Small Business IP Protection and Management

Small Business IP Protection Web Site - USPTO

The U.S. Government maintains a web site aimed at helping businesses protect intellectual property from overseas piracy and counterfeiting.  The Department of Commerce’s United States Patent and Trademark Office (USPTO) maintains the site – StopFakes.gov/smallbusiness -- dedicated to small businesses and protecting their intellectual property both in the U.S. and abroad. A focus of the site is to answer common questions of small businesses, home business owners, inventors, and other entrepreneurs, so they can better identify and address their protection needs.

The web site provides information to help decide when, where and how to file for intellectual property protection and covers patents, trademarks and copyrights. The Web site is part of a much larger USPTO and federal government effort. The Strategy Targeting Organized Piracy (STOP!) initiative ( http://www.stopfakes.gov) is aimed at combating criminal networks that traffic in fakes; stopping trade in pirated and counterfeit goods at America’s borders; and helping small businesses secure and enforce their rights in overseas markets. As part of the initiative, the USPTO maintains a toll-free telephone hotline, 1-866-999-HALT that helps businesses leverage the resources of the U.S. government to protect their intellectual property rights.

Resources

Stop Fakes Small Business General Information: http://www.uspto.gov/smallbusiness

Stop Fakes Small Business Patents: http://www.uspto.gov/smallbusiness/patents/

Stop Fakes Small Business Trademarks: http://www.uspto.gov/smallbusiness/trademarks/

Stop Fakes Small Business Copyrights: http://www.uspto.gov/smallbusiness/copyrights/

World Intellectual Property Organization (WIPO) - IP Assistance

WIPO has published several guides to assist small and medium-sixed enterprises with intellectual property matters.  A patent guide is available called "Inventing the Future: An Introduction to Patents for Small and Medium-sized Enterprises" which details how patents can be used to further strategic business goals.   Other publications currently available are "Making a Mark: An Introduction to Trademarks for Small and Medium-sized Enterprises" and "Looking Good:  An Introduction to Industrial Designs for Small and Medium-sized Enterprises".  Other related publications are available.  For more information on these and other publications, visit the Small and Medium-sized Enterprises Division (SME) of the WIPO web site.

Help with Exporting Goods and Services

If you own a small business and are considering exporting U.S. products or services, a great place to start is the BUYUSA.GOV web site for the U.S. Commercial Service of the United States Department of Commerce.  The U.S. Commercial Service helps U.S. companies find new international business partners in worldwide markets.  Additionally, the service helps companies outside of the U.S to find U.S. suppliers of products and services.  A database of offices is maintained on the web site as well.

For a company interested in exporting, a substantial amount of research can be accomplished on the web site such as market research, trade shows, and identification of buyers and distributors.  Counseling is also provided to assist with the above research.

By selecting China as a country of interest, for example, a user is presented with a wealth of free or fee based choices.  Information for specific industries, a schedule of trade shows, current trade leads, and latest news and events can be obtained.

Therefore, if you are considering expanding your business in foreign countries, or if you are located in a foreign country seeking to do business in the U.S., the BUYUSA.GOV web site is an excellent place to start.

Trademark and Copyright Law Regarding Book Titles

A question that is periodically asked of us is whether or not book titles are covered under copyright law.  In general, the title of the book itself is not entitled to copyright protection.  Copyright laws protect an original work of authorship or expression of an idea.  Intellectual property law does not protect titles as easily or as comprehensively as it protects the contents of a literary work.  However, trademark law and unfair competition law may provide some protection for the book title. 

Typically, protection of a title for a single work is found in unfair competition law.  Trademark law might also be found applicable if the author/publisher can demonstrate that the title has acquired secondary meaning.  Additionally, a court may look at "likelihood of confusion" to assist in evaluation of the title to determine whether the public would be confused as to the source of the work. 

Protection of a single title in general is not easy. More often, protection is provided for a series title (a title which runs through a series of books) under unfair competition and trademark laws. Trademark registrations are permitted for a series title.

How to Market an Invention

A common problem confronting small businesses and individual inventors is that of determining whether a market exists for an invention.  A common approach for many is to succumb to the advertisements of so called invention promotion companies.  While some of these companies provide a legitimate and valuable service, many do not.  The inventor is often charged a substantial amount for "canned" reports that provide little information of value to the inventor.

