Choice of Protection

The proper question, as in all business enterprise, is: what will maximize profits? The specific forms of IP protection, their creation and development, must be selected to enhance the value of the underlying commercial product, whether that product is goods or services. A logical business decision process proceeds from a cost benefit analysis. The costs may be estimated in a conventional way based on prior experience. The benefit may be determined via a valuation model.

COSTS:

Patents are generally the most expensive form of IP protection to secure and enforce. A patent attorney or agent must comprehend the invention, draft an application generally including drawings and a written specification and claims, and prosecute the application before the Patent and Trademark Office. Attorneys generally charge by the hour. Costs to prepare, file and prosecute and application vary from about three thousand to twenty thousand dollars and more. The procurement of foreign patent protection is even more expensive, generally owing to translation costs and the involvement of multiple patent law firms.

Copyrights are perhaps the least expensive form of IP protection. Protection is automatic upon the creation of a copyrightable work. To enforce a copyright against an infringer in the U.S., a registration must be obtained. Registration entails the filling out of a two-page form and the submission of the form, with copies of the copyrighted subject matter and a minimal fee, to the Copyright Office.

Trademark protection generally requires use of the trademark in connection with the goods or service and optimally a short application to register the mark in the Patent and Trademark Office. A trademark application is much simpler to prepare and prosecute, and thus cheaper, than a patent application, unless an opposition is filed against the application. An opposition is a litigation in the Patent and Trademark Office.

Trade secrets require the institution and enforcement of procedures to maintain the secrecy of the respective subject matter. There is no application process for the registration of trade secrets. Instead, the secret must be guarded from misappropriation by employees, competitors, and the general public.

DURATION:

A patent has a term extending twenty years from the filing date of the application.

A copyright lasts for the life of the author or creator plus 100 years.(?)

Trademarks continue indefinitely provided that care is taken to maintain consumer recognition and goodwill.

Trade secrets also endure, provided that the secret information remains confidential and proprietary and advantageous to the business.

Patents are a choice when the business involves a product, machine, or process which is new, novel and not obvious in view of prior technology. Patents are generally considered to be the strongest form of IP protection. Unlike copyrights, patents do not require copying. A patent holder may stop another party from making, using or selling the patented product, machine, or process even though the third party independently developed that product, machine, or process.

Patents are not a good choice if the relevant field is developing so rapidly that a patent’s subject matter will be obsolete when the patent issues.However, in such cases, a psychological benefit may be attained by proper use of the words “patent pending.”

Patents are valuable assets for start-up companies, perhaps the only assets of value. The early filing and procurement of patent protection facilitates the attraction of investment. Patents also stimulate the development of improvement technologies.

A strong well-known trademark means dollars to the bottom line. Consumers put their money in products and services that they trust. In addition, trademarks can be licensed to companies marketing ancillary products or services and thus provide a significant source of income at relatively little cost.

Trade dress may be used to protect designs which are or were protected by design patents.

Copyrights are valuable when the copyrightable property is a commercial success. Books, sound recordings, videos, video games, computer programs, all represent possible sources of significant profit. The Internet is having a profound impact on the value of copyrighted products, inasmuch as these products are particularly suitable to on-line dissemination.

Trade secret protection is a choice when a product line or service is supported by information or processes which may be maintained in secrecy even during marketing and commercialization of the product line or service. Trade secret protection may be used in conjunction with patent protection, where the secret information is developed after the filing of a patent application. As a general rule, the filing of a patent application requires disclosure of all information needed to carry out a best mode of the invention.