Whether you know it or not, your business’s most valuable assets are likely in the form of intellectual property. Intellectual property (IP) is a broad term that encompasses a number of types of intangible assets; and, for most businesses, these assets are essential to how they deliver products and services to their customers on a daily basis.
In this article, we will focus on three main types of intellectual property in the United States: copyrights, patents, and trademarks. However, it is important to note that there are other types of IP in the U.S. and other jurisdictions worldwide (such as trade secrets and industrial designs), and these other forms deserve just as much attention when it comes to managing your business’s intellectual property.
When it comes to managing IP from a legal perspective, there are three main components to an effective strategy. These are: protection, monitoring, and enforcement.
While some IP rights arise automatically (for example, in the U.S., you can acquire geographically-limited trademark rights based upon use alone), in most cases protection means registering your IP with the government. In the U.S., trademarks and patents are registered with the U.S. Patent and Trademark Office (USPTO), while copyrights are registered with the U.S. Copyright Office.
As someone who is growing a business overseas, perhaps the most important thing to know is that IP protection is country-specific. In other words, a registration in the U.S. won’t do you any good anywhere else in the world. Similarly, using a trademark abroad will generally be insufficient for maintaining a registration with the USPTO. This can often create issues for companies seeking to expand globally. For example, in 2012 Apple was forced to settle a dispute over the “iPad” trademark in China for $60 million after another company acquired rights in the mark before Apple adopted its now-ubiquitous brand.
For businesses seeking to register their IP in multiple countries, there are a number of options available. One of these is to register the trademark, patent, or copyright separately in each individual jurisdiction. Another option is to file under one of the various treaties and international pacts that provide for consolidated filing on an international level. For example, the Madrid Protocol allows for unified registration of trademarks in 113 member countries, and the Patent Cooperation Treaty covers patent registrations in the U.S. and nearly 150 other jurisdictions worldwide.
Many people mistakenly believe that managing their IP assets is a one-step process: once you register, you’re done. But, in reality, registration is just the start of the process. For owners of all types of intellectual property, monitoring is a crucial – and ongoing – aspect of the IP management process. There are several reasons why.
First, let’s look at another example involving trademarks. You’ve registered your trademark in, say, the United States. Now what? You’ve got nationwide exclusivity—no one can use your trademark (or any confusingly-similar trademarks) to offer competing goods or services. But, what if someone does? As a trademark owner in the U.S., you actually have an obligation to enforce your rights, and if you don’t you could lose your rights altogether. Simply put: Without monitoring, you may never know if someone is infringing on your brand.
Now, let’s look at another example involving patents. How do most businesses derive value from their patents? Licensing. But, if you’re not enforcing your exclusivity and there are infringers out there using your patent in the marketplace, your licenses are going to drop in value significantly.
Of course, just knowing about a problem doesn’t solve it. As an intellectual property owner, if you spot infringement, you actually have to do something about it. Fortunately, in the U.S. and abroad, IP owners have a number of different enforcement mechanisms available at their disposal.
While enforcement may mean litigation (filing a lawsuit in court), litigation is typically a last resort. For honest infringers – those who don’t realize that they are making use of your IP – a polite but strongly-worded cease-and-desist letter may do the trick. If it doesn’t, organizations like the World Intellectual Property Organization (WIPO) offer alternative dispute resolution services for taking on infringers, and service providers like Google, YouTube and Facebook offer options for combating infringement online as well. If you are dealing with an infringer, your best option is to consult with your attorney about the appropriate steps to take to protect your rights.
Jiah Kim & Associates Offers IP Management Services for Businesses Worldwide
Jiah Kim & Associates is an international law firm that provides IP management and other business-related legal services to global entrepreneurs and established business owners worldwide. If you have questions about how to protect your intellectual property, we invite you to schedule a confidential consultation. To speak with an attorney, call (646) 389-5065 or contact us online today.
This blog post is written for educational and general information purposes only, and does not constitute specific legal advice. You understand that there is no attorney-client relationship between you and the blog publisher. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney in your state.