Intellectual Property (I.P.) broadly describes patent, trademark, copyright and trade secret laws and the related legal areas of trade dress, unfair competition, advertising, publicity, privacy, trade libel and defamation, computer law and Internet domain law. I.P. assets are critical to large and small businesses and start-up entrepreneurs. Fair use principles and the right to copy public domain technology and use generic terminology counterbalance exclusive rights granted or acquired by I.P. owners. I.P. may be a simple application of patent, trademark, copyright, or trade secret law or may be a complex interplay of various laws. For example, product designs may be protected by design patents and trade dress law. Computer programs may be protected under patent, trademark, copyright and trade secret laws. Business methods and computer program algorithms are protected by method or process patents. The underlying software is protected by copyrights on the source code and by trade secret clauses in consumer, distributor and developer contracts. We know the difference and provide simple solutions to complex I.P. matters. Contact our I.P. Specialist to discuss simple solutions to complex I.P.
Patents protect important discoveries relating to machines, manufacturing processes, business methods deployed over computer systems, computer programs and software which transform or monitor physical elements or intangibles such as money (financial product patents), chemical compositions and chemical processes. To be patentable, the invention must be new (novel) and non-obvious in light of all prior art or preexisting technology. Utility patents protect machines, processes, computer programs, chemical compositions and improvements of those items. Design patents protect ornamental designs or the exterior look of the product. A patent owner can stop a competitor from infringing the owner’s patent right during the term of the patent. A utility patent typically expires 20 years from the filing date. A design patent expires 14 years after issuance. Once the patent term expires, or a patent is declared invalid by a federal court, anyone can use the off-patent technology or design. The technology and design is then in the public domain. As a result, patent libraries in the USPTO represent a wealth of technology which can be exploited without fear of infringement. For more information read Patents.
Trademarks and trade names are used by every business to distinguish their goods and services from the goods and services of competitors in the marketplace. Consumers recognize trademarks and trade names as showing a common source, quality control or standard. Trademark registrations protect names and logos used in your business. When a domain name is used in a web site banner or an ad as a brand for goods or services, trademark registration is used to protect the domain and perfect ownership rights over the domain. Generally, trademark rights last as long as the owner uses it to mark his or her goods or services. Generic words or terms do not operate as trademarks and it is difficult to obtain trademark rights for descriptive terms or words. It is an act of unfair competition for a competitor to infringe any intellectual property right, or to unjustly assert or over-state his or her I.P. rights. Although comparative advertising using a competitor’s mark in your advertisement can be classified as “fair competition,” the use of the same or similar brand name or product name in an ad is false advertising and an act of unfair competition if there is actual or potential consumer confusion. The unauthorized use of a person’s name or likeness (photograph) for commercial purposes sometimes violates publicity laws. For more information read Trademarks.
Trade dress refers to the look, shape, ornamental theme or color combination of a product. If consumers distinguish your goods from your competitor, it is a protectable I.P. right. Trade dress is a branch of trademark law. If consumers associate the trade dress with those distinctive features of the goods, the look, shape or color may be a registrable trademark. Trade dress does not protect functional aspects of the product. For more information read Trade Dress.
Computer programs and software are uniquely protectable with many intellectual property laws such as patent, trademark, copyright and trade secret law. Simple solutions include trademark registration of the program name, copyrighting the source code and file structure, and using consumer, distributor and programmer developer contracts to preserve trade secrets in the executable code and processing algorithms. Patents protect high level functions of the computer program if the functions are novel and non-obvious. For more information read Computer Law.
Copyrights protect your brochures, advertisements, pamphlets, machine drawings, illustrations, web sites, computer programs, software and data bases developed for your business. Historically, copyrights protect films, books, songs, musical scores, pictures, video and works of art. Copyrights are relatively inexpensive to register and yet provide substantial benefits. A critical but complex issue often occurs in determining who owns the copyright to a creative work. In general, you own the copyright if your employee creates the work but, if an independent contractor creates the work, you need a written agreement or contract transferring ownership to you. For more information read Copyrights.
Trade secret law protects anything that (i) is a secret, that is, not generally known in your industry; (ii) has some value to your business; and (iii) is maintained by you as a secret. Trade secrets include customer and supplier lists, design and manufacturing specifications (e.g., drawings and processing specs), many aspects of R & D (research and development), business and marketing plans and internally distributed operating and procedural manuals (especially production manuals). Employment agreements, consultant agreements and confidentiality or non-disclosure agreements (NDA) are used to contractually protect trade secrets. For more information read Trade Secrets.
Web sites on the Internet are found and promoted by their unique domain names (for example, www.ComplexIP.com. To protect and defend Internet domains, we use trademark law principles for marks and domains which are distinctive. The principles of fair use, critical commentary, and sometimes product comparison law balance I.P. rights between opposing parties. The field of domain disputes is a complex and evolving field. Domain disputes require an understanding of the continually evolving technical aspects of the Internet, like parking services, blog operations, search engine optimization (SEO), social networks, virtual worlds (see, Second Life), keywords, and metatags combined with longstanding trademark principles. For more information read Domain Disputes.
To provide our clients with simple solutions to complex I.P. issues, we have broad technical experience in such diverse fields as computer hardware and software, Internet-based computer systems, financial transaction computer patents, video image processing, telecommunications systems, fiber optics, radio, cellular and mobile phone communications, electrical, mechanical devices, biomedical devices, pacemakers, defibrillators, catheters, laproscopic instruments, ultra-sound systems, nuclear reactors and reactor control systems, and jet aircraft engines. You can find more information in our Patent & Trademark Library.
Contracts, I.P. licenses and acquisitions and I.P. audits are used to exploit I.P. assets during their limited life cycle. We understand complex I.P. because we have secured and enforced patents, trademarks, copyrights and trade secrets for a wide range of products and services. Licensing I.P. requires understanding your specially identified I.P. and public domain materials, patent technology and the other party’s I.P. assets. We simplify complex I.P. problems with custom solutions. For more information read Licensing.
Every business has some form of I.P. asset (for example, a customer list) and many companies and entrepreneurs have unrecognized I.P. assets. Our attorneys, in consultation with you and your technical staff and sales directors, identify, quantify and help secure patent, trademark, trade dress, copyright and trade secret I.P. assets and enhance your company’s advertising, computer systems, methodology and Internet domains. For more information read I.P. Audits.
Securing I.P. rights by prosecuting patents and registering trademarks and copyrights represents only half the task. I.P. rights, without effective enforcement efforts, diminish the valve of your I.P. assets. Kain Spielman enforce I.P. rights in pre-litigation settings, with cease and desist letters, and if informal methods fail, enforce your rights by litigation in federal and state courts, mediation and arbitration. Our litigation is tailored to your business risk and goals. We balance the rights of I.P. owners with the rights of defendants to use public domain technology and to fairly use descriptive and generic terms in advertising and domains. Independently created works, such as computer programs, are usually not subject to claims of copyright infringement. Declaratory judgment actions limit overreaching efforts by I.P. owners. The U.S. Supreme Court has stated there is a “right to copy” and we respect those competitive rights. Federal and state appeals guide our enforcement and defensive efforts at the trial level and form the basis to overturn erroneous lower court decisions. We understand complex I.P. and supply you with solutions. For more information read our IP Litigation page.
Robert Kain is an I.P. specialist and is Board Certified by the Florida Bar in the Intellectual Property law field. For over 25 years, Kain has used his experiences as a registered patent attorney to author numerous published articles on patent, trademark, copyright, trade secret, computer law and domain name matters. These articles and his teaching credentials support his long term commitment as a specialist in I.P. For more information read our I.P. Specialist page.