(Source: SBA web-site, U.S.
Patent and Trademark Office web-site, U.S. Copyright Office)
As you work to build your company, you are going
to build up a certain amount of intellectual property (IP). For
use later in patent filings or in protecting yourself in any potential
legal proceeding, it is essential that you and those developing
IP at your company keep an R&D notebook. Click
here for helpful hints for some ideas on how to maintain
an R&D notebook.
The three key tools used to protect intellectual
property are: Patents, Trademarks, and Copyrights.
Patents, Trademarks and Copyrights are all different
types of intellectual property protection. For example, a patent
protects an invention while a copyright protects an original artistic
or literary work. You need to understand each of these three main
protection vehicles to best identify which one suits the needs
of business and best protects your intellectual property.
PATENT Definition: A Patent
provides rights of protection for up to 20 years for inventions
in three broad categories:
- Utility Patents protect useful processes, machines,
articles of manufacture, and compositions of matter. Some examples:
fiber optics, computer hardware, medications.
- Design patents guard the unauthorized use of
new, original, and ornamental designs for articles of manufacture.
The look of an iMac laptop, a bicycle helmet, the X-Men characters
are all protected by design patents. Note: in most cases Design
patents have a period of 14 years versus 20 year for most other
- Plant patents are the way we protect invented
or discovered, asexually reproduced plant varieties. Hybrid
teas roses, Silver Queen corn, Better Boy tomatoes are all types
of plant patent
TRADEMARK Definition: A Trademark
is a word, phrase, symbol or design, or a combination of words,
phrases, symbols or designs, that identifies and distinguishes
the source of the goods of one party from those of others. Any
time you claim rights in a mark, you may use the "TM"
(trademark) or "SM" (service mark) designation to alert
the public to your claim, regardless of whether you have filed
an application with the USPTO. However, you may use the federal
registration symbol "®" only
after the USPTO actually registers a mark, and not
while an application is pending. Also, you may use the registration
symbol with the mark only on or in connection with the goods and/or
services listed in the federal trademark registration.
COPYRIGHT Definition: A Copyright
© is a form of protection provided to the authors of "original
works of authorship," including literary, dramatic, musical,
artistic, and certain other intellectual works. This protection
is available to both published and unpublished works.
A trade secret is information that is secret or not generally
known in the relevant industry and that gives its owner an advantage
over competitors. Trade secret protection exists as long as the
information is kept secret or confidential by its owner and is
not lawfully and independently obtained by others. Examples of
trade secrets include formulas, patterns, methods, programs, techniques,
processes, or compilations of information that provide one s business
with a competitive advantage. The owner of a trade secret may
recover damages resulting from the improper disclosure or use
of its trade secret by another.
Trade secrets are not registered like other forms
of intellectual property and are not creatures of statutes. Instead,
the judicial system of each country determines the requirements
for obtaining trade secret protection. Protection for trade secrets
is found in the TRIPS Agreement under the heading "Protection
of Undisclosed Information" (TRIPS Article 39). Protection
of undisclosed test data for marketing approval of pharmaceutical
products is particularly sensitive. Some of the factors commonly
- The extent to which the information is known
outside of the business;
- The extent to which the information is known
by employees and others involved in the trade secret owner s
- The extent of the measures taken to guard the
- The value of the information to the owner and
- The amount of money or effort expended by the
trade secret owner in developing the secret; and
- The effort required by others to acquire or
duplicate (through reverse engineering) the information.
The secrecy of an alleged trade secret is the most
important factor to be considered. If the information claimed
to be a trade secret is available through any legitimate means
and is obtained in this way, then the information is no longer
secret and may become ineligible for protection. However, if the
owner has taken reasonable steps to protect the information, but
the trade secret information nonetheless is publicly disclosed,
the courts in many countries may still grant protection. Such
reasonable steps may include requiring those persons who encounter
the information as the result of normal business ventures to sign
confidentiality and nondisclosure agreements.
Costs vs. Benefits
As with all business-related activities, economics plays a large
role in determining whether to protect intellectual property.
Companies must weigh the potential value of an intellectual property
right against both the probability of realizing that value and
the costs of securing, enforcing, and maintaining that right.
Small start-up operations, typically strapped for cash, must take
extra care in determine what to protect and, thus, what to spend
There are no hard and fast rules that determine
the potential value of a given intellectual property right. What
is valuable to one individual or company may be worthless to another.
There are certain obvious factors that contribute to the potential
value of the intellectual property, including the potential value
of exclusive or other rights, assignments, or licenses, cross-licenses,
enforcement against infringers, and as collateral for securing
A trademark or service mark may be a very valuable
asset. For example, CitiGroup obtained the red umbrella trademark
of Travelers' Insurance when Travelers and CitiBank merged in
1993. The logo had such a strong positive brand recognition, CitiGroup
has leveraged that logo into all its commercial and consumer product