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