Austin-based intellectual property attorney Andrea Arndt explains how Texas creators can keep their IP secure.
Whether you’re a scientist, entrepreneur, or artist, it’s vital to protect your intellectual property. There are generally several ways to do so: through a patent, a trademark, trade dress protection, or a copyright. A patent protects inventions; a trademark protects a source identifier, such as a word, a logo, or a combination of both; and a copyright protects original artistic and literary works.
Regardless of which best describes your needs, follow these five steps now to keep your work and creativity safe from encroachment or co-opting in the market.
1. Evaluate the types of intellectual property you have and need to protect.
There are a wide range of IP protections, and your first step is to know what best fits your needs. For example: Do you have a brand name or logo that is associated with your goods or services? If so, you may need trademark protection.
Do you use a symbol, a slogan, an ornamental design, or another visual element that sets you apart from your competition or do you have a proprietary recipe or way of doing your business that you want to keep a secret? If so, you may need trade dress protection.
Do you have original works of authorship, such as literary, dramatic, musical, or artistic works that you want to control how others can use your works? If so, you may need copyright protection.
Do you have a product with unique visual qualities that makes your product sell or distinguishes your product from competitor products? If so, you may need a design patent.
Have you created a product, process, or machine that is new or improved? If so, you may need a utility patent.
2. Protect your ownership rights by obtaining written agreements with independent contractors and employees.
Each type of intellectual property has specific laws associated with who actually owns the intellectual property rights. For example, if a company (1) hires a third-party web designer to build a webpage and agrees to the web designer’s standard terms, and/or (2) has an employee take photographs for the company website, a task outside of the course of employment, the company may not own the copyrights to its own website.
Similarly, if an employee invents something that is new and novel but does not have an obligation to assign its rights to the company, the employee may own the rights to the patent. To minimize your risk of lengthy and expensive legal battles over intellectual property ownership rights, companies must be diligent with obtaining proper written agreements that explicitly addresses the intellectual property rights, its ownership, and any future obligations to assign such rights to the company.
3. Get a patent assignment and record it shortly after it is signed.
Each inventor of a patent has ownership rights to the patent unless the patent is assigned to another party—e.g., the company the inventor(s) works for or a party buying the patent. When assigning a patent, two steps are needed. First, an assignment must be drawn up, agreed upon by both parties, and signed by at least the party assigning its rights—e.g., the inventor(s).
Second, the party receiving the rights to the patent (e.g., the company) must record the signed patent assignment with the Assignments Recordation Branch of the United States Patent and Trademark Office. Under US law, assignments must be recorded to make third parties (e.g., your competitors) aware of your ownership rights.
If an assignment is properly recorded within three months of the assignment being signed, the patent owner will be protected against another party obtaining (e.g., a purchaser of the patent) the patent rights. After this three-month window, a purchaser who is unaware that there is a patent assignment could become the new owner of your patent. Although it is not often that patents are signed to two different (and unknowing) parties at the same time, it can happen. Timely recording patent assignments is an inexpensive way to protect your patent ownership rights.
4. If you have a patent, mark your product.
Patent marking is used to notify the public, including competitors, that your product is patented. Proper patent marking is crucial in recovering damages from an infringer. In fact, if a patent owner does not properly mark its product, the patent owner may be precluded from collecting damages from infringers of its patent. You can mark your product with the word “Patent” or “Pat.” followed by the patent number or the address of a website that lists the patent number. It is also a good idea to mark your products with “Patent Pending” while you are awaiting approval on your patent application.
5. Monitor the marketplace.
Just because you have a granted patent or a registered trademark, your work is not done. You or your counsel should continuously monitor the marketplace to ensure that no other party is using your intellectual property without your consent.
If you find that someone else is using your intellectual property, the first step is often to send them a cease-and-desist demand letter, which essentially asks the infringer to stop the unauthorized or illegal use of your intellectual property and to not use it again in the future. If the use does not stop, there are other legal remedies that can be pursued to stop such use. Additionally, if you do not police your intellectual property, sometimes you can lose it.