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One of the strongest assets an IT company can possess is its intellectual property (IP). That IP can range from something as simple as the name of the firm (protected with a trademark) to an idea, invention, process, tool, or service that gives the firm a competitive advantage no one else can match (protected with a patent), or anywhere between those two ends of the spectrum.
While not intended as legal advice, the following brief overview looks at three of the more common forms of IP — copyrights, trademarks, and patents — as well as situations in which each may apply. It is important to note that IP issues that should be straightforward and simple rarely are. Thus, consulting with an attorney who specializes in intellectual property cases and filings is always recommended.
Copyright protection is traditionally denoted by the circled “C” symbol: ©. It can be granted for almost anything that can be put on paper in one way or another. While this applies equally to the great American novel and the instruction guide for installing the new app you’ve created, it can also apply to a website (wording shown to the viewer as well as code not shown to them), music, videos, photographs, and so on.
As a general rule, if you can describe it with words, then you can often copyright it. This is one of the oldest forms of intellectual property protection and its existence is grounded in the United States Constitution.
The work for which the copyright is granted must be original and it can be granted to works that are both published (shared with others) and unpublished (not available for others to see). A tricky concept is that copyright is automatically granted to works when they are created and registration is considered “voluntary.”
Why this is tricky is that even though registration is voluntary, it can be much more difficult to prove creation without registration: There are some who still recommend “a poor man’s” registration in which you mail a copy to yourself through the USPS in a sealed envelope, but courts have not always look upon that favorably and registration is fairly easy and inexpensive. Complete information and forms are available online.
Registration rates vary based on the number of authors, type of submission, and so on. As of this writing, however, the standard fee of $45 is charged for one author to submit their work electronically.
It is worth pointing out that there are many things that can be put in writing that cannot be protected by copyright for one reason or another. Among the things that cannot be protected are names (this includes domain names as well as proper names), titles, slogans, ideas, phrases, sequences of numbers, and other entities for which another form of IP protection is best suited.
For works that you put your own name on, the copyright lasts for the lifetime of the author plus an additional 70 years. For an anonymous work (or one made with a work-for-hire arrangement), the copyright term is 95 years from the year of its first publication or a term of 120 years from the year of its creation.
One tricky condition of copyright is that it is automatically granted to the creator of the content unless it has been legally assigned elsewhere. Only, as set forth by the U.S. Copyright Office, there is no standard form to effect a transfer of copyright and (as might be reasonably conjectured) the Copyright Office only keeps records of transfers that are submitted to it.
Suggested Uses: On a regular basis — whether that is weekly, monthly, or other depends on the productivity of your organization — dump everything from your website (code and content) into a single file, give it a title, and register it for copyright protection.
As long as the site content has a single title (for example, “July 2022 Works in Progress”) and one author associated with it (the IT Manager, for example), only the base fee applies.
As mentioned, names do not qualify for copyright protection: that is where a trademark comes in. A trademark protects words, phrases, symbols, or designs identifying the source of products, goods, or services, and allows them to be distinguished from those of others.
Technically speaking, there is a difference between trademarks and service marks (both are proprietary marks), but the process for applying for protection is the same. The term “trademark” is often used generically to refer to both in the same way “Kleenex” (a registered trademark, incidentally) is used generically in conversation for any facial tissue.
Trademarks are registered with the United States Patent and Trademark Office (USPTO), a fee-funded arm of the U.S. Department of Commerce. A trademark cannot be used to protect a domain name and there have been cases in which challenges to the name online have been ruled to differ from protections that exist offline.
The USTPO suggests that before filing a trademark application, you should consider (1) whether the mark you want to register is registerable, and (2) how difficult it will be to protect your mark based on the strength of the mark selected.
One very important thing to note in this regard is that the USPTO only registers marks. You, as the mark owner, are solely responsible for enforcement and, if you fail to fervently enforce, then you forfeit your protection.
When it comes to being “registerable,” one of the most common reasons you could be refused registration is if a “likelihood of confusion” between the mark you want to register and a mark already registered (or in the filed-yet-pending pile) exists. It is up to the USPTO to subjectively make the determination whether or not a likelihood of confusion exists.
