Innovation is critical to the economic success of many businesses, whether located or formed in California, New York, Delaware or elsewhere. Ideas and inventions help make society in general and businesses in particular thrive. In fact, as intellectual property, these ideas and inventions are often considered business assets and must be protected if you as a business or person want to receive their full benefits. When protected, you will have certain rights to your intellectual property, including remedies when a person or entity infringes upon those rights. The process, however, to ensure proper protection is cumbersome and can be complex or tend to create confusion. Below, we share some of the most common questions we receive on this issue.
If you are looking for legal representation in New York or in Los Angeles or Ventura County, California discuss protecting intellectual property, or if you want to come to have a better understanding of intellectual property rights and processes so you can make informed decisions for yourself or your business, please feel free to contact me today. To set up a Free Consultation, click on the phone number in the header above, or dial me directly at 310-567-5966 (California), 212-414-5966 (New York) or 888-774-1474 (Toll Free). Or Schedule time to speak with me directly in my calendar here.
Please note: there are different types of protection for different types of intellectual property and different types of commercial exploitation of associated IP rights. I represent business clients concerning many aspects of protecting intellectual property; and, if there is any matter I do not handle, I have a very good network and am able to make introductions to other trusted advisors. Click here to read more about my Intellectual Property services.
What is Intellectual Property?
The U.S. Department of State provides an interesting, working definition of intellectual property (IP) as the embodiment of “unique work reflecting someone's creativity and is all around us, manifested through miracle drugs, computer games, films, and cars.”
When a person or entity creates something new, it is the product of their creativity, knowledge, and thought process. As such, it is their intellectual property. It can be a tangible product, a type of service, or even a new process. Whatever it may be, if it meets certain criteria, it is entitled to protection. This protection nurtures an environment of creativity and creates a system of rights and responsibilities.
What are the Benefits of Legally Protecting Intellectual Property?
Protecting your intellectual property offers advantages regardless of whether you are doing so as an individual or business entity. Common benefits of IP protection include:
- Profiting from your idea or invention
- Increasing your company's market share or market value through the sale, commercialization, or licensure of IP
- Increasing brand awareness
- Raising or securing funds by using IP as debt collateral
- Developing a competitive advantage in the market
- Making your company an attractive target for a merger, acquisition or joint venture
These and other benefits are dependent on the type of IP and the protection you secure for it. Some types of protection are automatic while other types require a process to qualify.
What are the Main Types of Intellectual Property Law?
There are four main types of intellectual property. Below is a brief description of each.
United States Patent and Trademark Office ("USPTO") defines Trademark as a “word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others.” The USPTO on its website writes that:
"A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It's how customers recognize you in the marketplace and distinguish you from your competitors."
Popular examples of trademarks include:
- My law firm's own trademark, Entrepreneurial Representation®
- McDonald's® golden arches
- Walt Disney's Mickey Mouse
- Nike's swoosh logo and Just Do It®
Note that sounds can also be registered for federal trademark protection. Some federally protected sound marks you may be familiar with include:
It is possible for a trademark to cover a group of products. Also, note that the term "trademark" can refer to a mark which applies to goods specifically, but is also often used generally for both trademarks (as they apply to goods) as well as to "service marks" which are essentially the same but apply to services not goods.
Note that although an owner of a trademark can have protectable rights to the mark without registering it with the USPTO, federal registration with the USPTO provides some very significant and helpful benefits. If you would like to discuss these benefits in a free consultation, click here to schedule an appointment directly in my calendar.
The USPTO defines copyright as “a form of protection provided by U.S. law to the authors of ‘original works of authorship' fixed in any tangible medium of expression.”
This definition is broad and covers different types of materials that can be subject to copyright, like:
- Music and sound recordings
- Paintings and sculptures
- Architectural works
Note: Copyrights are not applicable to mere ideas.
According to the USPTO, a patent grants an inventor property rights to their invention. These rights include the ability to exclude others from “making, using, offering for sale, or selling” the invention.
