What Should a Small Business Do to Protect Its IP?

February 8, 2021

Legal knowledge

Have you noticed that Intellectual Property (IP) takes up a much larger portion of a company’s value today than 50 years ago? Your IP (your inventions, source code, brands, and know-how) has become your most valuable assets.

To start your business, you must know how to protect your IP. This article will help you understand the basics of filing a patent, determining which creations are copyrightable, and obtaining and maintaining your trademark.


What Should a Small Business Do to Protect Its IP?

Obtaining Your Patent 

Owning a patent is exciting. It means you have the right to exclude others from making, using, selling, or importing an invention for a long period of time. There are different categories of patents available under the U.S. patent law: utility patent, design patent, and plant patent.

Before you file the patent application, you want to make sure your invention meets USPTO's patentability requirements.  Researching and studying prior art will help you predict whether an examiner will find your invention non-obvious.  

Be careful not to sell or offer your products for sale before submitting your patent application. The “on-sale-bar” doctrine could prevent you from getting your patent if you commercially exploit the products to the public. If you like to get simpler and quicker protection, you could file a provisional patent application that lasts for a year. That will give you more opportunities to conduct research and finish the invention later.

Protecting Your Copyright

A copyright is a bundle of exclusive rights granted to authors. If you meet the “originality” and “fixation” requirements, you receive copyright automatically. "Originality" means the work cannot be a mere mechanical reproduction of previous work, nor the work consists of just a few phrases or words.

“Fixation” means your work must be fixed in a tangible medium of expression like stored on some medium where it can be reproduced or communicated.  

Although there is no formality like filling out a copyright application, it’s required before an author can pursue an infringement lawsuit by the U.S. Copyright Office. Once you submit the application to the United States Copyright Office, the application becomes part of the public record. This means it can be viewed by the public upon request. Your work could fall within the following categories: individual literary work, visual arts work, motion picture, musical work, sound recording, other per- forming arts work, or single serial issue. You can also register multiple works with one application. The Copyright Office provides two ways for you to file an application: online or by paper.

Obtaining Your Trademark

Here are two tips before you start your market your trademark: 

  1. Do a knockout search, which would help you not infringe others’ trademarks.
  2. Choose a strong trademark

When you build your trademark, you are helping consumers distinguish your goods or services from others. You may not like competitors taking advantage of your brand by confusing consumers as to the source of goods.  

Under common law, your trademark rights are limited to the areas where you actually use your marks. To benefit from broader protection, you should register your trademark with the United States Patent & Trademark Office (USPTO). 

Don’t worry too much about whether you have not used your mark.  You can submit a  “use in commerce” application or an “intent to use” application. The latter allows you to register your mark if you prove you have the intent to use the mark in commerce. Later on, you’ll need to file a verified statement of use to perfect your registration. USPTO provides constructive notice and use of the trademark which allows you to secure national rights. However, even if you registered your trademark, you should still keep your trademark in commerce. 

Want advice on how to protect your intellectual property? Let us connect you with a lawyer experienced in protecting and managing IP: www.trusli.com