By now I've worked with individual clients, small businesses, large institutions, and everyone in between. But recently, I've been surrounding myself with small businesses, and many of them ask me, “What general advice (in the realm of intellectual property law) do you have for small businesses or start up companies?” So, I decided to come up with a few things that you can keep in mind if you're a small business or a start up.
1. What do you want to protect now?
Maybe someone in your company invented something for the company, and you want to protect the invention. Or, maybe it's your product name, and you want to protect the brand. Whatever it is, the first thing you want to do is to figure out what you want to protect now. (More on that in tomorrow’s article.) Once you do that, prioritize what you want to protect first by thinking about what is most valuable and therefore most important. Let's look at patents and trademarks separately.
If you want to file both a patent application and a trademark application, definitely file a patent application first. I say this for a couple of reasons. First, you can receive common law rights for trademarks (and copyrights for that matter). But you don't receive common law rights for patents. Even considering this alone, it is more important to have a registered patent than a registered trademark. Second, the U.S. patent system operates under a “first-to-file” system under the American Invents Act. This means whoever files a patent application first wins, even if that applicant didn't invent first. So the timing is more sensitive with patents. Third, it takes a loooong time to register a patent. Last I heard, there is a backlog of over 600,000 patents at the USPTO, with over 300,000 new utility patent applications filed annually. So the earlier you file, the earlier you can register (fingers crossed).
Also, I will say that filing a patent application is more expensive than filing a trademark application. If you’re tight on funds, at least file a provisional patent application so you can buy yourself a year to perfect your invention and get your finances in order.
As I said earlier, filing a trademark application is secondary to filing a patent application (in my opinion). But this does not necessarily mean that it's not important. Protecting your brand can be extremely valuable. For example, let’s say that you are using a trademark and someone else comes along and purchases a domain name with your trademark in it. If your trademark is a federally registered trademark, you can bring a trademark infringement suit in a federal court.
But wait. I mentioned earlier that you have common law rights for trademarks. But your common law rights will likely only prevail if you’re the prior user of a trademark. This means you will likely only have superior rights if you’ve been using your trademark longer than a federal registrant. So if you can’t afford to file a trademark application at the USPTO, start using your trademark for related goods and/or services as soon as you can in commerce.
2. What do you want to protect in the future?
As your business grows, so will your IP portfolio. If you’re not sure how to expand your IP portfolio, think about the trajectory of your business as well as that of your competitors. Is there a trend that everyone is following? Is there a particular problem that everyone in the industry is trying to solve, but have not been perfected?
Even if you’re not completely sure whether you will end up manufacturing or start selling a product, it might be worth patenting or trademarking if there is strong potential. (Especially considering how long it takes to patent something, as I mentioned earlier.) This way, you are legally protected, not your competitors. And you can do basically whatever you please with your patent or your trademark once it’s registered. (You can keep your rights to a trademark forever assuming you maintain it throughout the years, although a 20-year protection for utility patents isn’t bad either.)
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