JWI 575 New Business Ventures & Entrepreneurship, week8 summary, 8/25/13
Intellectual Property (IP) is now the most important asset owned by a corporation as it forms the basis of sustainable competitive advantage and profitability. The way entrepreneurs handle the development, protection, enforcement, and prosecution of Intellectual Property (IP) can make or break the enterprise.
I. Four forms of IP protection - Trademark, Copyright, Patent & Trade Secret
Original work of value can be legally protected through four forms of IP including Trademark, Copyright, Patent and Trade Secret (Kaplan & Warren, 2010). Each form of IP offers different levels of legal protection by the federal government of the United States. As protection levels for IP differ widely internationally and even from state to state within the US, specific steps should be taken to achieve the level of protection desired.
Trademarks are used to protect the logo, symbol, short phrase, jingle and brand identity or service description (JWI 575, W8 L1). Simply by using a mark in the course of public commerce, the entrepreneur can establish a common-law right to that mark and may be considered its legal owner. The user can also file for a trademark by applying to the U.S. Patent and Trademark Office (USPTO) in Washington, D.C, by preparing an application describing the trademark and providing drawings.
Copyright protects a specific expression of an idea and is granted to words - written, spoken or performed, art, musical compositions, plays, photography, architectural designs, computer programs, titles and slogans. The author of the work owns the copyright at the moment of its creation. When work is made for hire, the copyright ownership resides with the employer. Registration can be made with the US Copyright Office (USCO) and the process can take eight to twelve months. To register, the owner must provide a declaration, apply to USCO with copies of material to deposit with Library of Congress and obtain a registration number. Copyrights need to be renewed to remain in force.
Patents grant the holder the right to exclude others from making, using, selling or offering for sale the patent invention. To qualify, the invention needs to be novel, useful and non-obvious. For the value of the patent to be realized, the patent must be exercised to yield the patent holder competitive advantages or profit. In return for disclosure and teaching the world about the invention, the entrepreneur enjoys about 20 years of exclusive rights. In addition to creating a revenue stream through royalties for licenses to use, patents help build a moat for the enterprise against new competitors.
The key steps to file a patent include idea conception, documentation of the idea, careful selection of a competent IP law firm, research about prior art and related patents, patent application with diagrams and flow charts and reception of patent approval letter. The entrepreneur should be vigilant to safeguard the rights by searching for patent infringement and prosecuting appropriately.
A Trade Secret is vital information a firm withholds from the public domain as such information is crucial for entrepreneurial success. For example, Coke's formula is a well kept trade secret.
II. How to perform searches for trademarks and copyrights
There are several ways to perform copyright searches. First, the US Copyright office maintains a searchable database (http://www.copyright.gov/records/) that can be leveraged. The Catalog of Copyright Entries is the U.S. Copyright Office’s official publication of copyright registrations and renewals, organized into categories of works. Part I includes registrations for books, pamphlets and periodicals (http://books.google.com/googlebooks/copyrightsearch.html).
For books registered before 1978, the Catalog of Copyright Entries can be manually searched. Hard copies can be found at the Copyright Office located in the Library of Congress, James Madison Memorial Building, 101 Independence Ave SE, Washington, DC 20559-6000, and at a number of different libraries throughout the U.S., including Stanford, University of Michigan and University of California.
Second, the United States Patent and Trademark Office (USPTO) offers search for patents, trademarks as well as copyrights (http://www.uspto.gov/main/profiles/acadres.htm). The trademark search database maintained by USPTO is a great resource (http://www.uspto.gov/trademarks/process/search/).
Finally, law firms that specialize in copyright and trademark searches can also be used (http://ct.wolterskluwer.com/companies-and-products/ctcorsearch/search-services). In these ways, a thorough search for copyrights and trademarks can be made.
III. Basic questions to ask in protecting IP
What are the IPs used in the business?
What is their value (and hence level of risk)?
Who owns it (could I sue or could someone sue me)?
How may it be better exploited (e.g. licensing in or out of technology)?
