Patents - Overview• What is capable of being patented? • Any novel and non-obvious invention • In the US this includes business methods• Rights Awarded • Government grant of the right to exclude others from making, using, selling or importing the patented invention.
Benefits of Patents • 1. increase valuation of company • 2. support higher profit margins by offering exclusive features • 3. source of income through a licensing program • 4. defensive measure if accused of violating a patent of competitor
Trademark Rights• Common Law Trademark Rights TM • Trademark Rights arise out of usage • Rights accrue in geographic territory• Federal Registration ® • Nationwide protection • Significant advantages • Presumption of validity at trial • Incontestability 5-6 years after registration • Sample Federal Registration
Benefits of Trademarks • 1. maximize product differentiation, advertising and marketing, thus enhancing recognition of your product or service • 2. increase revenues as consumers pay higher prices for branded goods • 3. derive loyalty largely due to consumer’s ability to recognize the product and distinguish it from the products of competitors
Copyrights – Protection forBusiness • Is the work protectable? • Original? • Expression of ideas, not the ideas themselves • non-functional • Types • Textbooks, magazines, newspapers • Sculptures, jewelry designs • Photographs • Music, lyrics • Content on the Internet
Trade Secrets - Overview• What is a trade secret? – information not generally known to the public, confers some economic benefit on its holder, and is the subject of reasonable efforts to maintain its secrecy.• A trade secret is information that is valuable to the owner a s a s e c re t, and therefore must be protected as such. If the owner’s competitors generally know or could easily discover the secret information, the owner could lose his competitive edge.
KFC – Story of Trade Secret Protection • Colonel Sanders kept the secret recipe in his head -- and the spices in his car -- although he eventually wrote it all down. His original, handwritten copy is hidden in a safe in Kentucky, and only a few select employees, bound by a confidentiality contract, know what the recipe is. • For further protection, two separate companies each blend a portion of the mixture, which is then run through a computer processing system to standardize its blending [source: KFC.com]. • Employees-in-the-know cant ever travel together by plane or auto to further safeguard the secret, and that once, the recipe was temporarily moved to another secret, secure location via an armored car, which was further guarded by a high-security motorcade [source: DailyFinance].
Trade Secret – Cause of Action• Misappropriation – acquisition of a trade secret of another by a person (corporation) who knows or has reason to know that the trade secret was acquired by improper means (R.I. Gen. Laws sec. 6-41-1(2)• Examples – theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, breach of duty of confidentiality (employees), or espionage through electronic or other means (R.I. Gen. Laws sec. 6-41-1(1)
Trade Secret – Potential Relief Trade Secret Misappropriation 1.Injunction –actual or threatened 2.Damages – actual loss/unjust enrichment/reasonable royalty 3.Exemplary Damages – willful/malicious (double damages plus attorneys fees)
Benefits of Trade Secrets • 1. trade secrets have no registration costs (trademarks $275, patents $533, copyrights $35) • 2. trade secrets go into effect immediately (trademarks – 13 months, patents – 24 month min., copyright – 6-8 weeks) • 3. trade secrets have no maintenance fees (trademarks, patents) • 4. trade secrets have no specific compliance requirements – need to take reasonable measures
Conclusion • Identify • Identify property and determine whether it is important to you and your company • Research • Take early action to search inventions, clear trademarks to avoid problems • Protect • File for appropriate patents, registrations • Enforce • Police property, pursue infringers