INTELLECTUAL PROPERTY

Today's markets require critical thinking for developing and protecting intellectual property. Revolutionary changes have occurred in the last few decades in the way our society uses intellectual property. As individuals and companies increasingly focus on intellectual assets, the value of efficient and effective IP counsel is immeasurable.

The Intellectual Property Practice Group at McLeod, Alexander, Powel & Apffel, P.C. provides services to clients in matters related to patents, trademarks/trade dress, copyrights, and trade secrets. To enhance the value of its IP services, McLeod, Alexander, Powel & Apffel, P.C., a traditionally well-respected litigation firm, maintains a team of trial lawyers with experience in both state and federal courts to defend your intellectual property rights in court. In addition to our litigation and prosecution expertise, our attorneys provide counseling on licensing, draft assignments, non-disclosure agreements and a myriad of other issues concerning intellectual property development and marketing.

Whether filing an application for IP registration, advising on an impending transaction, or advocating your rights in court, the Intellectual Property Practice Group at McLeod, Alexander, Powel, Apffel, P.C. can provide the assistance needed to protect your intellectual property.

Patents

A patent is the exclusive right to prevent others from marking, using, or selling the patented invention or other things made using the invention. It is essentially a monopoly granted by the government for generally twenty years from the date the patent application is filed. In exchange for this monopoly, the government requires the patent owner to fully disclose the invention so that others may duplicate the results achieved by the patented invention. At the conclusion of the term, the patented invention becomes available to everyone.

Many requirements must be met for an invention to be patentable. The most fundamental requirements are that the invention be novel, useful, and non-obvious. To be novel, the invention must not have been known or used by others in the United States or patented or described in a printed publication anywhere in the world prior to the inventor's date of invention. To meet the non-obvious requirement, the invention must not be anticipated by the existing technology. Usefulness, or utility, is met by showing that the invention has a functional purpose. This area of patent law may sound straightforward, but it is very complex. Therefore consultation with a patent professional is highly recommended.

It is important not to reveal an idea for an invention before arranging for patent protection. A public use or disclosure may jeopardize the inventor's right to obtain patent protection both in and out of the United States. Before disclosing the invention to anyone, obtain a non-disclosure agreement to protect the inventor's rights.

Trademarks

A trademark is a mark used in trade to distinguish the goods of the trademark owner from the goods of others. Similarly, a service mark distinguishes services of the owner from the services of others. A trademark or service mark is an adjective in that it describes a good or service. It is not the name of the good or service. For example, it is Band-Aid® adhesive bandages, Xerox® copies, and Kleenex® facial tissues. The ® symbol means that the mark is registered with the United States Patent and Trademark Office. The ™ symbol means that the owner is using the word or symbol as a trademark, though no rights, with the possible exception of common law rights, have been conveyed.

Trademarks can be registered federally or with individual states. Federal registration is preferred as it preempts or trumps state-level registration. There are two types of federal registration: Principal Register and Supplemental Register. There are many advantages to federal registration on the Principal Register, such as a presumption of ownership, an exclusive right to use the mark throughout the United States (with some restrictions), the right to bring an action to enforce trademark rights in Federal Court, and incontestability after five years of registration. Some marks must be registered on the Supplemental Register. If a mark has been registered on the Supplemental Register for five years, it may then be eligible for registration on the Principal Register.

Copyrights

A copyright protects an expression of an idea, but not the underlying idea. In other words, a story about a girl and a cat can be copyrighted, but the copyright does not give the copyright owner any rights in girls or cats. The copyright does not prohibit someone else from writing their own story about a girl and a cat. With some exceptions, the term of a copyright is the life of the author plus seventy years. A copyright is deemed to attach upon creation of the work, so use of the © symbol is no longer required. However, use of the © continues to be good practice.

Filing for copyright protection has several advantages. First of all, there is a presumption of ownership to the work. The owner may be entitled to statutory damages as well as attorney's fees. Copyright registration must be filed within three months from publication or before any alleged infringement to ensure full benefits of registration.

Trade Secrets

A trade secret is a formula, process, device, or other business information that is kept confidential to maintain an advantage over competitors. Some examples are a formula for a low-calorie drink, marketing strategies, or manufacturing techniques. Trade secrets may protect ideas that offer a business a competitive advantage, keep competitors from learning about new protect development, protect business information such as marketing plans and customer lists.

There is no federal registration to protect trade secrets as there is with patents, trademarks, and copyrights. To protect a trade secret, the information must be kept confidential. Once the information is made available to the public, trade secret protection ends.

A business must take affirmative steps to keep the information confidential. Marking documents "confidential," maintaining computer security, and limiting access to secrets to people who need to know the information are sensible precautions a business can take to protect their trade secrets. The best method to protect trade secrets is through non-disclosure agreements.

Intellectual Property Links

United States Patent and Trademark Office
United States Copyright Office
World Intellectual Property Organization
State Bar of Texas
Patent Cafe

Disclaimer

These summaries are general comments only and may not be applicable to all situations. They are not to be considered legal advice. Consultation with an attorney is needed if legal advice is sought.

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