What does a business owner need to know about intellectual property?

Most business owners understand that the real value of their business isn’t in tangible assets. That is, the inventory, office or store space (typically a lease), furniture, shelves, even the delivery truck, is not what adds value to their business. Instead, it is the intangible assets that really add value to the business. Intangible assets such as, well-trained employees, effective managers, a head chef at a restaurant.

But it’s the intangible assets such as, a secret sauce, a manner of doing business, a brand, that often add the most value to a business. These intangible assets often take a lot of time and investment to develop, and without these, the business may not be successful. These intangible assets are referred to, in the legal world, as intellectual property. So even if you didn’t think that you had any intellectual property, chances are now that you understand what intellectual property is, you recognize as a business owner that you do have intellectual proprety.

Specifically, the “secret sauce” is considered a trade secret (as are customer lists, vendor lists, and so forth). The manner of doing business and the brand may be marketed under what is considered a trademark (as are the names, tag lines, and graphic logos). Restaurant menus, websites, and brochures may all be protected by copyright.

Trade Secrets. A trade secret is anything that can be maintained as confidential (and typically by protecting it from competitors, also adds an edge to your business over competitors). There is no formal or government registration required. However, if a trade secret becomes known publicly, then it is no longer protected under the trade secret laws.

Trademarks: A trademark is a name, tag line, graphic (or logo), or combination of these, that designates the source of goods or services in commerce. When used in interstate commerce, the trademark can be registered with the US Trademark Office. Otherwise, state registration may be available.

Copyrights: A copyright protects original works of authorship. Copyright does not protect an idea in your head. The authorship must be reduced to a tangible medium, such as a recorded song, a written story, a picture painted on a canvas, or words typed on a website.

Patents: A patent protects an invention. The invention must be novel and non-obvious in order to receive patent protection from the US Patent Office. There are no state registrations for patents.

Patents, Trademarks, Copyrights, and Trade Secrets

For more information, please read Mark Trenner’s article “Top four ways to add value to your business” published in CoBiz Magazine.

What should a business trademark?

Trademarks - BrandsI have so many things to trademark – where do I start?

I get this question all the time. First, keep in mind that the strength of a brand is in its ability to distinguish a product or service from similar products being offered by others. Think of any famous brand (Starbucks(R), McDonald’s(R), or other famous trademark). While these companies may have multiple trademarks, they put the most effort into marketing only a few of these brands.

Most trademark attorneys will recommend a Clearance Search and Opinion – Using someone’s else’s mark can result in a trademark infringement action!

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Patent Attorney Discusses Patent Ownership For Employees – Part 3 of 3

Patent Attorney In Denver Discusses Patent Ownership For Employees – Part 3 of 3

Interviewer: Should inventors take their ideas to the company they are working for?

Patent Attorney: Many companies have procedures in place for evaluating intellectual property internally. Sometimes the company may release rights to an invention if it has no value to the company.

Interviewer: So even if I am required to assign my invention to my employer, they might let me keep it?

Patent Attorney: Every company is going to have their own policy, but it’s certainly a possibility.

Interviewer: Any other tips?

Patent Attorney: Check the Employee Handbook, the company intra-net, and any other materials the company may have given you to determine if there is a procedure in place for dealing with intellectual property. If there is, determine whether you are required to assign over rights to you invention.

Interviewer: So even if I’m required to sign over some types of inventions to my employer, I may not be required to assign over other types of inventions?

Patent Attorney: That’s right. An employer may have no interest in your invention if it is unrelated to the business of the employer. Or an inventor’s position with a company may not require that they assign over rights to their invention.

Interviewer: And I suppose you’re going to say to talk to a patent attorney for specific advice?

Patent Attorney: Of course – the law governing assignment of ownership rights in inventions is going to depend on the specific circumstances, whether there is a written agreement, and the laws may even vary by state.

Interviewer: Thank you, I think that’s all we have time for today. For more information, be sure to visit Trenner Law Firm’s website at www.us-patentattorney.com and Mark Trenner’s blog over at www.ipatentattorney.org

Patent Attorney Discusses Patent Ownership For Employees – Part 2 of 3

Patent Attorney In Denver Discusses Patent Ownership For Employees – Part 2 of 3

Interviewer: Really, so even though I’m not being paid to develop products for my employer, if I do, my employer may own the invention?

