Strategies to protect Intellectual Property


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George Willman
, Partner at Reed Smith LLP, in areas of technology, transactions, patents, and IP conseling and Nina Borders, associate in the firm’s IP litigation group, focusing on patent and trademark prosecution and litigation, talked on Intellectual Property Protection Strategy at http://www.bio2devicegroup.org event.

Companies approach IP protection with twin goals of building value and creating an asset and avoiding infringement, said Willman. Willman and Borders spoke about the four major categories of IP, each protected differently with different body of law.

** Trade Secrets: Trade secrets help protect secret information and examples include secret formula, source code, manufacturing process, customer list and so on. The types of information that can be protected are broad, and trade secret protection may be available before a patent is filed and published. Also, unlike other forms of IP, there is no trade secret “application.” Most states require that you use reasonable measures to protect the trade secret in order for the trade secrets to be legally protected. Reasonable measures include – marking documents confidential, ensuring secure access to the building, and using NDAs and confidentiality provisions in agreements. Trade secrets can be reverse engineered or independently developed (assuming this is not breaching a confidentiality agreement or obligation or using other intellectual property such as a patent). In fact, the law encourages reverse engineering of trade secrets.

Venture capitalists do not typically sign NDAs. However, a presenting company should mark as confidential any slides, try not to leave material behind and not reveal entire secret sauce, said Willman. Whenever possible, the presenting company should file patent application prior to public presentations.

** Patents – Patents protect the right of the patent owner by excluding others from making, using, or selling the invention claimed in the patent without prior permission, said Borders. The most common patents are design and utility patents. Patents last for 20 years from the date filed and then the invention is in the public domain. The Patent’s subject matter is important. Utility patent for instance, protects the structure and function of the apparatus or system, the process of making or using something in an original way, or the composition of the matter. Design patent protects the ornamental or aesthetic features of a new or original design but does not cover the functional aspects of the design. Patents may be filed in the United States and in the respective patent offices of other countries if international patent protection is sought. There is no such thing as a world wide patent, said Borders.

Patent application filing must include white paper-like description of the invention plus all drawings and claims which set forth the key aspects of the invention. In order for an invention to be patentable, it must meet the requirements of novelty, utility and nonobviousness, said Borders. Also inventor can file a provisional patent as a placeholder and would have a year to convert and file a full application for examination. What may not be patentable are laws of nature, natural phenomena, and abstract ideas like algorithms.

** Trademarks: Trademarks are any word, design, slogan, tagline, color or sound that serves as a source identifier for the company and where a consumer may see it and identify it with the company may be a trademark. It can be a word, name, phrase, symbol design or combination, and it may identify and distinguish the source of the product or service. Trade dress, which is the look and feel of something such as package design or the motif of a restaurant or retail store may also serve as a trademark, said Borders. Common law rights, arising from use, allow the owner to accrue trademark rights and enforce the mark against someone using a similar mark solely based on the use of the mark, however there are definitely benefits to registration too, said Borders. Trademark can be registered at the federal level for protection in all 50 states or it can be filed in a particular state or states. Trademark filing is different in different countries and most countries, outside US, don’t recognize rights in use. A trademark can last as long as the trademark is in use and, for a registered trademark, as long as the trademark registration continues to get renewed. With proper use, trademarks can last indefinitely, said Borders. Inventor can licence all IP or trademarks to others to use and they should control and monitor the propriety of use.

** Copyrights: Copyrights give the owner legal protection for works of authorship, including things like books, movies, paintings and so on, and important for technology companies, softwareThe bar for copyright protection is very low and requires originality. One cannot get copyright protection on ideas, or the underlying processes of software. However, copyright can protect source code from copying. If you can get it, a patent can provide broader protection than a copyright, since patent claims can cover broad classes of solutions.. However, in certain industries like the movie world, copyright is the standard form of protection.

Recaping different strategies for protection, Willman said that a patent costs the most and can offer the highest level of protection whereas the cost for copyright can be relatively low but generally may offer less protection. On the other hand, trade secrets and trademarks offer mid range protection and cost in the mid range as well, said Willman.

The session was followed by Q & A.

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