SIDESBAR WINTER 2021 - 17

MONTGOMERYBAR.ORG

Patents. A patent for an invention is the
grant of a property right to the inventor,
issued by the USPTO. A patent allows the
patentee to exclude others from practicing
the patented invention for a limited
duration, in exchange for disclosing the
invention to the public. In order to obtain
a patent, one must first file an application
with the USPTO. The application must
fully disclose the invention and meet
the requirements of utility, novelty, and
non-obviousness. Clients must not delay
the decision to seek patent protection;
if more than one year has elapsed since
the invention was first exploited, either
by publication of the invention or by
offering it for sale, an inventor is barred
from obtaining patent protection on the
invention.
Utility patents are the most common
type of patent and protect inventions that
include machines, processes or techniques,
articles of manufacture, compositions of
matter (including pharmaceuticals), or
any new and useful improvements thereof.
Clients whose business is focused on R&D,
who are making and selling commercial
products, or who may have developed
a particular manufacturing technique,
should consider utility patent protection.
Design patents protect the ornamental or
aesthetic features of the design of a useful
article, which can include such " articles "
as computer screen icons and the shape
of water produced by a fountain. While
businesses that sell products particularly
known for their design, such as furniture,
lighting, eyewear, footwear, or fashion
accessories, should certainly consider
design patents. Any business that invests
in a pleasing design for its products should
consider design patents as a strategic
tool. Plant patents protect new, asexually
reproduced plant varieties. Both plant and
utility patents have a term of twenty years
from the date of filing, while the term for a
design patent is fifteen years from the issue
date of the patent.
Patents can operate to prevent
competitors from copying key features of
a client's product, as a defensive measure
to deter patent suits by competitors, as an
asset that conveys to the marketplace and
potential investors the innovative nature
of the client's products, and as a way to

provide employees with public recognition
for their inventions. The development of
a patent portfolio can enhance a client's
position in the marketplace and increase
the value of an enterprise when investments
and acquisitions are under consideration.
Trade Secrets. A trade secret is information
not generally known by others and which
provides a competitive or economic
advantage to the holder, provided
reasonable efforts are used to maintain
its secrecy. Unlike patents, trademarks,
and copyrights, there is no federal or state
registration process - instead, the owner
of the trade secret bears the burden of
protecting the confidentiality of its " secret
sauce. " However, the misappropriation of
trade secrets is prevented under both state
law, such as Pennsylvania's Uniform Trade
Secrets Act, and under federal law, by way
of the Defend Trade Secrets Act (DTSA).
Trade secret protection is wide ranging
and may be available for almost any item
of information that is not a matter of
common knowledge in a specific field or
industry. Such coverage may extend to
products, processes, formulas, business
plans, financial information, computer
software (e.g. source code), customer
and supplier lists, and other information
relating to a company's business used to
provide a competitive advantage. Trade
secret protection, in contrast to patents,
does not automatically expire, but is limited
only by the ability of the trade secret holder
to maintain the secrecy of the trade secret.
However, in the event that a trade secret is
leaked or otherwise discovered by a third
party, asset protection may vanish and the
business may suffer significant economic
consequences.
Protection of a client's trade secrets
should be tailored to the specific type
of information desired for protection.
Generally, this involves coordination
by legal counsel with team members
at the executive level, HR, IT, and
others (e.g. marketing) to draft and
implement procedures and policies
focused on identification of the trade
secret, its potential value, and the level
of effort required to maintain it. Key
to any trade secret program is drafting
appropriate confidentiality provisions and
executing employment/vendor/contractor

agreements, NDAs, CDAs, and other third
party agreements.
Copyrights. Copyright protects original
works of authorship fixed in a tangible
medium, such as novels, songs, movies,
paintings, sculptures, and computer
software. A copyright protects the
expression of an idea, but not the idea
itself. Copyright prohibits others from
copying one's work, but does not prevent
another author's independent creation of
the same or similar work. Also, the owner
of a copyrighted work controls the right
to reproduce a work, make derivative
works (e.g. movies or adaptations of a
novel or short story), and sell, perform or
display the work to the public. Copyright
protection exists from the time that a work
is fixed in a tangible medium of expression
and does not require registration with the
U.S. Copyright Office. However, filing a
copyright registration is a prerequisite for
filing a lawsuit for copyright infringement.
Additional benefits to copyright registration
include public notice and legal evidence
of ownership, demonstration of validity (if
certain filing requirements are met), and
the opportunity for statutory damages.
The Federal copyright statute requires all
transfers of copyright to be in writing.
Clients that engage creators, such as
software developers and ad copywriters,
should be aware that, without a written
agreement, the creator is free to re-use the
work product for others, and the client may
be limited in their rights to modify and
copy the work product.
Conclusion
While this article has touched upon
the basics of intellectual property, it is by
no means an exhaustive list of the various
forms and facets of IP. Assessment of a
business's key IP components is essential
for any client wishing to distinguish its
products and services from those of its
competitors. Leaving intangible assets
unprotected enables competitors to free
ride on your client's innovations and
reputation, and diminishes the value
of your client's business. Identifying,
documenting, and devising ways to protect
your client's intellectual capital will indeed
transform their ideas into valuable business
assets.
WINTER 2021 17


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