In arriving at their decision, USPTO will consider not only whether the marks are similar, but also whether the goods and/or services of the two parties are closely related enough that buyers could believe (mistakenly) that they came from the same company.
This is important because just having two logos that are similar or two products that are similar may not always be enough to confuse the market and so two similar marks can coexist: This is why it is possible to have both The Beatles' Apple Music and Apple Computers with similar names and similar logos.
Conducting a search of your mark before filing an application is necessary and can save the expense of applying for a mark you will likely not receive. Not only can the search show whether someone else is using something similar, but it can also point out if a part of your mark appears as generic or could be considered descriptive wording (which makes it weak and/or difficult to protect).
Once protection has been sought, you are expected to use a symbol with it to tell the rest of the world that you have such protection. Bear in mind that the impetus is on you to protect your mark (as mentioned already) and that it is easier to protect if you’ve first told others that it has that status.
If registered, then the symbol to be used is a circled “R” ® after the mark. If it has not yet been registered, then you are to use TM for goods and SM for services to indicate that you have adopted this as a trademark or service mark.
Filing electronically currently costs between $225, and $275, and trademarks are generally valid for 10 years with a possibility/need to renew every 10 years. One tricky thing about trademark protection is that there is a requirement that the holder of a trademark be known (as opposed to copyrights, which can be given to pen names, anonymous authors, and so forth).
Because trademarks cannot be held anonymously, courts have ruled that unknown authors and artists cannot benefit from trademark protection. More information on trademarks is available online.
Suggested Uses: If you are creating new apps, new logos, new taglines, and similar entities that you want associated with your company and that are unique, then apply for this protection. It can sometimes be surprising what investors will value.
I have seen investors whip themselves into a frenzy over the logo a company intended to associate with a product. They subsequently valued the company much higher than they otherwise might have because the logo was trademarked.
The crème de la crème of intellectual property protection is the patent, which is issued by the United States Patent and Trademark Office (USPTO). Not all patents are equal in value: a provisional patent provides one-year “protection” on anything.
I’ve used the word “protection” in quotation marks because the cost of acquiring a provisional patent is very small, the paperwork is minimal, and it does not offer much at all in the form of true protection. The primary purpose behind it is to allow an inventor to protect their idea while researching it further and — hopefully — applying for a nonprovisional patent.
Nonprovisional patents come in three flavors: design, plant, and — the most popular form — utility. A design patent is for a unique (usually ornamental) design of an item: the shape of a container, for example. A plant patent is for a new plant, seedling, cutting, etc. A utility patent is for almost everything else: machines, processes, systems, and so on.
The length of a patent differs (design patents aren’t as long as others, for example), but a general rule is that protection is awarded for 20 years from the earliest filing date of the application. The means that protection is granted retroactively. If a provisional patent was first issued, then the one-year coverage it offered is subtracted from the life of the nonprovisional patent, not added to it.
Patent law requires that an invention must not only be new (“novel”), but also "non-obvious," and it must meet other requirements as well. There must be a use for it (it cannot be just theoretical or an abstract idea), and it cannot be an item (such as a book) that could be protected by another form of protection (such as copyright).
Downsides to patents include patent trolls — predatory individuals or organizations that hoard patents to enforce patent rights against accused infringers — and the requirement to share with the world the specifics of what you created. This information must be publicly disclosed in your application.
The costs of acquiring a nonprovisional patent are substantial (and time-consuming) but differ greatly based on the category of the application and the search requirements within that category. More information on patents is available online.
Suggested Uses: Seek patent protection for anything and everything you come up with that qualifies for that protection AND that can be cost-effectively patented. The costs of obtaining the protection and legally enforcing it can be substantial and may not always be worth the expense — so a careful analysis should always be done.
One small company I am familiar with has invented many new products and chosen to patent none of them. This course has been followed out of a knowledge that they would not have the resources to fight a legal battle against a better-funded company and a conviction that filing notifies the world of exactly what they’ve done and offers a blueprint for duplicating them.
Nothing is simple
When you look at the forms of IP protection discussed, the guidelines for each are fairly straightforward. In reality, it isn’t always that easy as every instance of protection and every occurrence of violation has a subjective component to it. The courts have made interesting decisions in recent years that often contradict what was expected and in a future article we will further explore this aspect of IP protection.