Patent Attorney: It’s going to depend on the circumstances. For example, inventors should check whether they signed an Employment Agreement with their employer. If so, they should carefully read the terms and conditions, particularly any intellectual property provisions. Often, the Employment Agreement will state what types of inventions must be assigned over to the company. Examples might include anything developed using company property or developed on the company clock. But many Employment Agreements go further than this. It is best to have a patent attorney review the Employment Agreement and give specific advice.

Interviewer: What if I didn’t sign an Employment Agreement?

Patent Attorney: There are other circumstances in which an inventor may have to sign over rights to their invention to a company they work for. For example, the inventor may have an independent contractor or other agreement with the company they work for, which includes intellectual property provisions similar to those we just discussed for the Employment Agreement. Or the inventor may have a fiduciary duty to the company, for example, if the inventor sits on the board or is a major investor in a company.

Interviewer: So practically speaking, how does this affect the typical individual inventor?
Patent Attorney: It’s common to get ideas when you’re at work, or as a result of work you are doing. Often, the inventor believes that because the idea was their own, that they should own any patent or other intellectual property rights to that invention. But before paying a patent attorney to prepare and file a patent application, inventors should first make sure that they don’t have any prior obligations which might require the invention be assigned over to the company they are working for.

For Part 3 o 3, Follow This Link: Patent Attorney In Denver Discusses Patent Ownership For Employees – Part 3 of 3

Patent Attorney Discusses Patent Ownership For Employees – Part 1 of 3

Patent Attorney In Denver Discusses Patent Ownership For Employees – Part 1 of 3

Introduction: This morning we are interviewing Denver-area patent attorney Mark Trenner. Mark has been practicing as a patent attorney in Colorado for almost 14 years; the past 9 years at Trenner Law Firm. While his practice focuses primarily on helping small businesses protect their inventions with patents, Trenner Law Firm assists clients build out all aspects of their intellectual property portfolio, including copyrights, trademarks, and trade secrets.

Interviewer: The National Law Review recently published an article titled “Patent Ownership in Germany: Employers v Employees.” Why should our listeners be interested in German patent law?

Patent Attorney: First let me remind everyone that I am only licensed to practice before the United States Patent and Trademark Office, and I am only licensed to practice law in the state of Colorado. That disclaimer aside, this article makes some good points that inventors here in the United States should also be aware of. The article starts of explaining that “The requirements of Germany’s Act on Employees’ Inventions (ArbEG), which governs how employees’ inventions are assigned to their employers, may be unknown by international companies with employees in Germany.”

Interviewer: So if I’m not an international company with employees in Germany, should I stop the video?

Patent Attorney: Not at all. While there is no uniform law in the United States governing assignment of inventions, that is, each state has its own law, any inventor who is also an employee should be aware that their company may require that they assign over rights in any invention they make to their employer.

For Part 2 of 3, follow this link: Patent Attorney In Denver Discusses Patent Ownership For Employees – Part 2 of 3

Dealing with Patent Violation

denver patent attorney

Dealing with Patent Violation

If you suspect that your patent has been violated, you may be wondering what the next step is. Unfortunately, patent infringement tends to be part of life where inventions and ideas are concerned, but this does not mean that you cannot take action if you feel that you have become a victim of it. Patent Infringement can come in many forms, including manufacturing and selling products without authorisation, and even importing into country an invention that violates a patent owner’s rights.

Putting Patent Infringement Right

Whilst the idea of putting things right may seem intimidating, a patent attorney can provide you with expert help and support when it comes to seeking justice and ensuring that patent violators agree to cease and desist their actions. Fighting patent infringement may involve in an injunction being applied for, and very often, damages are awarded to compensate the victims of a violation. If an infringement case does to court, the validity of the original patent may be thrown up into question by the defendant and the team representing them. They are inevitably likely to claim that the product that they manufactured, sold and/or imported did not infringe the product in question. This is why the work of a patent attorney is so important, and also explains why the wording in an original patent is so important.

