Intellectual Property: An Overview

Given my strong interest in “technology” (whatever that means), I tend to attract clients who are in the business of developing technology products. And with the development of any product, conversation about whether and how to protect intellectual property ("IP") starts early in the process. Although I’m not an IP attorney in the strictest sense, i.e. I’m not a licensed patent attorney, I do enjoy fielding broader IP-related questions when I can.

I recently participated in an entrepreneur roundtable. It was fun because the conversation revealed challenges entrepreneurs were facing, and it gave me a chance to help them by answering some pressing questions. Someone who I happened to know is developing a physical product asked whether and how to pursue IP protection for an early stage company.

I was glad he posed the question because any product company, especially ones who are developing their own original design, runs into this question eventually.

Protection Methods

To make sure we’re speaking the same language, it’s important to clarify what types of information qualify as “intellectual property."

Patents

Patents are granted for inventions, and they come primarily in three flavors: design, utility and plant patents. In the United States, patents are granted by the United States Patent and Trademark Office USPTO.

Provisional v. Utility

If you’re like me, you never miss an episode of Shark Tank. You’ve heard these terms almost every time someone is pitching a physical product.

Without getting too techinal, a provisional patent is sort of like a placeholder application. An inventor files the provisional patent application, which receives little scrutiny, and then files for the “full” utility patent. But a provisional patent is not required. You can go straight for the utility patent, and skip the provisional process.

An interesting feature, however, is that the provisional patent application is reviewed at the same time as the utility patent application, and if a patent is granted, it will date back to the filing of the provisional patent.

Trademarks

A trademark is a brand name. Simple as that. What is not so simple, however, is what can and cannot be trademarked. The USPTO processes these applications as well, and they’ve done their best to help us all understand what can and cannot be trademarked. You can find more information here.

Applying for a trademark does not require a special license, so any attorney can help you with that process. Why would you hire an attorney? Much like other areas of law, the determination of what can and cannot be trademarked can be confusing, and it takes a lot of time to become familiar with the rules associated with the process in additino to the trademark search process.

Copyrights

Copyrights can be obtained for works of authorship, so things like books, movies, music, software, photography, plays, etc. Copyrights are registered by the U.S. Copyright Office. The application is online, and there’s even a step-by-step tutorial for applicants to follow.

Should I file a provisional patent or trademark application immediately?

I can’t be the judge of your specific set of circumstances, but here are some things to consider.

Considering the Competition and Your Market

Is your product so easily replicable that once it goes public it can be duplicated faster than you can gain market share? If so, you may be tempted to obtain patent protection ASAP. But, if it is so easily replicable, it begs the question: why hasn’t someone else done it?

This question is not meant to discourage but to help the inventor refine their product or process.

Balancing the Cost of Protection Against the Stage of Development

Is is better to be first to market or to patent off the bat?

This is often a cost consideration. Depending on the patent application and attorney, the filing process can cost multiple thousands of dollars. So when considering whether and when to file, it is important to have a clear path forward for your invention. If you filed for a patent on every feature you think you might add to your product, it would get very expensive very quickly. Companies like GE, Apple, Microsoft and Samsung file patents on the whiff of an idea, but they are also multiple-hundred billion dollar companies.

I encourage people who are considering pursuing patents to compare their willingness to pay (often the first application is rejected) with their confidence in the level of product development.

As for trademarks, depending on how you intend to use the mark, which is something you should discuss with your attorney, the timelines for approval vary greatly. The USPTO has again done its best to help applicants estimate their approval runway by providing a series of flowcharts. As you can see, if you waited until your mark was approved, your company may have a very different complexion by the time you needed to defend your brand.

At the end of it all, I hope this information helps inventors and developers organize their intellectual property strategy. By no means is the above post an exhaustive directive on how to pursue your IP protection, but at the very least, it should help you speak intelligently with your attorney and give you the tools to recognize the process as your product develops.