At what level do I need to insure the IP risk?
Dr DP
Intellectual Property (IP) is now the most important asset owned by a corporation as it forms the basis of sustainable competitive advantage and profitability. The way entrepreneurs handle the development, protection, enforcement, and prosecution of Intellectual Property (IP) can make or break the enterprise.
I. Four forms of IP protection - Trademark, Copyright, Patent & Trade Secret
Original work of value can be legally protected through four forms of IP including Trademark, Copyright, Patent and Trade Secret (Kaplan & Warren, 2010). Each form of IP offers different levels of legal protection by the federal government of the United States. As protection levels for IP differ widely internationally and even from state to state within the US, specific steps should be taken to achieve the level of protection desired.
Trademarks are used to protect the logo, symbol, short phrase, jingle and brand identity or service description (JWI 575, W8 L1). Simply by using a mark in the course of public commerce, the entrepreneur can establish a common-law right to that mark and may be considered its legal owner. The user can also file for a trademark by applying to the U.S. Patent and Trademark Office (USPTO) in Washington, D.C, by preparing an application describing the trademark and providing drawings.
Copyright protects a specific expression of an idea and is granted to words - written, spoken or performed, art, musical compositions, plays, photography, architectural designs, computer programs, titles and slogans. The author of the work owns the copyright at the moment of its creation. When work is made for hire, the copyright ownership resides with the employer. Registration can be made with the US Copyright Office (USCO) and the process can take eight to twelve months. To register, the owner must provide a declaration, apply to USCO with copies of material to deposit with Library of Congress and obtain a registration number. Copyrights need to be renewed to remain in force.
Patents grant the holder the right to exclude others from making, using, selling or offering for sale the patent invention. To qualify, the invention needs to be novel, useful and non-obvious. For the value of the patent to be realized, the patent must be exercised to yield the patent holder competitive advantages or profit. In return for disclosure and teaching the world about the invention, the entrepreneur enjoys about 20 years of exclusive rights. In addition to creating a revenue stream through royalties for licenses to use, patents help build a moat for the enterprise against new competitors.
The key steps to file a patent include idea conception, documentation of the idea, careful selection of a competent IP law firm, research about prior art and related patents, patent application with diagrams and flow charts and reception of patent approval letter. The entrepreneur should be vigilant to safeguard the rights by searching for patent infringement and prosecuting appropriately.
A Trade Secret is vital information a firm withholds from the public domain as such information is crucial for entrepreneurial success. For example, Coke's formula is a well kept trade secret.
II. How to perform searches for trademarks and copyrights
There are several ways to perform copyright searches. First, the US Copyright office maintains a searchable database (http://www.copyright.gov/records/) that can be leveraged. The Catalog of Copyright Entries is the U.S. Copyright Office’s official publication of copyright registrations and renewals, organized into categories of works. Part I includes registrations for books, pamphlets and periodicals (http://books.google.com/googlebooks/copyrightsearch.html).
For books registered before 1978, the Catalog of Copyright Entries can be manually searched. Hard copies can be found at the Copyright Office located in the Library of Congress, James Madison Memorial Building, 101 Independence Ave SE, Washington, DC 20559-6000, and at a number of different libraries throughout the U.S., including Stanford, University of Michigan and University of California.
Second, the United States Patent and Trademark Office (USPTO) offers search for patents, trademarks as well as copyrights (http://www.uspto.gov/main/profiles/acadres.htm). The trademark search database maintained by USPTO is a great resource (http://www.uspto.gov/trademarks/process/search/).
Finally, law firms that specialize in copyright and trademark searches can also be used (http://ct.wolterskluwer.com/companies-and-products/ctcorsearch/search-services). In these ways, a thorough search for copyrights and trademarks can be made.
III. Basic questions to ask in protecting IP
What are the IPs used in the business?
What is their value (and hence level of risk)?
Who owns it (could I sue or could someone sue me)?
How may it be better exploited (e.g. licensing in or out of technology)?
At what level do I need to insure the IP risk?
Dr DP
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