The following are excerpts from Nathan Evans‘ interview on May 18 with Brian Weigand and Mari White on WIQO’s Morning Show, heard throughout Southwest and Central Virginia. Read Nathan’s interview below and visit our Intellectual Property page for information on how we can assist you with copyrights, patents, trademarks, or trade secrets.
Brian: For several years now, Apple® and Samsung®, a couple of tech giants, have been fighting over design patents and intellectual property. I think as of right now, Apple is owed over $500 million from Samsung, but we’ll see what the Supreme Court has to say about this. We’re going to talk about Intellectual Property today and joining us from the Charlottesville office of Woods Rogers PLC is registered patent attorney Nathan Evans. Nathan, good morning!
Nathan: Good morning Brian, good morning Mari!
Brian: Give us a quick explanation of exactly what is meant when we say ” Intellectual Property?”
Nathan: You gave a great introduction and as you can see, at its core intellectual property— or “IP”—is an asset. In the Apple/Samsung case, it was an asset worth hundreds of millions of dollars. IP protects creations of the mind—the embodiments of those ideas. It is not the concepts themselves as they exist in your mind, but it can be inventions, such as devices, chemical compounds, methods of making things, a design (as you mentioned), even improvements on things that are already out there. It can include literary, artistic works when they are fixed in a tangible medium. It’s important that it is not the idea that exists in the mind but as it is fixed in some kind of embodiment. It can also include trade names, symbols used in commerce to protect your brand, and confidential, proprietary information where you take reasonable precautions to maintain its secret and value.
IP really is a property right and if done properly in most cases it can be transferable and can have real monetary value.
What it gives you is exclusivity in your marketplace.
For example, a patent gives you the right to stop others from making, using, selling, offering to sell, or importing your invention. You’re the only person for a period of time that can practice your invention. Trademarks give you the right to stop others from using confusing marks. You protect your goodwill and all of the branding and time it took for you to develop your brand. This is a competitive advantage because you have that exclusivity and these are assets that if used correctly can be monetized (i.e., you can license IP and if you have a strong portfolio of IP— like patents if you are a biotech company or a pharmaceutical company— you may have a strong patent portfolio that allows you exclusivity for a period of time and that can be very valuable).
Brian: Now you’ve discussed patents and trademarks, but you also have copyrights and trade secrets. Could you give us a quick rundown there? How long is the term of a copyright…is it up to 800 years yet?
Nathan: It changes all of the time, it is definitely one of the longer forms of IP protection although, if you continue to use (a trademark) in commerce it lasts forever as long as you pay your maintenance fees.
A trade secret can last forever as long as you keep it secret. A patent is effectively 20 years from your filing date. Right now, generally speaking, copyrights last 70 years after the author of the copyright passes away. It’s a long time when compared to patents. If you think about it, copyrights are for artistic works—for the most part sculptures, music, paintings—but it can also be used for things like computer source code.
You have to remember copyrights are not the idea that exists in your mind, but it’s copyrightable once you fix it in a tangible medium. Trade secrets are confidential, proprietary information so they are exactly what they sound like. They are secrets, you don’t have to file anything. The examples that are typically used are the formula for Coca-Cola® or the formula for KFC® (Kentucky Fried Chicken).
The reason you would use a trade secret over a patent is that a trade secret is something your competitor could not reverse-engineer. It is something you can keep secret. You have to keep reasonable precautions [to protect a trade secret] such as having your employees sign non-disclosure agreements.
Brian: So you’ve got a creation, you’ve got intellectual property, how do you decide exactly what category it fits in if you are going to pursue a claim?
Nathan: The idea is going to dictate which type of intellectual property you pursue. I mentioned reverse-engineering before and that is a great way to start the analysis. Let’s talk about an invention. The questions I ask are, “can this be reversed-engineered and, can your competitor take this device apart and copy it?” If that is the case, it is not a trade secret obviously, because it isn’t a secret. The company [competitor] can take it apart and copy it. In a situation when you have something that can be reverse-engineered, that is when you are looking at a patent.
If you have a mark, or the name of your company— these days if you have enough people that know your mark— you can even protect a color. The pink of Owens Corning Insulation® for example, is protected under trademark laws. If you have something that is related to your brand then you need a trademark.
Mari: We talked to you briefly yesterday about Home Depot® and the orange in Home Depot’s logo. Would another company not be able to use orange, or a similar company?
Nathan: Exactly, it has to be a similar company. For example, I mentioned Owens Corning, that is the one that is mostly used to explain colors. If another insulation company was to come out with a competing home insulation [product] and used Owens Corning pink, that would be infringing on the trademark effectively of Owens Corning and they would not be able to use that particular color. You made a great point that is, it has to be a similar industry. For example, there are Delta Faucets® and Delta Airlines®. They are both Delta, that is their mark, but no one is going to confuse Delta Faucets with Delta Airlines and that is the core. When talking about a mark, the trademark office wants you to avoid confusing similarities. They don’t want you to build up goodwill, build up your brand, and then have someone come in and use a confusingly similar mark in a similar industry and have people think “Oh, that’s Mari’s company and I really enjoy working with them so I am going to go to this person” and the consumer just doesn’t know it is a competitor. That is what the trademark laws are meant to avoid.
Brian: Now, intellectual property protection essentially is asset protection, but how does someone determine if your idea is worth protecting and just exactly how do you go about it? I’m going to guess maybe they would talk to a registered patent attorney possibly?
Nathan: It can get expensive, especially when you are talking about patents. That’s where you want to do your due diligence up front, because spending a little bit of money up front to determine if your idea is patentable can save you a lot of money down the road. The patent process takes years and can get expensive.
To get a patent, your idea has to be useful, new, and non-obvious based on what is already out there. For example, we [lawyers] dig into what is in the “prior art”. Prior art is all of the other patents, published patent applications, things that are in the literature. We will analyze that and piece it together. By the way, this information is all available to the public. You can go to the United States Patent and Trademark Office website—uspto.gov—it is a great resource. You can even look at Google Patents.
For example, if you have an idea for a brand new breakthrough mousetrap, you go to uspto.gov and you start searching for mouse traps and find out if your idea is already patented or there are other patents [or published applications] out there, where if you combined them together and thought of them together, your idea would be obvious. You just saved yourself a lot of money rather than drafting and filing the patent application, fighting back and forth with the patent office whether your idea is obvious or not, or new or not. I recommend doing the due diligence up front and determining based on what is already in the public domain—”is your idea new or is it non-obvious?”
The same thing exists to a certain degree with a trademark. You can go to uspto.gov/trademark, if you’ve got a name, go on the website, do your searches. You will save yourself a lot of time, money, and headaches if you find out someone is already using that tradename in the exact same industry. That is great for branding and marketing too because if you are a startup company, it is a lot easier to re-brand early rather than get two or three years into the process and say “I’m really creating a brand and some goodwill here, I should protect my mark” and you go online and find out that you can’t do it and then have to rebrand. Those are the due diligence things you want to do up front to save money in the long-run and determine that you have something that you can truly protect.
Brian: All right, Nathan Evans, a registered patent attorney in the Charlottesville office of Woods Rogers. If you want to find out more go to woodsrogers.com/patents. Nathan, thanks for joining us this morning.
Nathan: Brian, Mari, thanks so much!