IP Considerations and Strategies for Small to Medium-Sized Companies

1. SIA SNOW SHOW 2017
“DEFINING YOUR LINE”
IP CONSIDERATIONS AND STRATEGIES
FOR SMALL TO MEDIUM SIZED
COMPANIES
Pete Malen Jr.
Workman Nydegger PC (wnlaw.com)
Salt Lake City, UT
(this is not legal advice; opinions are those of the author alone)

2. MYTHS AND MISCONCEPTIONS
ABOUT INTELLECTUAL PROPERTY (IP)
We don’t
have any IP.
Our
company is
small, we
don’t need
IP.
IP is too
expensive.
It’s not that
important.
We can wait
until later.
It takes too
much time.
It’s easy to
get around
someone’s
IP.
IP is not that
complicated, I
can do it
myself.

3. MYTH #1 - WE DON’T HAVE ANY IP
 You MAY have IP if you have…
 Brands
 Product shapes and configurations
 Product designs
 Product packaging
 Manufacturing methods and processes
 Website
 Social media
 Other content

4. MYTH #2 – OUR COMPANY IS TOO SMALL
 What matters is NOT the size of the company, but the work
that you do…
 Design
 Production
 Marketing
 Sales

5. MYTH #3 – IP PROTECTION IS TOO EXPENSIVE
 Many types of IP protection are NOT
particularly expensive, but still offer the
possibility of valuable protection.
 Trademarks/service marks (Nike swoosh)
 Copyrights (poster)
 Trade dress (7-11 color scheme)
 Trade secrets (Coke formula)
 Design patent (ski shape)

6. Intellectual Property
Examples

7. MYTH #4 – IP PROTECTION IS NOT IMPORTANT
 Protecting your IP can help preserve your
investments in technology, marketing,
content, and brand development
 Trademark/service mark registration
 Copyright
 Trade dress
 Design patent

8. MYTH #5 – IP PROTECTION CAN WAIT
 IP protection is often granted based on
priority, i.e., who filed first for protection
 The US and most foreign countries are
‘first to file’ jurisdictions
 Between two applicants for protection
of the same invention, the patent – if
granted – is awarded to whoever filed
first
 Also true with trademarks, though to a
different extent.
 So, better to file earlier than later!

9. MYTH #6 – LEGAL ISSUES TAKE UP TOO MUCH TIME
 It’s generally faster/easier/cheaper to
avoid mistake$, than to fix mistakes
 Make the initial time investment early on
to help avoid mistakes that can take up
your time and $$ later
 Your IP attorney can help to minimize your
time spent on legal matters, so you can
focus on your business

10. MYTH #7 – IP PROTECTION IS EASY TO GET AROUND
 Your IP rights can provide significant
barriers to competitors if those rights are
well-protected – this is where your IP
attorney comes in…
1. Awareness
2. Diligence
3. Willingness

11. MYTH #8 – IP IS NOT THAT COMPLICATED – I
CAN HANDLE IT MYSELF
 Pitfalls
 Too late and/or too expensive to fix
mistakes
 Wrong strategy can limit your scope of
IP protection
You can save time and $ by
performing surgery on yourself,
but would you?!

12. BRIEF RECAP…
Anything else you can do?

13. OTHER USEFUL, AND INEXPENSIVE, THINGS YOU
CAN DO TO HELP PROTECT YOUR IP…
 Employment agreements
 Web/content developer agreements
 Confidentiality agreements
 Trademark watches
 Periodic review of your
technology/branding/design developments
 Keep an eye on the competition

14. WHAT IF I IGNORE MY IP AND DON’T DO ANY OF
THESE THINGS…?
 TM infringement/dilution/confusion
 May have to change your TM/brand if
others have superior rights
 Design & copyright infringement –
others may copy your designs and
content
 Disclosure of your trade secrets to
competitors
 Loss of market share
 Loss of revenue
 Loss of reputation

15. QUESTIONS OR COMMENTS?

16. Peter F. Malen Jr.
Workman Nydegger PC
Salt Lake City, UT
pmalen@wnlaw.com
www.wnlaw.com
Thank You!