Guarding innovation Featured

8:00pm EDT September 25, 2008

In any given company, several assets need to be protected. There’s your inventory, your facilities, your money and, of course, your employees. But, one asset that is sometimes over looked is intellectual property.

Intellectual property is the key to day-today business. Your products, brands and designs are what make you unique in the marketplace. But, many companies — especially small and midsize ones — are not aware of the ins and outs of intellectual property. If left unprotected, your amazing ideas could get scooped up and used by a larger competitor with more resources and legal know-how.

“There are not many mistakes a company can make that can’t be fixed once it has more resources,” says Doug Morgan, the managing partner of the Columbus office of Calfee, Halter & Griswold LLP. “But the one thing that is hard to fix is intellectual property mistakes. Once you mess that up, the opportunity may be gone forever.”

Therefore, adequate protection of your company’s intellectual property is crucial. You’ve got to make sure you — and not your competitors — are profiting from your company’s innovation and creativity. And, besides protecting your ideas, innovations and inventions, covering your intellectual property bases will help you gain the capital you need to make your business grow.

“One of the first things an investor will ask when considering your company is whether or not you have any intellectual property and if that intellectual property is properly protected,” says John Cipolla, a patent lawyer and the co-chair of the IP (intellectual property) group at Calfee, Halter & Griswold LLP. “Having a strong intellectual property strategy will help you win over investors and lenders, and it will help you when you’re trying to get a state or federal grant.”

Smart Business spoke with Morgan and Cipolla about intellectual property and what you can do to ensure your great ideas aren’t somebody else’s meal ticket.

What are the different types of intellectual property?

There are four categories of intellectual property: patents, trademarks, trade secrets and copyrights.

  • Patents. A patent prevents others from making, selling or using the patented invention and from importing the patented invention or an article made by a patented process into the United States. But, a patent does not really permit the patentee to do anything with the invention. Generally, patent rights are exclusionary, not permissive rights.

  • Trademarks. A trademark identifies the source of origin of a product. Trademarks protect the public so that a consumer is not confused as to the maker or provider of a good or service.

  • Trade secrets. This is anything that is confidential and that gives the owner a competitive business advantage. It could be a real invention or an intangible like a technique, method, manufacturing process or idea.

  • Copyrights. Copyrights protect the original expression of an idea. A copyright does not protect an idea itself, but rather the way that the creator expresses the idea. The owner of a copyright can exclude others from reproducing, adapting and publicly distributing, displaying or performing the copyrighted work.

What should companies be aware of when it comes to intellectual property?

You have to always be aware of who owns the intellectual property. For example, if you outsource the engineering or development of, say, your Web site, you have to get an agreement in place that says your company owns that intellectual property. Likewise, you need agreements with your employees that say the company owns any intellectual property they create. Usually in the United States, the one who creates is the original owner of the intellectual property. But, when it comes to the intellectual property of your company, you need a contract that provides ownership to the one who is paying for it, i.e., your company.

Also, you should consult with outside patent lawyers before filing any patent applications. Besides keeping you from filing useless patents that may be a waste of money, a good intellectual property attorney will help you understand patent laws and the strict deadlines that come with them. Just because you have a patent doesn’t mean you’re home free. Having a partner in the patent world will help you ensure that you don’t lose any of your rights.

How can a company protect its intellectual property?

Again, a good patent attorney is invaluable. There are several laws designed to encourage development and innovation 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. Besides helping you file the right patents and grow the development of the product, a strong intellectual property firm keeps you from infringing on the rights of others. Not only that, you’ll ensure that your innovations remain your own. You can have the best idea in the world, but if you don’t properly protect it, someone else may come along and take it. To preserve the well-being of your company now and in the future, you must have your intellectual property protected.

DOUG MORGAN is the managing partner of the Columbus office of Calfee, Halter & Griswold LLP. Reach him at (614) 621-7011 or dmorgan@calfee.com. JOHN CIPOLLA is the co-chair of the IP group at Calfee, Halter & Griswold LLP. Reach him at (614) 621-7100 or jcipolla@calfee.com.