Get Accurate Advice

In the legal world, brand names, music tracks and many other creative works are known as ‘intellectual property’, and since the advent of the online world, the concept of intellectual property has become more and more important. Creators of ideas face a constant battle to ensure that their works are not used illegally. When you seek help from any business that specialises in offering support for intellectual property and patents, you can expect to receive the utmost levels of help, advice and support. The world of intellectual property can be very complex, and many businesses and individuals have found themselves unwittingly stealing ideas from others, being forced to face the consequences even if rights violations only came about accidentally. Many people agree that copyright, intellectual property and patent law can be so complex that sourcing outside help from UK IP lawyers is a must if you are outside of the US. Meanwhile, with the right legal support behind you, you can free up time to focus on what you do best, safe in the knowledge that the experts are working hard to ensure that you stay on the right side of the law – and that others are not violating your creative rights too.

Nurture Compliance with a Patent Attorney

Things like Non-Disclosure Agreements can also protect you from your ideas being leaked by people that are working alongside you on something. Intellectual Property rights are known as IP rights and once you do have the IP rights to creative work you can deter others from even attempting to use your ideas without your permission. Most of the time, polite requests for compliance are enough, particularly in the UK but if not, a patent attorney in London can support you.

New Patent Law Q & A – Part 4 of 4

Patent Attorney Mark Trenner answers questions about  “Where do I go with my bright idea.”

Interviewer: And how did the America Invents Act change that?

Denver Patent Attorney
Denver Patent Attorney Mark Trenner

Patent Attorney: As the article points out, the America Invents Act changed to “a race to the patent office.” That is, whoever files their patent application first will get the patent, regardless of who invented first.

Interviewer: Why did the America Invents Act make this change?

Patent Attorney: As the article explains, this part of the law was intended to bring the United States in line with patent practices of most of the rest of the world.

Interviewer: This doesn’t seem like a good change, though, does it?

Patent Attorney: That’s what many are saying, including in this article, that the law seems to disadvantage the individual inventor and small businesses, who don’t have a patent attorney on staff that can file patent applications at the drop of a hat.

Interviewer: Thank you, those are good points. But I think that’s all we have time for today. For more information, be sure to visit Trenner Law Firm’s website at www.us-patentattorney.com and Mark Trenner’s blog over at www.ipatentattorney.org

 

New Patent Law Q & A – Part 3 of 4

Patent Lawyer Mark Trenner answers questions about  “Where do I go with my bright idea.”

Interviewer: Even under the “old” patent law?

Denver Patent Attorney
Denver Patent Attorney Mark Trenner

Patent Attorney: Yes, because most foreign countries have a stricter standard, and have required inventors file a patent application prior to any public disclosure of their invention.

Interviewer: So it has always been good practice to keep your invention confidential until a patent has been filed.

Patent Attorney: Yes, and now it can be even more important given the new patent laws in the United States.

Interviewer: Back to the article. I see that they also discuss the cost of applying for a patent, and that many inventors are foregoing the patent process and just taking their product to market.

Patent Attorney: Right, and the article also points out that under the “old” patent law there wasn’t necessarily a need to hurry to the patent office, the America Invents Act also introduced the “first-to-file” in the United States.

Interviewer: What is “first-to-file”?

Patent Attorney: The patent law used to be a “first-to-invent” system in the US. In other words, before the America Invents Act, if two people filed a patent application for the same invention, the US Patent Office would grant the patent to the inventor that could prove they invented first. Like the article says, inventors could take time to explore marketing opportunities and would be protected.

For Part 4, see New Patent Law Wisconsin Q & A – Part 4 of 4

 

New Patent Law Q & A – Part 2 of 4

Patent Attorney Mark Trenner answers questions about  “Where do I go with my bright idea.”

Interviewer: Why is that, don’t you have one year from any public disclosure to file a patent application?

Denver Patent Attorney
Denver Patent Attorney Mark Trenner

Patent Attorney: That’s a good point. The United States patent law used to afford inventors one year from any public disclosure or public use, sale or offer for sale, or publication of their invention, in which to file a patent application without any loss of right.

Interviewer: Right, so why the caution about discussing your invention now?

Patent Attorney: The patent law in the United States changed recently. The new patent law, known as the America Invents Act, took effect in stages, with many of the important provisions taking effect in March 2013. While the law will need to be clarified by the courts, it appears that at least some of these grace periods are no longer available.

Interviewer: What are you advising your clients under the new patent law – the America Invents Act?

Patent Attorney: Well I have always advised my clients not to publicly disclose or use, publish, or sell their invention prior to filing a patent application. While inventors may initially think only about US patents, there are times when filing outside of the US makes good business sense.

For Part 3, see New Patent Law Wisconsin Q & A – Part 3 of 4