All businesses have intellectual property (IP), be it a brand, an invention or website content. IP is an intangible asset that, when properly protected, can enhance the overall value of a business. In fact, according to the U.S. Department of Commerce, “The entire U.S. economy relies on some form of IP, because virtually every industry either produces intellectual property or uses it.”*

More specifically, IP is intangible property that derives from the work of the mind, or intellect, including inventions, processes, programs, designs, and artistic work. Federal and state laws provide rights and protections, including rights of exclusivity, for those who create intellectual property, in the form of:

IP is enshrined in The Constitution which gives Congress the power to pass laws related to protect it by granting authors and inventors copyright and patent rights.

Federal trademark laws, namely, The Lanham Act, derives from the Commerce Clause in The Constitution. There are also state laws that govern trademarks. While most states adopted part or all of the Uniform Trade Secrets Act, there is now federal trade secret protection in the Defend Trade Secrets Act, all of which protects from misappropriation business information that derives its value from being kept secret.

In general, it is up to the owners of intellectual property to enforce their rights against the party that is infringing against the right through its conduct. Generally, this is done through civil lawsuits. Remedies for infringement vary widely and depend on the type of IP at issue.

Here at Burch & Cracchiolo, we can help you by analyzing the type of IP that you have in your business and devising strategies for protecting your IP. If you believe someone has infringed your IP or if you have been accused of infringement, we can help you with that, too.

Patents

A patent gives the patentee an exclusive right to prevent others from making, using, selling or offering to sell the patented invention in the United States, or importing that invention into the United States, for a limited period. In order to obtain patent protection, applicants must disclose information about the invention to the U.S. Patent and Trademark Office (USPTO). The purpose patent protection and its disclosure requirement is to encourage inventers to invest their time and resources in developing new and useful discoveries that do not run afoul of any patentee's rights. The USPTO will not grant a patent unless the subject matter of the invention is patentable, novel and not obvious over what has been done before. Provided that the subject matter is patent eligible, patents can cover devices, articles of manufacture, processes, chemical compositions and even ornamental designs. Since U.S. patents only cover activities in the U.S. (including importation), foreign countries also have patent systems and the U.S. participates in treaties that allow U.S. patent applicants to apply for foreign patent protection.

Trademarks

A trademark is a distinctive word, phrase, symbol, logo or device used in connection with goods in commerce to indicate the source of the goods or services and to distinguish them from goods or services of others. In the U.S., certain trademark rights spring into existence once the trademark owner begins using the mark in commerce; however, there are advantages to obtaining a Federal trademark registration. Once registered, a U.S. trademark can last indefinitely, provided it is renewed as required by the trademark laws. Again, as in the case of patents, the U.S. is a signatory to various treaties that allow U.S. trademark applicants to apply for foreign trademark protection.

Trade Secrets

Under the Uniform Trade Secrets Act (UTSA) as adopted in various states, as well as under the federal Defend Trade Secrets Act, trade secrets constitute information that derives independent economic value from not being generally known and is subject to reasonable efforts to keep the information secret. A trade secret holder trying to prove misappropriation needs to demonstrate that the trade secret qualifies for protection and that the defendant acquired it wrongfully and misappropriated it.

Copyrights

Copyright protection is afforded to not to ideas alone, but rather to original works of creative expression fixed in a tangible medium, such as literature, music, videos, software, dramas and plays, choreography, jewelry designs, images, graphics and sculptures, motion pictures, sound recordings, and architectural works. Copyright protection includes the rights to copy, distribute, and publicly perform the work, as well as the right to create derivative works.

* Intellectual Property and the U.S. Economy: Industries in Focus, U.S. Department of Commerce (March 2012), updated 2016


Analysis of intellectual property and strategies for protecting it

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Trademark application preparation and prosecution

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Trade secret protection

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Technology development agreements, licensing and other transactions involving IP

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IP due diligence

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IP portfolio management

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IP ownership issues

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Susan E. Chetlin

Paul S. Kular