By Dan Bourque, Attorney at Bourque & Associates
As previously discussed in various recent “Ask-the-Expert” series columns, your initial business startup Intellectual Property (IP) investigative efforts should have included at least determining the patentability of any invention you might have; the freedom to make, have made and sell the product you are intending to manufacture, if any; and lastly clearance for the name for your product or enterprise (think trademark clearance) in addition to any business formation and tax questions you will have resolved. The question now at hand is what can and should you do with all this information in terms of your business startup and promotional plans?
The most important step you can now take in utilizing your IP protection is to make sure that everyone knows that you have this proprietary information that you consider both proprietary and valuable. Much like a landowner posts no trespassing signs on property he wants others to remain off and away from, you should clearly indicate to others what you consider your IP rights to be. The first step in this regard is to be sure to indicate on all products and/or printed materials that you have a patent or have a patent pending on a method or product. Having a provisional patent application on file with the US patent office is sufficient grounds to label a product “patent pending”. The same would hold true for a pending patent application on a method used to make a product. The product in that case could also be labeled patent pending. It is important to note that there is a federal statute (see 35 USC 292) which covers falsely marking a product with the term patented or patent pending. Although the statute was significantly amended under the America Invents Act of 2011, suffice it to say that one should never utilize the words “patent pending” or “patented” if that is not the case. Placing others on notice of your proprietary rights in and to a product or methodology is a significant step in ensuring that you will retain and benefit from these rights.
The same holds true for trademark rights with the exception that trademark rights in the United States come from usage and not from any registration activity that you have to undertake as in the case of patents. Simply beginning to use a trademark on or in connection with a product or service gives you trademark rights. Although filing for federal trademark protection in United States is still the best course of action, one can and should put the trademark designation “TM” or “SM” on each use of your trademark. Much like the terminology patented or patent pending, the trademark symbol is in effect a “no trespassing” sign for your hard earned IP.
Lastly, any printed material, artwork or software you develop should bear a copyright notice which preferably consists of the © symbol and/or the word “Copyright” or abbreviation “Copr.”; followed by the year of first publication of the copyrighted work; and an identification of the owner of the copyright, either by name, abbreviation, or other designation by which it is generally known. So for example © Copyright 2014 Jason Smith. The words “All Rights Reserved” commonly used in some other countries may also be added.
In summary, you want to be sure to let all third parties know that you have IP rights in and to your business ideas and material and place them on notice of those rights by affixing the appropriate IP rights legend.
Boot Camp for Startups:
To learn more, please join me on April 16 from noon to 1 p.m. at the abiHUB in Manchester where I will be presenting a seminar titled “How to Best Utilize IP in Your Start-up Marketing and Promotional Plans” as part of a nine monthly seminars in the abiHUB’s “Launch Series: A Boot Camp for Startups.” To register contact Michele Petersen at Michele@abihub.org.
If you’re unable to attend the April 16th seminar, I’m happy to answer your posted questions at www.unionleader.com/expert or http://alphaloft.org/ask-the-expert/
About Daniel Bourque
Dan founded Bourque and Associates in 1992 after having practiced intellectual property law in Boston, Massachusetts since 1987. Prior to attending law school, Dan was a computer hardware and software design engineer with an international computer company. There he gained experience he uses for the Firm’s clients in preparing and prosecuting their patent applications in electronic and electrical technologies including computer hardware and software, as well as a wide variety of other technologies including telecommunications, radar, and acoustics. Additionally, Dan advises the Firm’s clients on their trademark, copyright, and technology licensing needs and assists clients, as well as other attorneys both in the U.S. and around the world, with litigation support in intellectual property disputes.
Dan holds A.S. and B.S. degrees in computer science, and received his J.D. degree from Suffolk University Law School in Boston. He is a frequent lecturer and author on issues concerning intellectual property matters. Fluent in the French language, he is often called upon to lecture to and represent French-speaking clients from foreign countries. In addition to being a registered United States patent attorney, Dan a Registered Canadian Patent Attorney. Dan is licensed to practice law in New Hampshire and Massachusetts.