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SVPMA Presentation, February 2010 What every Product Manager should know about Varun A. Shah, Patent Attorney, Hickman Palermo Truong & Becker Write up by Keith Rayner Summary Patents, copyrights and trademarks are all terms we are familiar with, but in this whirlwind presentation of a wealth of information it became apparent that there are many surprises in store for the layman in these areas, and that the devil is indeed in the detail. To put a different spin on a well-worn adage, it seems anyone attempting to move ahead on their own in filing patents likely has a fool for an attorney. To give a sense for the complexities of the issues, I’ll list some snippets that I found illuminating and let you work through the presentation deck at your leisure for more details, or of course talk to Shah! So to begin with, what intellectual property can you protect on a particular product? Using a wristwatch as a familiar item, you can protect the trademark, actual design, as well as the internal software, the point being to protect the inventor and designer’s investment and prevent others benefiting from those efforts without appropriate license fees. Trademarks Simply put your logo on a product, create recognition of your logo in a geographic region, and you have a trademark within that geographic region. In the best of cases trademarks represent the goodwill and brand that has been built up by a company and a product, and can accumulate enormous value. So it’s important to protect that equity and stop others benefiting from your goodwill and putting your logo on their product. If you haven’t registered the trademark, then there are territorial limitations and your rights may not be clear regarding similar usage by other parties. Registering the trademark gives “constructive notice” to potential infringers as a deterrent, provides nationwide protection (for US patents), and makes it easier to defend infringement. It also provides protection from imports, as the trademark may be enforced at the border. And, like diamonds, trademarks may last forever. Copyright Copyright applies to creative expression that’s published in a fixed medium. By default, an exclusive right is granted to the author of an original artwork such as a book, article, or artwork. Unauthorized wholesale copying of a work is prohibited. In contrast to trademarks, copyright lasts for 75 years after death of the author. But in the internet age there is boundless information available on the web. And once something has been published on the web, then it’s in the public domain, right? Well, no, even without that copyright notice on the bottom of a document, the content probably still belongs exclusively to the author. Just because it’s in a public space doesn’t mean it’s been explicitly donated to the public domain for public use by the author. Nevertheless, some “fair use” of the work is permitted. Publication of abstracts of a text for criticism is permitted, and showing a small snippet of a movie is allowed on the basis that seeing that clip doesn’t necessarily reduce demand for seeing the entire movie. But it does get a bit fuzzy in many areas, for example reuse of music where the extent of copying, and degree of commercialization determine the need for licensing fees. However, pure information cannot be copyrighted. For example, you can’t copyright the contents of a telephone directory, as it’s simply a list of telephone numbers, with no artistic expression or selectivity involved. Likewise, formulas cannot be copyrighted. Software can be copyrighted (like the text of a book), but actually there’s not much point, as the software code itself can be edited and modified while preserving functionality. Far better to seek a patent for algorithms and computer processes. Surprisingly, two people can have copyright on the same artwork if they created it independently. Great minds sometimes do think precisely alike, apparently. Patents This is where it gets really tricky. You can patent a whole range of things: any process, product, product features, algorithms, computer software etc. etc., as long as the invention is new, useful and non-obvious. Filing a patent primarily gives you the right to exclude others from making, using, selling, offering for sale, or importing into the U.S. the claimed invention. This has defensive uses in case someone tries to sue you for infringement on their patent, and offensive uses for facilitating licensing or sue other infringers. However patents are not automatic. You don’t need a working model for a filing, but in the US you must file within one year of public disclosure of the invention. The claim can be back-dated to the date of conception, termed “swearing back”, as long as you have a record of the invention timeline. But if you don’t file in a timely manner, the invention falls into the public domain. Interestingly, most patents filed are incremental in nature. There’s an initial filing of a patent set, with design patents lasting for 14 years, utility patents for 20 years. But then a continuous building on selected elements is possible to extend patents into market areas that are most fruitful, as well as extending their useful life. Related to this, an important role for the attorney is to prevent competing patents using work-arounds or designing around existing patents. For instance, can a process with steps A,B,C, and E considered to be an entirely different process from one containing steps A, B, C, and D, or is it built on top of an existing patented component? Initial comprehensive filing to correctly specify individual components that are basic building blocks, or defining a broader range of variations might be tactics used to provide stronger protection down the line. This strategic view of the patent process is where expert opinion can really provide value in effective patenting. Conclusion There are a lot of landmines and gray areas for the uninitiated, and the presentation just scratched the surface and hinted at the complexities. For entrepreneurs, intellectual property is very often the life-blood of their company. Getting the whole process right from the start is essential to be able to protect and build upon that investment, so seek out someone knowledgeable to guide you down the right path! Resources Hickman Palermo Truong & Becker, LLP: Intellectual Property Law Keith Rayner, Kemarra Inc: Oct 2009
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