The following article was first published in the Late Fall 2016/Early Winter 2017 issue of Central Bucks Chamber of Commerce’s W4 Magazine.
In today’s business environment, companies inadvertently or purposefully imitate their competitors. Today’s employees, with knowledge of a company’s confidential information, may become tomorrow’s competitor. How can a business safeguard its valuable assets?
Understanding the basics of intellectual property (IP) rights and seeking protection for such assets can save money and be critical for business growth and development. Business owners should protect valuable assets with applicable forms of IP including, copyrights, trademarks, patents, and trade secrets.
Most companies have materials that can be protected by copyright. As soon as an original work is written, recorded or fixed in any tangible medium of expression, the author has copyright “attached” to the work. Works of authorship may be literary works, such as novels, musical compositions, or architectural designs. Computer programs and databases can also be protected by copyright.
The owner of a copyright can control who may copy, use and distribute the copyrighted work. Copyrighted works should be designated by the © symbol, or the word “Copyright,” followed by the year of publication, the name of the owner, and the language “All rights reserved.” Copyright protection is provided for a limited term. For individual authors, copyright protection may last up to 70 years following the death of the author. For works “made for hire” (e.g., such as in the course of employment), the copyright lasts for a term of 95 years from the year of its first publication or a term of 120 years from the year of its creation, whichever expires first.
A trademark is any recognizable sign, design or any other form of expression that can identify a source of products or services or distinguish company’s goods from those manufactured or sold by others. A trademark can be a word, color, shape, or sound used alone or in any combination. Not all words used as trademarks are equally strong. For example, generic words are not registerable as trademarks and cannot be enforced against others. Descriptive words can be registered in the principal register of the United States Patent and Trademark Office (USPTO) if the words are distinctive or acquired a secondary meaning. Arbitrary or fanciful wordmarks are considered to be strong trademarks and can be registered with the USPTO.
A trademark should be designated by the ™ symbol for an unregistered trademark, or by the ® symbol if a trademark is registered. A trademark generally lasts as long as the trademark is used in commerce and defended against infringement.
While trademarks protect source of goods or services, patents protect new and useful products, or processes. Abstract ideas, laws of nature and physical phenomenon are not eligible for patent protection. A patent can be obtained by filing an application with the USPTO. A granted patent allows its owner to exclude others from making, using, offering for sale, selling or importing the product or process protected by the patent. A utility patent has a term of 20 years from the date the patent application is filed.
Most businesses have valuable information that is not known to their competitors and provides a competitive edge in the field. This information may be maintained as a trade secret. Trade secrets are generally protected by state law.
Most states, including Pennsylvania, follow the Uniform Trade Secret Act (UTSA), or its variations. Under the UTSA, a trade secret is defined as information including a formula, pattern, compilation, program, device, method, technique or process that: (1) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means, other persons who can obtain economic value from its disclosure or use; and (2) is subject of efforts that reasonable under the circumstances to maintain its secrecy.
To preserve and enforce a trade secret, companies have to recognize early what qualifies as a trade secret and maintain reasonable efforts to such information secret and confidential. As part of these efforts, confidentiality and non-disclosure agreements should be signed by all employees and parties having access to the secret information.
If a company pursues innovative technologies that have the potential to be patented or maintained as trade secret, that company’s employment contracts should include an assignment clause. An assignment clause typically establishes that business owns the intellectual property rights to the employee’s inventions.
If you have any questions regarding your intellectual property rights or how to protect such rights, consult the attorneys at Volpe and Koenig, P.C.