Wen Xie, Partner at Global IP Counselors, LLP in Washington DC
IP protection should be applied at the beginning of research and development for your company, long before commercialization takes place. A comprehensive IP strategy leverages an arsenal of patents and trademarks not only to protect your company’s innovations, but also to enhance your brand and define your business in the marketplace.
IP is not exclusive to the Apples and Googles of the world. Even as a small business, you can develop a strong and effective IP strategy as long as you understand two things: (1) what’s worth protecting and (2) what questions to ask when the time comes.
If the commercial value of your product lies in its function or ability, consider seeking patent protection. This is what you need to ask yourself during the research and development phase.
1. Do you cooperate with foreign entities or nationals to develop your product? If this is the case, your product may be considered an “export” by the US government and may require a foreign export license. Depending on your employee’s nationality or residence, your company may also be limited in the jurisdiction where you can apply for patent protection. For example, some countries, such as China, require their nationals to file patents with the Chinese Patent Office first, and then elsewhere. Your employees may limit your patent protection plans.
2. Do you have to make written agreements with employees? This states that all products and inventions developed during their employment will be assigned to the company. In addition, plan to record all assignments with the patent office, which maintains the official ledger for ownership of your patent rights.
3. Where do you plan to make, use or sell your product? If you’re abroad, you may need a foreign filing license, which basically involves applying to the U.S. government for permission to apply for a patent abroad, depending on your technology. If you fail to do this, you could be subject to a hefty fine.
4. When do you plan to make your products public, or have you already done so? Public disclosures and sales immediately limit the timeline for which you can apply for patent protection. That is why it is also important that you consider whether your employees have signed confidentiality agreements regarding their work product at your company.
There are some common pitfalls in patents to watch out for.
• Not getting orders from your employees: You’ll need these if they want to develop their inventions under company leadership and with corporate investment.
• Make Disclosures About Your Product Before Applying: This can happen unconsciously. Sometimes even talking to one person who is not part of your company counts.
• Failure to apply for rights in the correct jurisdictions on time: You may be excluded by your own disclosure, sale or use.
Trademarks and trade dress
If your product’s commercial distinctiveness is related to its appearance, look for trademarks, trade styles, or industrial design patents. Here’s what you need to ask yourself when building your brand.
1. Are there decorative aspects that distinguish your brand’s goods or services? Is it the color that defines your goods or services, such as Tiffany Blue or Post-it’s Canary Yellow? Or maybe it’s the shape of your brand’s name, like McDonald’s golden arches or Nike’s swoosh, or a stylized font like Coca-Cola’s cursive letters. These awards are protected by a trademark. Even texture, taste and smell can be trademarked if it identifies the source of the product.
2. Are you trying to build a brand with a specific look and/or feel? Think beyond logos and think, for example, of the design of your physical stores. Starbucks stores all have a consistent and distinctive look and style. The style of Starbucks stores is protected by trade dress, and they have claimed their trade dress against other coffee chains.
3. Does your product have a specific decorative style for a functional item? Think of the shape of Oakley’s sunglasses or the face of a Rolex watch. These are protected by design patents. The king of design patents is Apple, which has filed and claimed his rights about the iPhone’s shape to Samsung’s disadvantage. The shape and outline of the AirPods and the Apple Watch are also protected by design patents.
As with patents, there are common pitfalls when it comes to trademarks and trading styles to watch out for.
• Making statements about function. You cannot claim trademark or trade style protection for something that has a function, for example by stating that the shape and color of your bottle help users [insert function here]† Make sure your website, pamphlets, or manuals don’t make these statements.
• Failing to keep thorough records of the continued use of your trademark or trading style. The longer you’ve used your brand, the stronger it is when you have to assert that trademark or trading style against a competitor. Take photos of your stores, your signage, your lettering, etc. and record those dates over time.
• Not realizing that trademarks can often coexist with design patents. You may unknowingly waive your rights to a design patent that could enhance your brand.
In general, trademarks are weak until you can prove that customers associate your brand with your company, which usually takes several years. Exclusive use is difficult to enforce, especially if a competitor is copying your brand from scratch.
Often you can file a design patent for certain aspects of your designs to amplify the strength of your brand over time. But if you start using your mark or design without applying for a design patent, you’ll lose the right to file design patents before you know it.
The information provided herein is not legal advice and is not intended to be a substitute for advice from legal counsel on any particular matter. For legal advice, you should consult a lawyer related to your specific situation.