Saturday November 21, 2009
Updated on July 6, 2007.
PROTECTING A SECRET RECIPE or catchy jingle from sticky fingers is tricky. The best defense, experts say, is to safeguard your company's intellectual property that is, your brilliant ideas that have commercial value through patents, trademarks and copyrights.
Theft of intellectual property is a growing problem, especially for small-business owners who lack resources and expertise to combat it. Last year, the U.S. Patent and Trademark Office (USPTO) launched a campaign, Stop Fakes, to educate entrepreneurs about protecting their works against IP theft, which some might incorrectly peg as Corporate America's headache.
But in today's global economy, small inventors face threats from far-off places like China, where counterfeit goods can be churned out on the cheap. Business owners often rely on the Internet to sell or market their products, in easy sight of preying eyes. Everything from innovative devices to clever brand names might be a target.
Lori M. Lofstrom, co-founder of a franchise and business law firm in Long Beach, Calif., says she often meets with entrepreneurs after they've discovered someone else is ripping them off. So she recommends making patent, trademark and copyright protection a core part of the business strategy, early on, even when there's little time or budget. "You're going to spend so much more money later to fix these problems, and fight people about brands," she says.
Here's what to consider when it comes to IP:
Patents. A patent issued by the U.S. Patent and Trademark Office is easily the most expensive and most valuable protection for an entrepreneur with a novel product or innovative business method. "A patent sort of gives you a mini-monopoly for 20 years," says Jill Gilbert Welytok, a Milwaukee attorney and author of "The Entrepreneur's Guide to Patents, Copyrights, Trademarks, Trade Secrets & Licensing." "It prevents anyone else from making or selling your invention." (Keep in mind, if you plan on selling or distributing your products abroad, you should consider filing with each country's IP authorities.) Because the application process is complicated, it's wise to seek the services of a patent attorney. Filing fees and legal costs vary, but generally range from $2,000 to $10,000, depending on the complexity of the invention.
Trademarks. Trademarks are words, symbols, logos and images that identify products or services. Scents, sounds and colors also can be trademarked (a notable example is Tiffany Blue). The filing fee for a trademark application is $375, if done by paper, and $325, if done electronically. There's a special reduced fee of $275 if the complete application (including image and sound files) is submitted electronically, and all communications throughout the process are handled via email. For an additional fee, an entrepreneur can register a trademark in several of more than 40 classes of goods and services. For instance, a bread-shop owner may want to register a trademark in both the food class (in the "goods" category) and the restaurant class (in the "services" category). An application can be turned down if the USPTO deems the proposed trademark too generic.
Copyrights. A copyright protects authors of original works, including literary, dramatic, musical, artistic and other intellectual works. A business owner, for instance, might want to obtain a copyright on an internal sales manual. The U.S. Copyright Office, which handles registrations, has a basic fee of $45.
Trade secrets. This form of intellectual property doesn't require registration, but a company needs to take the necessary precautions to keep it hush-hush. The world's most famous trade secret, arguably, is the formula for Coca-Cola. A trade secret is lost once it's independently discovered. How to protect it? "Have a great nondisclosure agreement, and hand that out to anyone you talk to about your product," including employees, recommends Steven D. Strauss, author of "The Small Business Bible." "That alone is going to scare people."
While a company's intellectual property can be as valuable as its tangible assets, many harried entrepreneurs put off filing for patents, trademarks and copyrights. That's a mistake, as without the protection you can't seek damages, "a huge deterrent" to counterfeiters, says Lofstrom.
To stop an imitator, first send a copy of the registration statement, explaining "you're in our space; we were here first," she says. "If they don't stop, you go a little further, saying 'we are entitled to damages for the infringement.' That's a huge tool to be able to use." Without it, you've got little to go on other than your powers of persuasion.