This notice establishes basic copyright protection.

    A copyright can be registered at the United States Copyright Office, Library of Congress. Although registration is not necessary for basic copyright protection, registration is a prerequisite to suing for infringement and recovering statutory (rather than just actual) damages and attorney's fees.

    Patents

    A patent is a grant from the federal government allowing the holder to exclude others from making, using or selling an invention. A utility patent may be obtained for new and useful inventions; a design patent protects a new, original and ornamental design for a product; and a plant patent protects new varieties of plants. The criteria for obtaining a patent is stringent and complex; however, the protection afforded by a patent is very strong. A patent prohibits any unauthorized manufacture, use or sale of devices or processes embodying the invention, even if innocently infringed or independently invented. In order for an invention to be patentable, it must be "novel" or "new." An invention does not meet this standard if:

    In the United States, any person who "invents or discovers any new or useful process, machine, manufacture or composition of matter, or any new and useful improvements thereof, may obtain a patent."
    • the invention has been described in a printed publication anywhere in the world, or if it has been in public use or on sale in this country before the date that the applicant made his invention, or
    • the invention has been described in a publication anywhere or has been in public use or on sale in this country more than one year before the date on which the patent application is filed in this country. In these cases a valid patent cannot be obtained.

    If the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he must apply for a patent before one year has gone by, otherwise any right to the patent will be lost.

    Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be "obvious." The subject matter sought to be patented must be sufficiently different from what has been used or described before so that it may be said to be unobvious to a person having ordinary skill in the area of technology related to the invention.

    A patent application must be processed by an attorney or agent who is registered with the United States Patent and Trademark Office. When a patent application is filed, the inventor may use the notice "Patent Pending" on the article or its advertising. When the patent is issued, the notice should consist of the word "Patent" and the number of the patent.

    Since June 1995, it has become possible to file a Provisional Patent Application in the United States Patent and Trademark Office which only includes a detailed description and drawings of the invention. The description and drawings must be in sufficient detail to provide a foundation for supporting claims defining the invention in any regular patent application filed later on the same invention. Since the filing date of the Provisional Patent Application becomes the filing date for the patent application if it is filed within one year of the date of filing of the Provisional Patent Application, this provides patent protection for the invention during this one-year period. Thus, the Provisional Patent Application constitutes an excellent, streamlined and inexpensive method to test the commercial acceptance of the invention without incurring the expense of a formal patent application.

    Infringement of a patent consists in the unauthorized making, using, or selling of the patented invention within the territory of the United States, during the term of the patent. If the patent is infringed, the inventor may sue for relief in the appropriate federal court. The inventor may ask the court for an injunction to prevent the continuation of the infringement and may also seek damages suffered due to the infringement.

    Deborah A. Basile is a partner with Doherty, Wallace, Pillsbury and Murphy, P.C. in Springfield. She is a patent attorney registered to practice before the United States Patent and Trademark Office.



    DOHERTY, WALLACE, PILLSBURY & MURPHY
    ONE MONARCH PLACE, SUITE 1900
    1414 MAIN STREET
    SPRINGFIELD, MA 01144-1900
    TELEPHONE | 413-733-3111
    FAX | 413-734-3910

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