Legal Myth #5 – If we enter the US we may be jeopardizing our valuable intellectual property.
This article first appeared on the EACCNY website. It is part of a series of articles written by Marc S. Friedman, Director of Professional Relations at Global Commerce Education, Inc. as a collaboration with the European American Chamber of Commerce in New York.
In the most recent article in this series, I explained how many non-US companies are discouraged from exploiting a robust US marketplace by Myth #4 –that there are too many business regulations in the US to make doing business in the US worthwhile. In this installment, I will address Myth #5. If we enter the US we may be jeopardizing your valuable intellectual property. Like the other Myths, this one, too, is easily debunked.
According to the World Intellectual Property Organization (WIPO), the term “intellectual property” “refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.” In the U.S., there are several types of intellectual property, which include patents, trademarks, copyrights, and trade secrets. Patents allow their owner to determine who can make, use, or sell an invention. Trademarks allow their owner to communicate the source or origin of a product or service to consumers. Copyrights provide their owner with the ability to determine who can reproduce or distribute a work, publicly perform and display a work, or prepare derivative works. Trade secrets protect confidential business information. Certain plants, industrial designs, and regulatory data may also be protectable in the U.S. Each type has different attributes and criteria for protection, so it is important to seek legal counsel. An intellectual property attorney can help you identify, protect, and enforce your IP rights in the U.S.
Thus, to protect your intellectual property rights from infringement or misappropriation in the US, there are several steps you can take. They are as follows:
You can seek patent protection in the US by filing a patent application with the US Patent and Trademark Office. Typically because a patent application has several technical requirements, it is usually done by a patent lawyer or by a patent agent, both of whom must have passed a patent exam and are registered with the USPTO. Essentially a patent will give the owner (the “patentee”) the right to prevent anyone from making, using, selling, offering for sale or importing the patented product or technology for 20 years. It is a very valuable form of IP protection.
There are basically two types of trademark rights. One is by a common-law trademark and this is established by actual use in interstate commerce. The other is a trademark that is registered with the US Patent and Copyright Office. Generally speaking, a registered trademark gives its owner more rights than does a common-law trademark. A lawyer who is experienced in this area can help you to determine which is best and she can also file the Federal trademark application.
Unlike a patent which protects the owner’s rights to the underlying ideas, concepts and processes, a copyright extends to the specific manner in which underlying ideas and concepts are expressed in a tangible medium of expression such as books, music, films, soundtracks, plans and diagrams, etc. Under a 1976 statute, a copyright exists in a work of authorship as soon as it is created. Nothing further need be done. However, to enforce a copyright through litigation, it must be registered with the US Copyright Office.
As noted above, intellectual property can be treated as a trade secret if it is novel and maintained as a secret. The formula for Coca-Cola is the most famous trade secret as it has been safeguarded for generations and not publicly disclosed.
All that is required to create a trade secret is that you take precautions reasonable under the circumstance to protect it. This could be as simple as marking it as confidential, putting it in a locked drawer, and restricting access to it. If a trade secret is misappropriated, there are judicial remedies available.
And all of the foregoing forms of intellectual property can be protected by confidentiality agreements with employees and independent contractors, and by licensing agreements with customers, consultants and other third parties.
Each of these areas of intellectual property protection is carefully explained at the websites of the US Patent and Trademark Office (www.uspto.gov) and the US Copyright Office (www.copyright.gov). In addition an experience IP attorney can help guide you through this.
The bottom line is that while there can never be a 100% guarantee that your IP will not be infringed or misappropriated, the risk of this happened can be very substantially reduce by availing yourself of these IP protections. Thus, no company should be dissuaded from entering the US by fear of losing your IP. And because of the importance of IP in the US, our courts are extremely vigilant in protecting IP rights including by an injunction against the wrongdoer as well as damages.
In the next article in this series I will address Myth #6 – The risk of liability and lawsuits relating to our products and/or services is too great.
Compliments of Global Commerce Education, a member of the EACCNY