Pedersen and Company is a specialized intellectual property (IP) law firm. Our team of attorneys and associates works together across a broad base of expertise to produce cost-effective IP solutions in the areas of domestic and foreign patent, trademark, copyright, and trade secret issues, licenses and other contracts, and litigation.
With an office located just minutes from downtown Boise, Idaho, our work is invigorated by the innovation and technological progress going on around us. International corporations such as Hewlett-Packard and Micron and organizations like the Idaho National Engineering and Environmental Laboratory spearhead the charge of high technology in Southern Idaho. Global technology leaders like these and entrepreneurial individuals alike look to us to protect their intellectual endeavors.
Our practice is built upon the philosophy that establishing strong, synergistic relationships with our clients ultimately strengthens their claims to valuable IP assets. At Pedersen and Company, we take great pride in helping our clients succeed and we are committed to seeing innovation delivered.
New or Small Companies and Intellectual Property
New or small businesses, including sole proprietorships, often have special challenges with intellectual property–that is, with trade secrets, patents, trademarks and copyrights. Typically, smaller businesses receive little advice prior to and during start-up, and important intellectual property issues may not receive much attention. Still, whether the small business is involved primarily with goods or services, helping your client take a few simple steps will assist the company in putting its intellectual property house in order.
First, it is important for the company owners and employees to understand the concept and value of confidential information. Almost every company has trade secrets. For example, information regarding sources and costs for materials and supplies, manufacturing and operations methods, customer lists and prices, etc. is usually secret and valuable to the company. These trade secrets should be identified, inventoried and protected from unauthorized disclosure. A trade secret will be lost by making it public, so employees, vendors and visitors should sign non-disclosure agreements, and receive proprietary information on a need-to-know basis only.
Second, possibly new equipment, materials and methods should be considered for patent protection. The old prohibition in the patent law against “methods of doing business” has been stripped away by recent case law, and, as a result, many innovative computer and Internet business techniques are being patented. There is a trade-off between protecting trade secret information and disclosing the invention in patents, which are public documents. However, inventions which may be readily reverse-engineered or independently developed should be considered good candidates for patent protection. Also, it is important to screen possibly patentable subject matter promptly, because patent rights can be waived in the U.S. if no patent application is filed within 1 (one) year of first public use or sale. In many foreign countries, this waiver of the right to patent occurs immediately upon the first public use or sale, if no patent application has been filed. Commercial use, even in secret, has been held to be “public use” for the purpose of this waiver of right.
Regarding trademarks and trade names, it is important to not approve a company name for your client which may be similar to someone else’s trademark. Therefore, a trademark “search and clear” operation is recommended, in addition to the typical Secretary of State’s clearance, when adopting a business name. Once the name is adopted, a federal trademark registration will discourage subsequent adoption of the same or similar name, even by remote or unrelated third parties.
Regarding copyrights, it is important for a company to own the rights to its logo, ad copy and in-house or customized computer programs. As a result of case law, the “work for hire” doctrine is understood now to be interpreted restrictively, applying only to work of common law employees within the scope of their employment, and specifically commissioned, in-writing, works in specific listed categories. Therefore, assignments of copyrights from outside visual artists, ad agencies and computer programmers should be obtained.
With these concepts in mind, you can easily help your new or small company client stock up with its own intellectual property rights. Then, also with your help in being aware of and not infringing the intellectual property rights of others, your client can effectively focus on building the business, rather than having to resolve possibly unnecessary intellectual property disputes.
DRIVE DOWN THE COST OF PATENTS
Patent costs may be minimized by lessening the patent professionals’ workload in each case. An aware consumer of patent services may incur lesser attorney or agent’s fees by delivering to the patent professional a case that is in optimum shape and thus requires less research, a shorter learning curve, and fewer revisions and rewrites of the patent application.
“Optimum shape” means ready for the patent professional to read and understand and to begin to write patent claims and description. An optimum case, then, begins with a good disclosure of the invention to the patent professional.
One way to make the optimum disclosure is to use a good invention disclosure document, such as the Invention Disclosure Form located on our website home page. This example document is designed to organize the necessary information and make it quickly available to the patent professional.
This disclosure document should be filled in completely. Any questions or gaps in requested information should be noted. A well-completed disclosure document is the inventor’s opportunity to get the patent process off to its best start.
Expert inventors** can greatly assist the patent professional by completing the related art section of the disclosure document in detail. The related art is the state-of-the-art or “prior art” at the time of the conception of the invention. The prior art is the “jumping off point” for the invention. Time and effort spent in accurately and completely preparing this related art section will be well-invested.
In describing the state-of-the-art, the inventor should distinguish between publicly available and private information.*** The sources of both types of information should be clearly and specifically identified, and copies of the documents referred to should be provided.
The state-of-the-art description should be complete and specific enough to enable the patent professional to verify the novel features of the invention. Also, the state-of-the-art description should be broad enough to give the patent professional sufficient background from which to analyze the non-obviousness of the invention.
Another section of the disclosure document that deserves special attention is the invention description section. Here, the inventor has the opportunity to particularly point out the invention. The inventor should record complete and specific details of the invention and note if he/she considers any of the recorded elements or steps of the invention to be optional. The inventor is entitled to focus on the invention as he or she sees it, understanding that broader or different interpretations of the invention may be made.
For focus, at the end of the invention description section, the inventor should write a “definition” of the invention in a single sentence. One format for such a sentence is:
“In . . . (define the limits of the prior art) . . . , my invention is the improvement that is . . . (define the invention relative to the prior art).
This sentence may form the basis of the patent professional’s claims for the patent application, placing the patent professional in good position early for writing a good, quick case.
* “Patent professional” here means a U.S. Patent and Trademark Office (PTO) registered agent or attorney.
** “Expert inventor” here means one who is versed in, and capable of accurately describing, the state-of-the-art and its relationship of the invention.
*** “Private information” here means information not in the public domain, including secret and confidential information.