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SIA SNOW SHOW 2017“DEFINING YOUR LINE”
IP CONSIDERATIONS AND STRATEGIES FOR SMALL TO MEDIUM SIZED COMPANIES
Pete Malen Jr.
Workman Nydegger PC (wnlaw.com)
Salt Lake City, UT
(this is not legal advice; opinions are those of the author alone)
MYTHS AND MISCONCEPTIONSABOUT INTELLECTUAL PROPERTY (IP)
We don’t have any IP.
Our company is small, we
don’t need IP.
IP is too expensive.
It’s not that important.
We can wait until later.
It takes too much time.
It’s easy to get around someone’s
IP.
IP is not that complicated, I
can do it myself.
MYTH #1 - WE DON’T HAVE ANY IP
You MAY have IP if you have…
Brands
Product shapes and configurations
Product designs
Product packaging
Manufacturing methods and processes
Website
Social media
Other content
MYTH #2 – OUR COMPANY IS TOO SMALL
What matters is NOT the size of the company, but the work that you do…
Design
Production
Marketing
Sales
MYTH #3 – IP PROTECTION IS TOO EXPENSIVE
Many types of IP protection are NOTparticularly expensive, but still offer the possibility of valuable protection.
Trademarks/service marks (Nike swoosh)
Copyrights (poster)
Trade dress (7-11 color scheme)
Trade secrets (Coke formula)
Design patent (ski shape)
Intellectual Property Examples
MYTH #4 – IP PROTECTION IS NOT IMPORTANT
Protecting your IP can help preserve your investments in technology, marketing, content, and brand development
Trademark/service mark registration
Copyright
Trade dress
Design patent
MYTH #5 – IP PROTECTION CAN WAIT
IP protection is often granted based on priority, i.e., who filed first for protection
The US and most foreign countries are ‘first to file’ jurisdictions
Between two applicants for protection of the same invention, the patent – if granted – is awarded to whoever filed first
Also true with trademarks, though to a different extent.
So, better to file earlier than later!
MYTH #6 – LEGAL ISSUES TAKE UP TOO MUCH TIME
It’s generally faster/easier/cheaper to avoid mistake$, than to fix mistakes
Make the initial time investment early on to help avoid mistakes that can take up your time and $$ later
Your IP attorney can help to minimize your time spent on legal matters, so you can focus on your business
MYTH #7 – IP PROTECTION IS EASY TO GET AROUND
Your IP rights can provide significant barriers to competitors if those rights are well-protected – this is where your IP attorney comes in…
1. Awareness
2. Diligence
3. Willingness
MYTH #8 – IP IS NOT THAT COMPLICATED – I CAN HANDLE IT MYSELF
Pitfalls
Too late and/or too expensive to fix mistakes
Wrong strategy can limit your scope of IP protection
You can save time and $ by performing surgery on yourself, but would you?!
BRIEF RECAP…
Anything else you can do?
OTHER USEFUL, AND INEXPENSIVE, THINGS YOU CAN DO TO HELP PROTECT YOUR IP…
Employment agreements
Web/content developer agreements
Confidentiality agreements
Trademark watches
Periodic review of your technology/branding/design developments
Keep an eye on the competition
WHAT IF I IGNORE MY IP AND DON’T DO ANY OF THESE THINGS…?
TM infringement/dilution/confusion
May have to change your TM/brand if others have superior rights
Design & copyright infringement –others may copy your designs and content
Disclosure of your trade secrets to competitors
Loss of market share
Loss of revenue
Loss of reputation
QUESTIONS OR COMMENTS?
Peter F. Malen Jr.
Workman Nydegger PC
Salt Lake City, UT
www.wnlaw.com
Thank You!