If one is planning on using an invention promotion company, it is suggested that the company be thoroughly researched.  To assist in the research, a list of complaints against these types of companies is maintained on the USPTO web site.  Complaints dating back several years are maintained, as well as links to other helpful web sites.  Another resource to use is the Consumer Alert area of the Federal Trade Commission web site.

One resource available to inventors as an alternative to the invention promotion companies is the Wisconsin Innovation Service Center (WISC).  WISC is a non-profit organization sponsored by the University of Wisconsin-Whitewater, the University of Wisconsin-Extension Small Business Development Centers, and the U. S. Small Business Administration.  A number of services are provided by WISC.  These include:

• New product assessments
• Distributor assessments
• Current or potential customer assessments
• Licensing partner searches
• Competitive intelligence searches

WISC will also assist with a preliminary patent search to identify art related to the invention.

WISC does charge for the services provided, but the fees are not unreasonable for the services performed, and the products provided are specific to the invention.  The services provided by WISC can either be used prior to or simultaneous with the filing of a patent application.  WISC can help an inventor or small business decide whether a product is worth pursuing and in making other well informed business decisions.

Additional information can be obtained at the WISC web site.

Importance of Protecting Intellectual Property

Protecting intellectual property for any business entity is important.  Preventing another company from copying important equipment, products, or processes; protecting trademarks which could be the single most valuable asset for a company; etc., are extremely important.   However, for one reason or another, small and medium sized companies often fail to protect intellectual property rights.  Frequently, this results in lost profits for the companies, and could ultimately result in closing of the company.  Protection of intellectual property rights in modern times has become even more important with foreign companies producing knockoff products and flooding the U.S. with the copied products.

The issue of failing to protect intellectual property is not unique to the U.S., however.  This article from the U.K discusses the importance of protecting intellectual property by a small company or individual inventor, and discloses the results of a study that indicate this is seldom done.

March Madness Protection

Is "March Madness" considered a trademark?  The short answer is yes.  There is actually a class of registered trademarks owned by the March Madness Athletic Association.  Who is that you ask?  The MMAA is actually a holding company formed by the NCAA and the Illinois High School Association.  Sound like an odd combination?  Apparently, the IHSA has used the term "March Madness" since 1939 for a state high school basketball tournamnent.  For a full history of the term as used by the IHSA, visit the History of March Madness page of the IHSA web site.  The NCAA has been using the mark for nearly 25 years.

See also Wikipedia.

Book Titles - Covered by Copyright Law?

A question that is periodically asked of us is whether or not book titles are covered under copyright law.  In general, the title of the book itself is not entitled to copyright protection.  Copyright laws protect an original work of authorship or expression of an idea.  Intellectual property law does not protect titles as easily or as comprehensively as it protects the contents of a literary work.  However, trademark law and unfair competition law may provide some protection for the book title. 

Typically, protection of a title for a single work is found in unfair competition law.  Trademark law might also be found applicable if the author/publisher can demonstrate that the title has acquired secondary meaning.  Additionally, a court may look at "likelihood of confusion" to assist in evaluation of the title to determine whether the public would be confused as to the source of the work. 

Protection of a single title in general is not easy.  More often, protection is provided for a series title (a title which runs through a series of books) under unfair competition and trademark laws. Trademark registrations are permitted for a series title.

China Patent Rights

Patent filings in China continue to rise, as reported in a recent article in the Financial Times (7/3, Waldmeir).   Enforcement of patent rights still remains an issue.  However, with the rise in filings, coupled with a few pending court cases, momentum may be beginning to swing in the direction of the patentee.  It appears the next few years will be critical in the evolution of IP in China.

Independent Inventor Conference

Registration is now open for the 13th annual Independent Inventors Conference.  The conference will be held at the USPTO in Alexandria, Virginia August 8-9. 

Additionally, a pre-conference workshop will be offered the evening of August 7 for anyone interested in learning about the basics of patents and the importance of intellectual property protection.

For additional information, click here.

To register, click here.