Fire and burglar alarms protect the
physical assets of a business. But what
protects its intellectual property (IP)?
“Intellectual property is intangible property resulting from creativity,” says William
Munck, chairman of the Dallas-based law
firm of Munck Butrus PC. “IP describes a
wide variety of property created by musicians, authors, artists and inventors.”
Smart Business talked with Munck to
find out how a company can protect itself
against challenges to its IP.
How do you protect intellectual property?
IP is protected generally by copyright,
patent, trade dress, trademark and trade
secret laws. These areas of law are designed
to encourage the development of art, science and information by granting property
rights to creative and inventive people.
These rights allow artists, authors and
inventors to protect themselves from unauthorized use and misuse of their creations.
What is the difference between patents,
copyrights, trademarks, trade dress and
trade secrets?
Patents are granted to inventors for new,
useful and nonobvious inventions. A patent
gives the inventor exclusive rights in the
invention for a period of time, so that he can
profit from the invention before the right to
exploit it is available to the general public.
Patents can be granted for plants, manufactured products, machines, processes and
combinations of matter. A patent must be
applied for from the federal government and
will only be granted if the invention is unique.
Copyrights are exclusive rights granted
to authors, artists, composers and publishers to create and publish their works. The
work must be original and must exist in
some tangible form; it cannot exist only in
the artist’s mind. A copyright arises automatically as soon as the work is made.
However, registration affords owners of
copyrighted materials additional benefits.
Trademarks allow businesses to protect
the symbolic information that relates to
their goods and services by preventing similar use by competitors. To receive trademark protection, a word or symbol must be
distinctive and must be used in the marketplace so that it gains recognition with the
public; this is called ‘secondary meaning.’ A
trademark need not be registered, but if it is
registered, the owner of the mark is afforded particular federal rights.
Trade dress is similar to trademarks and
can be used to identify and promote the
product or service. For example, the
shape, color and design of a product or its
packaging can be trade dress. Likewise, the
decor and color scheme of a restaurant or
store also can be the subject of trade dress
protection.
Trade secrets protect competitively valuable information such as formulas, patterns, devices and compilations of information. A trade secret remains enforceable
as long as reasonable efforts have been
taken to keep it secret.
Can all IP be protected?
No. Each branch of IP has its own set of
standards that need to be met before protection may be granted. To receive patent
protection, for instance, the invention must
be novel, nonobvious and useful. Copyright protection, on the other hand, must
meet certain originality requirements.
Do they hold water legally overseas as well
as in the United States?
It depends. Each country has its own
rules and regulations governing IP, so an
artist or inventor who wants to protect his
or her rights in more than one country may
need to make several filings. International
treaties have streamlined some search and
registration procedures.
Other than protecting specific corporate
assets, what are some other advantages to
legally protecting inventions or publications?
Intellectual property rights and other
intangible property, when properly managed, can go beyond securing a business’s
future — it can also open new sources of
value and revenue. With proper planning
and the right legal team in place, your business secures its future and maximizes the
value of existing and future intellectual
property.
How does a company track and pursue violations of IP rights?
A company should consider having a
competitive intelligence program in place.
The program should not only conduct regular IP audits to monitor the company’s
own IP but also that of its competitors (and
for that matter, its potential competitors).
An IP audit primarily identifies IP currently owned by a company as well as IP not
previously recognized. The results of a comprehensive IP audit typically improved the
opportunity for a company to exploit, commercialize and profit from its intellectual
property. For example, IP audits provide a
‘balance sheet’ of IP owned by the company,
which may add value to the business in the
event of a sale, investment or public offering. IP audits can also identify potential
income streams from licensing.
WILLIAM MUNCK is chairman of Munck Butrus PC and its
Intellectual Property Section. He concentrates his practice on
domestic and foreign intellectual property procurement, exploitation, enforcement and counseling. He can be reached at
[email protected].
