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Chair, Intellectual Property


Intellectual Property


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January 8, 2018
What Are Your New Year's IP Resolutions?
Happy New Year!  To those in New England, congratulations on surviving the "bomb cyclone" and the historic arctic blast.  As the Year 2018 begins, it is a good time now for any business, large or small, to review and update its intellectual property (IP) policy and strategy, whether it is to protect its own IP or to minimize business risk.   Here is some information you may find helpful when you define your business's New Year's resolutions about IP.
Trademarks (and trademark issues) are everywhere.
You may or may not know if your business has one.  But trademarks are everywhere; so are trademark issues.  A trademark helps the public to distinguish your business's products/services from others'.  Your business's name, product/service name(s), and marketing slogan(s) can, on one hand, be trademarks and entitled to trademark protection, and, on the other hand, be susceptible to risk of infringing other's trademark rights.  

Trademark fundamentals every business should know:
  • A parallel federal/state system.  In the United States, both federal trademark law (Lanham Act) and state trademark law (common law) co-exist and can complement each other.  A federal trademark registration gives your business federal (nation-wide) protection and access to federal courts.  A state trademark registration is only valid within the state boundary.  Even without a federal or state trademark registration, your business may still be entitled to certain trademark protection under state common law.
  • Register if you can.  Although technically not necessary for trademark protection, in practice, a trademark registration, especially a federal registration, comes with many significant benefits and is therefore highly recommended.
  • Pick your mark wisely.  Trademarks come in many forms, such as word, phrase, logo, and even sound or scent.  But they're not without limitations.  The more distinctive a trademark is, the stronger protection it would enjoy.  A more distinctive trademark is usually more difficult to gain customer or public recognition, but the hurdle, once conquered, can be rewarded with tremendous long-term benefits.
  • Use your trademark and use it consistently.  Trademark rights arise from use.  In general, if you don't use it, you don't have trademark rights.  Even if you have already secured a registration for a certain trademark, you can still lose it if you stop using the trademark.
  • Clear a mark before using it.  Even if you don't want any trademark protection for your mark, it does not mean you can just start using it.  Your business's name, product/service name, or marketing slogan may infringe other's trademark rights.  Turning a blind eye is an invitation for a trademark cease-and-desist letter or trademark lawsuit.
  • Domain Name ≠ Trademark.  Owning a certain domain name does not itself give you a trademark right to the name, and vice versa (to some extent).  For any trademark with substantial value, you should always check the availability of the corresponding domain name(s) and secure them if needed.
Patent is the most common and (most of the time) effective way to protect inventions.
Patent is probably the most common way to protect technology inventions.  Many times it is the most effective way.  Sometimes it may be the only way.  A patent allows you to prevent others from making or having it made, using, or selling your invention, or importing it into the United States.  If your business depends on innovation, whether it innovates itself or uses other's innovation, patent can be your best friend and, unfortunately, can also be your worst enemy.  

Patent fundamentals every business should know:
  • Federal law only.  Unlike trademark rights, patent rights are created and governed exclusively by federal law.  There is no such thing as a state patent.
  • File early.  One needs to file a patent application to get a patent.  A few years ago, the U.S. patent law switched to a first-inventor-to-file system and is now in sync with the patent system in most other countries in the world.  It means, in general, the earlier you file a patent application the better.  You may lose your patent rights if another wins the race to the U.S. Patent and Trademark Office (USPTO), even if you came up with the invention first.
  • Utility v. Design.  In the U.S., there are multiple types of patents, including utility patents (most common) and design patents.  Utility patents protect new and useful technology inventions, such as a gadget.  Design patents protect ornamental designs, such as the shape of a device or a user interface.
  • Provisional v. Nonprovisional In the U.S., there are two types of patent applications:  provisional application and nonprovisional application.  Each type has its pros and cons and better fits certain situations but not others.  Provisional patent applications are generally quicker and less expensive to prepare, and therefore can be appealing to individual inventors and companies with modest resources; but they have severe limitations and significant downsides.

