intellectual property strategy for small businesses

Intellectual Property Strategy for Small Businesses By Courtney Thompson & Dave West

May 10, 2016

Introductions

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Introductions

• Courtney Thompson, Associate • Dave West, Shareholder • Mike Hofflander, Activated

Research Company • You!

– Name, role within company – Company, industry – Company stage

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What are the differences between patents, trademarks, and copyrights?

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Trademark v. Patent v. Copyright

• A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.

• A patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention.

• A copyright protects works of authorship that have been tangibly expressed in a physical form.

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• Trademarks do not expire after a set term of years.

• The duration of patent protection depends on the type of patent granted: 14 years for design patents and 20 years for utility and plant patents.

• For copyrighted works created by an individual, protection lasts for the life of the author, plus 70 years.

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Trademark v. Patent v. Copyright

Should I file a patent application, trademark application, or copyright application?

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• There may be occasions when trademark, patent, and copyright protection are desired with respect to the same business endeavor.

• Whether an image should be protected by trademark or copyright law depends on whether its use is intended to identify the source of goods or services.

• Filing a utility patent gives its owner the exclusive right to prevent others from making, using, selling, or importing the protected invention. If the creator does not file, then the law offers them no default protection of the invention.

• Don’t forget about trade secrets!

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Trademark v. Patent v. Copyright

Do I need an attorney?

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Time to phone a friend… • United States Patent and

Trademark Office • United States Copyright

Office

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How much does a patent, trademark, or copyright cost?

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Estimated Costs

• Trademark Application: $275 (total typically under $1200)

• Copyright Application: $55-80 (total typically under $300)

• Patent Application: $1,600 (total typically $3,000-10,000)

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What can I do to reduce costs?

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$aving Money

• Develop an intellectual property portfolio strategy • For trademarks, conduct initial searches &

creatively draft descriptions • For patents, claim micro-entity status, if applicable

(annual income of less than around US$150,000), conduct initial prior art searches, & describe the breadth and alternatives of your invention for your attorney

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How long does it take to secure intellectual property rights?

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Timeline

• Trademark: 10-14 months • Copyright: 8-12 months (expedited

services available) • Patent: 2-3 years

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How can I put third parties on notice of my intellectual property rights?

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Notice

• Trademark: ™- all trademarks, ® - registered trademarks

• Copyright: © (or Copyright or Copr.) year of first publication, copyright owner

• Patent: Patent Pending, U.S. Patent No.

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Do I need international intellectual property protection?

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Cautionary Tales

• Somebody else might trademark or patent your intellectual property

• Competitors will take advantage of your intellectual property

• Possibilities to license, sell or transfer your intellectual property will be severely hindered

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Contact Info

Dave West Shareholder dwest@fredlaw.com 612.492.7166

Courtney Thompson Associate chofflander@fredlaw.com 612.492.7251

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