April 2009

Inventors are so creative, and so important to our economy and way of life, that our government offers them four main ways to protect their new ideas. Attorneys Dr. C. John Brannon and Mr. Tony A. Gibbens of Brannon & Associates PC explained these forms of protection and offered practical advice on how to use them. 1. Three kinds of patents protect technology (an idea of a physical means to a useful end). A utility patent (for a machine, manufactured article, method, composition of matter, or an improvement of one of these) or a plant patent (for an asexually reproduced plant) protects technology itself. A design patent protects the nonfunctional ornamental appearance of a useful thing. A patent owner has the right to exclude others from making, using, offering to sell, selling, or importing the invention in the United States. But a patent does not give the owner the right to perform those acts (some patents interfere with other patents). Our government grants a patent to an applicant who is the first and original inventor of a technology. So be sure to document the date your idea is well-defined and complete. A good way to do this is to enter a written description of your inventive activities (ideas, test results, date a prototype is built, etc.) in a bound notebook that you and a noninventor witness (who understands what you write) date and sign regularly. 2. A trademark (brand name) protects a sign (hologram, name, picture, smell, sound, symbol, word, etc.) indicating the origin of a product. It must be distinctive and not deceptive. A trademark is an adjective, not a noun. You can lose a trademark if it becomes a noun (ex. if people think Band-Aid means “bandage” rather than “a brand of bandage”). 3. A copyright protects an expression of an idea, not the idea itself. Such expressions can be artistic (ex. music, painting, photograph, sculpture) or literary (ex. book, computer program, electronic database). The good news is that you merit copyright protection just by expressing an idea (but you need to register your expression with the Copyright Office in order to seek damages in a federal court). The bad news is that someone you hire (ad writer, marketer, photographer, web page designer, etc.) to express an idea for you owns the copyright to that expression. So get a written assignment of copyright ownership before an expression is created. 4. A trade secret (governed by state law) protects a commercially valuable idea you work to keep secret (ex. mark secret documents “confidential” and restrict access to those documents). A trade secret effectively protects recipes (ex. Coca Cola) which are hard to reverse-engineer, and technical expertise needed to use an invention (especially an unpatentable invention) effectively. Use your intellectual property most effectively by integrating it into your long-term business strategy. For example, barrier to market entry (i.e. intellectual property) is one force that shapes your business environment (“Competitive Strategy: Techniques for Analyzing Industries and Competitors” by Michael E. Porter). Thank you John and Tony for your very helpful presentation!