May 14th, 2014 What patents, trademarks, copyrights and domain names mean these days

Last May 14, Andrew Wong’s New York Entrepreneurs Business Network hosted a special talk on “Intellectual Property & Technology Law for Startups & Emerging Companies” by David Boag, founder of Boag  Law, PLLC, a boutique intellectual property law practice that focuses on trademark, copyright and technology law at WeWork in Battery Park, downtown Manhattan.

Boag’s presentation revolved “the big three”: patents, trademarks and copyrights.

Just to give a brief description of one and the other, patent (terms is 20 years from filing; use upon issuance) is the right to exclude others from making, using, selling or importing the invention, described in the patent’s claims

Trademark (indefinite, use in commerce) is a symbol, word or words legally registered or established by use as representing a company of product.

Copyright (life of the author +70s, fixation) is the exclusive right of an author to exploit a work, including making copies, publicly performing the work, and preparing derivative  works.

Breaking down the costs for each, patents will set you back $5,000 to $10,000 up; trademark about $1,000; and copyright, about $300.

Criteria for patents include the utility, novelty and non-obviousness of the product, covered under invention or discovery of any new process, machine, manufacture or composition of matter.  For trademarks, they have to be distinctive, capable of being an indicator of source, with no LOC. Copyrights should have originality and fixation.

With patents, Boag said you don't have to look for the problem the problem will find you. In 2013, there were a total of 302,948 patent issues; 40,000 software patents and 4,701 patent infringement suits, 62 percent bought by NPEs. How much does a wrongdoing cost? How does $29 billion in direct costs and litigation costs sound to you?

Boag said seeking patents is expensive and may not be worth it.. “It’s a judgment call.” Companies use it to protect early market share. Trademarks protect your identity, branding. It has national rights and puts others on notice, but requires care and feeding.

As with your startup, Boag advised devising strategies. For patents, file early and be the first to file, and file continuations and adapt. For trademarks, confirm availability early and make sure to be distinctive, as you take care of it, use it correctly and protect it.

What’s the difference between that TM and r symbols? The one with the r symbol is actually registered. For copyrights, register important materials, the source code of the website, for instance; and have registration requirement for infringement claim.

What are some examples of design patents? It can be a shoe design, smartphone, GUI or graphical user interface.

Other things to keep in mind:

  • For patents, you must file within one year of your first public disclosure; many foreign jurisdictions require "absolute novelty"; NDA (non-disclosure agreement) is critical
  • By default an employee owns work done within the scope of employment
  • Consulting is different from employer-employee agreements
  • Avoid infringement of the right of others
  • Use your trademarks properly and consistently
  • Fair use is not always fair 

The night’s other speakers were David Mitnick and Howard Greenstein of DomainSkate, an Internet company that focuses on online brand protection. The two talked about the new Top Level Domain Names that you can use for your startup or as investment as well as issues on cybersquatting and mirror sites.

Mitnick, CEO, said he created Domainskate when he saw the potential in the expansion of the global Top Level Domain space. He also shared his expertise in the area of Domain Law. Greenstein teaches social media in the Masters Program at the  Heyman Center for Philanthropy and Fundraising at NYU SCPS. He is currently contributing editor for Inc. Magazine, writing the weekly Startup Toolkit.