How To Protect Your Intellectual Property

November 17 2017 SilcoTek

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Concerned about protecting your intellectual property?  To learn more about how to protect IP we sat down with our General Counsel and Chief Intellectual Property Counsel, Geoff White, JD, LL.M to learn more about the topic. Here's what we found out.

Protecting intellectual property entails more than simply telling someone to be mum on your latest idea or to keep your trap shut about that latest formula. It requires effort and most importantly a strategy. An effective IP strategy is an interconnected series of gates intended to allow your company to do business without losing your business to theft of ideas or processes or to general carelessness.

Why have a strategy?

Well, let's think about the end game of your business from the start. Visualize where the business may take you and think of all the possibilities out there. Have a great new technology or process? You may want to license it in the future. If the technology is not protected, you may not have much to license. Want to spin-off that division? Again a solid IP plan will keep that division secure. Other reasons or having a cohesive strategy are:

  • Marketing/Prestige
  • Disclosure
  • Taxes (especially in China and Belgium)
  • Competitive Enforcement (sue)
  • Investment
  • Sale of Company / Creation of Asset

Learn About SilcoTek  Licensing Opportunities

 

So what exactly is intellectual property?

IP can include all sorts of thought or technology ownership, they include:

Office folder with inscription Patents on Office Desktop with Office Supplies. Business Concept on Blurred Background. Toned Image..jpeg
  • Patents
  • Trade secrets
  • Copyright
  • Trademark / Trade Dress
  • Other Registrations

Let's take a look at a few of these tools. 

 

Patents

Goal of Patents: to DISSEMINATE information. Everyone with access to the USPTO website can see your idea or technology. The benefit of a patent is that if the idea is used by someone else, you have a legal recourse which allows you to sue for infringement and possibly recover damages. It also allows you to be an in-the-light company, like we aspire to be.

What are the Requirements for a patentable invention? The idea must be:

  • New
  • Useful
  • Non-Obvious
  • Not Prohibited by a Statutory Bar

The downside of a patent

They can be costly to secure and maintain and can take a lot of time & money to enforce. The best explanation is that they cost about the same as a car. What type of car? Well, it depends upon what you need. Some need a Maserati; others need a Tata.

  • Costs vary greatly depending on selected countries.
  • US – usually about $25,000 (spread over 20 years)
  • Foreign – similar to US for each country

 

Protection - Business Concept. Green Arrow with "Protection" slogan on a grey background. 3D Render..jpegTrade secrets

Goal of Trade Secrets: To maintain SECRECY of information for a commercial advantage. Unlike a patent, you don't want your idea or process to get out. If it does become public knowledge, you have nothing (except maybe the ability to sue someone who made it public). Others can independently come up with your idea and your idea or process is no longer a trade secret. Full reliance upon trade secrets can suggest that a company has some sort of behavior to hide (like they are infringing a patent).

SUBJECT MATTER - TRADE SECRETS

  • Confidential Information (including ideas)
  • Commercial Value Required (unlike patents)

Subject matter for trade secrets include customer lists, business plans, prototype designs, relationships, etc.

PROCESS - TRADE SECRETS

  • Timing – immediate
  • Content – no requirements (just label it and keep a secret)
  • Endures so long as the information is valuable and remains a secret
  • Internationally disfavored

What's the cost of maintaining trade secrets?

  • Cheap – cost of a marker to label it as a trade secret
  • Should pay for legal advice on policies, agreements, etc.
  • A trade secret program can cost less than one patent

 

How to Protect Your Intellectual Property

OK! I get it, there are lots of ways to protect my IP, but where do I start? Well you can start by categorizing your IP, just like you do for your other assets. You can classify IP protection in several ways.

  • By Technology
  • By Geography
  • By Target Protection
  • By Collaborator

Then list the desired target method of protection for each asset based on protection need, risk, cost, overall long term company objectives or other strategic plan.

It helps to enlist the assistance of legal council for advice and guidance on developing and employing an IP strategy.  When SilcoTek needs input on strategy, we’ll work with an internal team and even reach out to colleagues like Andrew Oltmans and Shawn Leppo at McNees Wallace & Nurick. Any registered patent attorney with some business sense should be able to help. It will save you in the long run!

Get tips on protecting your IP.

Get Tips On How To  Protect Your Intellecual Property

 

Geoff has lectured on IP related topics at several major universities and conferences including:

  • University of Pittsburgh, Katz School of Business (MBA Program) (numerous times)
  • LaRoche College
  • Lebanon Valley College
  • Widener University
  • “OGC University” (Pennsylvania’s government-lawyer training program)
  • And several conferences (like Pittcon)