  • The good (and evil) 1-year grace period.  You may have heard about the 1-year grace period.  It can save your patent rights sometimes, but it can also seriously jeopardize your patent rights in certain situations.
  • Clear before use. Whether or not your business owns a patent for a product/service, it will need to determine if it is clear to make, use, or sell the product/service.  A patent gives its owner a limited monopoly to exclude others.  But it is a negative monopoly, that is, it does not give the owner any right to use its own invention.  For example, if Company A owns Patent A for an innovative device and Company B owns Patent B for a component of the device, Company A may prevent others from making the device but Company A itself may not be able to make the device either without first seeking permission (e.g., a license) from Company B.
  • Think globally.  Patents are territorial.  A U.S. patent is only good in the United States.  If you need patent protection outside the country's border, you will need to secure patent in each country separately.  Although there are international patent applications, there are generally no international patents (with very limited exceptions). 
Always be mindful of copyright.
Copyright protects original work fixed on a tangible medium, such as a book, a painting, an audio recording, and a movie. 

Copyright fundamentals every business should know:
  • Expression v. Idea. Copyright protects expression, not idea.  For example, the Star Wars novel is entitled to copyright protection.  But the general idea of an interstellar war is not.  Everyone is free to write their own science fiction novel about an interstellar war, as long as you come up with your own story scheme and create your own characters.
  • Copyright infringement v. Plagiarism. They are different.  Plagiarism is about academic or authorship integrity; copyright infringement is a legal violation.  Citing and giving credit to a source may avoid plagiarism, but it's largely irrelevant when a court determines copyright infringement.
  • Registration not needed (but...). Copyright protection can be considered "automatic" in some aspects.  At the moment you pen down your article on a piece of paper or click "Save" for a computer source code file, it is entitled to copyright protection.
  • Registration recommended. A copyright registration (to the Library of Congress) comes with many benefits and should be considered for any significant work.  For example, a court usually requires a registration or at least an application for registration before one can bring a copyright infringement lawsuit against an alleged infringer. 


Don't forget trade secrets.
Trade secrets cover a very wide range of subject matters.  Almost any secret with commercial value can be a trade secret, such as a manufacturing process, a cake recipe, or a customer list.  No formal registration or application process exists for trade secrets.  

Trade secrets fundamentals every business should know:
  • Keep it secret.  It sounds obvious, but may not always be straightforward.  For any information to qualify as a trade secret, your business needs to use reasonable efforts to protect the trade secret (to keep it secret).  That may include keeping the printout of a secret design in a safe or a locked room, or requiring login credentials to a computer system storing a secret customer list.  Your business should have a (preferably written) procedure in place about its efforts of protecting trade secrets.
  • Watch out for employee departure/joining.  Be clear about what information a leaving employee can or cannot take out and what a joining employee can or cannot bring in.  You want to protect your own trade secrets, as well as not unintentionally use other's trade secrets.
  • Trade Secret v. Patent.  Almost anything secret and valuable can be a trade secret, while patent subject matters are limited by statutes and case law.  For a subject matter ineligible for patent protection, a trade secret may be the only protection available.  For a subject matter that can be protected by both mechanisms, many factors need to be considered to select the right protection vehicle.  For example, trade secret protection does not protect from independent development or reverse engineering.  If an invention can be easily reverse-engineered based on a released product, trade secret is probably not a viable solution.  In addition, patent protection has a time limit (e.g., generally 20 years from the filing date).  If long term protection is desired, your business should consider keeping it as trade secret.  Normally, an invention cannot get both patent and trade secret protection, since patent protection generally requires disclosure of the invention to the public.
In the coming weeks and months, we will follow up with articles discussing individual topics in detail.  Stay tuned.  In the meantime, if you have any questions, please contact the IP team at Mirick O'Connell.

Mirick O'Connell is a full-service law firm with offices in Worcester, Westborough and Boston, Massachusetts.  The Firm's principal practice groups include Business; Creditors' Rights, Bankruptcy and Reorganization; Elder Law; Family Law and Divorce; Intellectual Property; Labor, Employment and Employee Benefits; Land Use and Environmental Law; Litigation; Personal Injury; Public and Municipal Law; and Trusts and Estates.
This client alert is intended to inform you of developments in the law and to provide information of general interest.  It is not intended to constitute legal advice regarding a client's specific legal issues and should not be relied upon as such.  This client alert may be considered advertising under the rules of the Massachusetts Supreme Judicial Court.