Technology is in nearly every aspect of our lives. A company’s most valuable asset is often its intellectual property (“IP”). Protecting the company’s crown jewel is important. IP covers a wide range of legal issues, from patent protection, freedom to operate, trademark usage, celebrity endorsement, entertainment law, contract law, copyright law to licensing. You need the right IP attorney with specific specialization to tailor to a company’s needs.
What Types of IP Do You Own?
We should first assess the types of IP assets the company has to ensure we can find the right type of IP attorneys. IP laws are divided in three major areas: patent, trademark and copyright.
In general, patents protect inventions of tangible things, such as mechanical devices, electronics, chemical formulations and processes, medical devices, etc.
Copyrights protect various forms of written and artistic expression, including books, manuscripts, music, movies, architectural drawings, software, databases, photographs etc. Trademarks protect a name or symbol that identifies the source of goods or services, such as brandings and tag lines. It is important to note that words, logos, color, sounds and scents, or any combination of them can be protected as trademarks. Patents, trademarks and copyrights constitute the basis on which the underlying IP may be protected under federal law. Trademarks can be protected under both federal and state laws.
What Should the IP attorney Do For you?
IP attorneys help companies to protect, enforce and defend their IP asset. An IP strategy is used to assess the kinds of IP protection needed (preparing and filing patent applications and registering trademarks and copyrights), to enforce IP rights against third parties (sending cease and desist letters against patent infringement, trademark infringement or copyright infringement, or initiating lawsuits against infringers) and to defend against third party claims against infringement (responding to cease and desist letters, asserting counterclaims and affirmative defenses in infringement suits or initiating declaratory judgment actions in defense of the company’s IP rights against third party’s infringement claims).
Here are some of the main responsibilities of patent, trademark and copyright attorneys.
Patent Attorney: The main duties of a patent attorney include preparing and filing patent applications in the US Patent and Trademark Office. They meet with inventors to learn about all aspects of the invention, and identify the novel, useful and nonobvious aspects of the invention to be patented. They then draft patent applications for filing. In addition, they also work with a network of other patent attorneys in other countries to prosecute foreign patent applications. This is because patent rights are territory-based. Patent attorneys also advise clients on market clearance, which is the freedom to operate their IP, products, or technologies in view of third party patents to determine whether a particular action, such as testing or commercializing a product, can be done without infringing third parties’ patent rights. Notably, a patent attorney requires specialized qualifications necessary to represent clients to obtain patents and to act in all matters and procedures relating to patent law and practice in front of the US Patent and Trademark Office. They must pass the Patent Bar, which requires the attorneys to have undergraduate degrees in science or engineering.
Trademark and Copyright Attorneys: Trademark and copyright attorneys protect the company’s branding and copyrighted contents both offensively and defensively. They make sure the company’s use of their branding, taglines and/or product names do not infringe on a third party’s rights and that a third party’s branding does not infringe on the company’s trademark rights. Trademark infringement is based on whether a use of a branding (logo, words or stylization) can cause consumers to be confused about the branding’s source, such as whether consumers will mistakenly believe one brand of goods or services is associated with another brand. Before making the decision to use a new trademark in commerce, it is important to have the trademark cleared. A trademark attorney can do a trademark clearance search to identify any potentially similar trademarks to help the company minimize any potential liability for infringement. For copyright, the attorney can help you assess what is copyrightable, and monitor and enforce copyright against unauthorized uses by third parties. Attorneys can also negotiate license agreements for the company to license or cross-license its trademark or copyrighted contents to others for use or monetization.
How Should You Select an IP Attorney?
Companies should select IP attorneys who are experienced in the areas the companies need most. For a tech company, select an attorney specializes in patent and licensing. For a media company, select an attorney experienced in trademark and copyright. Aside from registering patents, trademarks and/or copyrights, the attorney should approach IP holistically and look at the overall IP portfolio to devise a comprehensive strategy to protect, defend and enforce the company’s IP rights both offensive and defensively.