There are different types of patents:
- Utility patents, which cover how an invention is made or functions
- Design patents, which cover an invention's ornamental or non-functional features
- Plant patents, which cover newly discovered plants
A trade secret is intellectual property that belongs to a particular entity that has value because it is not common knowledge. Something that is public knowledge cannot be considered a trade secret.
Ways in which trade secrets materialize include but are not limited to:
- Engineering information
- Methods, processes, and knowledge
- Business and financial information
- Business plans
- Methods of calculating costs or pricing
- Customer and supplier lists
- Internal marketing and development strategies
- Computer programs (e.g., source code)
- Pending or unpublished patent applications
- Products or services in research and development
- Means to collect data
Popular examples of trade secrets include:
- Coca-Cola's recipe
- Eleven herbs and spices used in KFC's fried chicken
- Google's algorithms
- Criteria used for New York Times's Best Seller List
How Do I Protect My Intellectual Property?
A person or entity should take steps to keep IP protected. By doing so, they help protect their own interests and ability to keep their IP safe from others.
Some steps to protect IP include:
- Filing for the appropriate type of IP protection (i.e., patent, trademark, copyright, or trade secret)
- Keeping detailed documentation of ideas and content (i.e., records, descriptions, drawings, dates, etc. that prove you conceived and developed the idea or invention and not someone else)
- Keeping private ideas and secrets confidential
These three steps may sound easier than they are in practice. Taking these steps, however, will help you secure and maintain your IP rights.
One additional step to help ensure you properly and timely protect your IP is this: speak to an IP lawyer in California or New York. It will help you make sure all the necessary steps are taken to maximize IP protection and the benefits that flow from it.
Can (and if so, How) Do I Transfer Intellectual Property?
IP can be transferred between parties. The proper way to complete this type of transfer depends on several different factors, including the type of IP and the agreement between the parties. Sometimes, IP is part of an estate plan and ownership passes through the estate.
Under certain circumstances, it may be possible to transfer IP through an assignment of IP rights. When considering a transfer of IP, it is always a good idea to seek counsel from an experienced California, New York Or Delaware IP attorney.
How Are Intellectual Property Rights Enforced?
The most effective means to enforce IP is through registration. Sometimes, however, especially when IP rights have been violated, other enforcement means are necessary.
When another person or entity infringes upon your intellectual property rights, the most obvious way to enforce your rights is through litigation. Filing a lawsuit may be the best way to proceed in cases where time is of the essence. An injunction, which causes a party to immediately cease a certain action, may be necessary as well.
Another way to enforce IP rights includes sending a “cease and desist” letter to the infringing party. Sometimes, when time is not critical, this letter is sent prior to litigation.
Also, according to the particular circumstances of the situation, it may be a good idea to make a report to the appropriate authorities for criminal prosecution.
What to Do if Accused of Violating an IP Right?
When accused of violating an IP right, the best first step is to contact an intellectual property defense attorney in California or New York. They will help you determine (1) whether or not you have actually violated an IP right; and if you have, (2) the best way to remedy the situation with the least disruption to you. Gather any and all information you have in regard to the allegation made against you for your attorney to review.
What Do Intellectual Property Lawyers Do in California and New York?
IP lawyers wear several different hats. First, they can help determine whether or not something is indeed IP and needs to be protected. If so, the attorney will determine what type of protection is needed and file the appropriate paperwork to obtain the patent, trademark, or copyright. Once the protection is obtained, an IP lawyer will help their client if any other party attempts to infringe upon their rights.
IP lawyers are also integral to the development of IP strategies. Building a strong working relationship with an IP attorney can act as a competitive advantage in your industry and help you gain a larger share of the market.
If you have a business or business interests in New York or in Los Angeles or Ventura County, California involving intellectual property and would like to discuss legal representation to protect or commercially exploit your IP, you should seek legal representation. To set up a Free Consultation, click on the phone number in the header above, click here to make an appointment now for a free consultation, or dial 310-567-5966 (California), 212-414-5966 (NYC) or 888-774-1474 (Toll Free) to schedule a Free Consultation.
This article is not legal advice, but is provided for general information purposes only: see the disclaimer in the footer of this site, and read Legal Notices here.