Overview
This prestigious law firm explains the importance of establishing effective intellectual property protection including copyrights and patents.
Intellectual Property – Copyrights, Trademarks and Patents
A small business faces many challenges and decisions as it struggles to emerge into a self-supporting, healthy organization. The entrepreneur that has assembled the appropriate resources and energy to form an organization to push forward with developing a product or service must deal with decision making and resource allocation on many fronts. Should the vendors be paid immediately or do we stretch the payment term to 30 days? Do I launch an ad campaign prior to the product’s full scale production to muster orders to generate cash flow now? Limited time and funds are typical situations that the entrepreneur must deal with, and quite often important aspects to growing the emerging business go unmanaged and even ignored for what appears to be more pressing issues.
Intellectual property (IP) is the domain of an organization’s assets that are not thought of as hard and physical assets such as plant, machinery and inventory. Intellectual property includes trades secrets, copyrights, trademarks, confidentiality protections, third party agreements and employment agreements that embody what an organization is, how it differentiates itself from competitors, and how it functions to be its own unique self. The more recognizable elements of intellectual property include copyrights, trademarks and patents that serve to protect the ideas, trade secrets and identity of an organization so it may maintain its organizational differentiation and competitive advantage.
Quite often a new business venture is solely driven by one unique thought or idea to meet the demand in a marketplace that has not been met by other companies. As an emerging business venture moves forward with trying to develop its idea into a viable product or service to sell, great efforts are often expended to keep the development confidential for fear of word getting out and a larger more resourceful organization beating the concept creator to market. Furthermore, the need for protection of intellectual property does not stop once the concept is developed, prototyped or even brought to market. Protection and proper management of intellectual property is an ongoing process that is always present as a business venture is continually developing new ideas, improving old ideas, and expanding its realm of business. Therefore, it can be seen that the need for proper protection of intellectual property is a requirement that a business at any point in its life-cycle must pay attention to and take appropriate steps to ensure that the company is adequately protected.
Victor Polk is a partner in the law firm of Bingham, Dana & Gould LLP located in downtown Boston, Massachusetts. BD&G is a law practice that is over 100 years old and has over 250 lawyers involved in legal matters including corporate financial transactions, business dealings, tax issues, and real estate. Victor is a trial lawyer for matters of intellectual property issues and is involved with handling cases regarding copyright, trademark and patent infringement in various courts and forums. Vic sat down with the EM to discuss the importance of intellectual property for small and large companies focusing on issues of copyrights, trademarks and patents, the type of work he performs when these matters are disputed between different organizations and have gone to court, and the efforts a company can take to examine and improve their intellectual property structure and protection.
Bingham, Dana & Gould LLP
Historically this organization handles corporations as over 90% of its client base. Individuals are dealt with on a much smaller basis because the firm is primarily a business firm. However, as will be seen later in the article, BD&G is among the many service providers that is shifting its attention to the small business sector and entrepreneurial ventures as a potentially prosperous area of future clientele. The types of clients BD&G works with have included the likes of large organizations such as the Bank of Boston and Digital Equipment Corporation, medium size organizations such as Just for Pets pet superstores, and smaller companies such as Equine Technologies. The client base for BD&G is distributed throughout the world which is a reflection of not only their large corporate clients, but the increasing capability of smaller organizations being able to do business globally due to enabling technologies and the trends towards a global marketplace, “In this day and age the world has become a smaller place so even small companies have to think about how they are going to sell internationally, what kind of agreements they are going to do, what kind of dispute resolution clauses they are going to put into those agreements, all kinds of considerations. There is a different psychology to people who are from different countries and you have to clue into that.”
The type of work conducted at BD&G varies among the practices from preventative legal work to reactionary trial work, “At BD&G the corporate people work to create the agreements to set up a company with correct legal structure and the litigation people do the trial work. There is also a mixture of the two with what I call ‘preventative medicine’ that go in and see how a company is doing with its legal work, and what they have already set up.” Vic’s experience as a trial lawyer has allowed him to garner a large amount of information and experience from the legal work he has conducted in defending and opposing matters of intellectual property for the various clients he has represented, “This sounds silly but you learn a lot from the litigation process and that experience lets you see what someone is doing and you say to them, ‘If someone had just told the company this, or why aren’t you doing that…'”
Intellectual Property – Definitions
For a little background on the language that will be used in this article, here is a short list of terms and definition of the elements that are most commonly thought of when intellectual property is discussed. These are the definitions for a copyright, trademark, and patent as defined by Karen Mathiasen, ESQ of Perkins, Smith & Cohen, LLP located in Boston, Massachusetts. These are basic definitions that do not necessarily present the entire realm of what these IP elements are, but suffice in presenting the concept behind each:
Copyright – a legal right, granted by law, to exclude all persons except oneself (and those that one has licensed), from copying (or modifying) a literary, artistic, or musical work that one has created. Copyrights do not extend to ideas themselves, but only to the expressions of those ideas.
Trademark – a word, name, symbol, or device used by a manufacturer or seller of goods to identify those goods and distinguish them from goods sold by others. This is set forth in Section 45 of the Lanham Act (15 U.S.C. Section 1127). Closely related is the service mark, which is used to identify services rather than goods. Unless otherwise stated, all of the points set forth below apply to both trademarks and service marks.
Patent – a legal right, granted by a government agency, to exclude all persons (including possibly oneself), from commercializing an invention for some period of time, generally 20 years from filing (since June 8, 1995) in the United States. Compositions of matter, products, machines, and processes are all proper subjects of utility patents. Plant patents and design patents are also available.