Albert L. Schmeiser 0000-00-00 00:00:00
IP Pitfalls That You Always Wanted To Know About Numerous aspects of intellectual property (IP) law cross over into virtually every other area of law and business. IP firms have synergistic relationships with legal practitioners in other disciplines, mostly because of the pitfalls that exist when navigating the waters between the United States Patent and Trademark Office, the courts and their clients. IP knowledge can enable attorneys in other disciplines to better serve their clientele while avoiding those pitfalls. This article addresses some common areas of synergy between IP attorneys and their non-IP peers. Corporate Name Clearance and Trademark Law Members of the business community may receive a cease and desist letter even after a corporate name was cleared with the state during the incorporation process. They are shocked to learn that federal trademark law trumps state law and state name searches are limited to companies domiciled or incorporated within the state. The standard for distinguishing between similar corporate names in Arizona is significantly different than the federal standard. The main issue when comparing two names on the federal level is whether there is a “likelihood of consumer confusion.” Checking a name only at the state level can result in months or years spent developing name recognition only to find that the name infringes a federal trademark registration, usually from another state. To avoid this pitfall it is recommended that a federal trademark search be conducted before registering the name with the State of Arizona. Thereafter, consider nationwide protection by obtaining a federal trademark registration. If business interests are held internationally, a broader search and foreign trademark registrations would be required to assure marketability outside of the U.S. under the same trademark. Patents As Assets Charlie Watts, now deceased, retired from General Electric prior to becoming a partner of Schmeiser, Olsen & Watts. Charlie’s group handled all materials and processing patents for GE’s R&D division. Notably, Charlie was the person most responsible for GE taking the Chakabarty case to the U.S. Supreme Court. This case was the first to determine that an altered living organism could be patented. During my first week as a patent attorney, I asked Charlie the ultimate patent question: How do you know if something is patentable? I waited for a complex analysis not yet knowing that people who truly know their art often can simplify it for the less knowledgeable. Charlie’s answer: “show me a difference that makes a difference.” Innovators become expert in a field by developing a process, machine, method of manufacture or composition that is DIFFERENT from what has gone before and is a useful improvement e.g. MAKES A DIFFERENCE. However, being experts they often don’t recognize that they have created a potentially valuable asset. Attorneys who deal with innovators can provide a great service by simply asking: Is that a difference that makes a difference? If the answer is YES, then seeking consultation with a patent practitioner or a requesting a corporate IP evaluation. Employees, Consultants, Contractors And IP Rights As shown in the scenarios below, employees, consultants and independent contractors through their activities may develop rights to IP that an employer expected to own. As a general rule any time something new is being developed IP rights may be involved. A clearly defined written agreement will properly allocate those rights. 1. A software engineer is engaged to create a new program or application for a business. Similar to the way that a photographer at a wedding is paid to take pictures but still owns the copyright in the photos, if there is no written agreement (verbal agreements aren’t enough) the programmer owns the copyright in the software. A company may initially expect to use the program in-house but realize that the program is very valuable and could be sold to others or that the software is providing a business advantage. If the programmer owns the copyright, the company could be foreclosed from selling it to others or the programmer could sell the item to a competing company thus negating the original company’s advantage. Similar issues may arise when a writer hires an illustrator or when a videographer tapes a presentation. 2. An engineering firm is hired to reduce an idea to practice. No problem; except that engineers by their very natures always want to tinker. Once the engineers understand the new idea, an idea they may never have thought of alone, they ponder the possibilities and develop valuable improvements (differences that make a difference) to the original idea. Impressed with these new ideas that greatly increase the value of the original, the company must face the reality that they can’t sell improvements owned by the engineers or the engineering firm, assuming the firm has appropriate employment agreements with its engineers. Similar issues arise when an employee without a suitable employment agreement or one not hired to invent comes up with an idea that would benefit the company which they develop on their own time and with their own resources. 3. An independent sales rep is used to market a product. Because the rep is not an employee and not an inventor IP issues are not addressed. However, reps constantly get feedback from purchasers and may be the first to know of product deficiencies or desirable additional product features. Being familiar with the field, they invent improvements to the product which, unless otherwise agreed to, are owned by the rep. 4. You engage a company to sell a product bearing your new trademark or logo but no IP issues are discussed. The company is the first to sell the product in combination with the trademark. Without a written agreement acknowledging your ownership,legally, it is the company that has developed the trademark rights even though you own the product and came up with the name. Trademark rights are based upon usage and not origination. Product Development And Patent Searches A company may develop a product without doing a patent search. After spending a great deal of time and money to put the seemingly unique idea on the market, bam, they receive a cease and desist based upon an undiscovered registered patent. The issuance of that patent is constructive notice to all would be infringers and ignorance is not bliss. A state of the art patent search offers a cost-effective method of researching what has already been developed. There is always more to discover than what is out on the market. IP Evaluations And Acquisitions An attorney was handling the purchase of a local well known restaurant. The closing was scheduled for the next day when he checked with me to see if there could be an issue with the name of the restaurant. A quick search revealed that another restaurant across the country had prior use of the name and the other user owned an incontestable federal trademark registration. The deal closed the next day but the seller had to reduce the price by 35% because he could not assure continued usage of the name and the good will that was attached to it.
Published by Target Market Media . View All Articles.
This page can be found at http://digitaleditions.walsworthprintgroup.com/article/INTELLECTUAL+PROPERTY/1138076/121304/article.html.