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Intellectual Property, Protecting Your Competitive Advantage

By: James Pinkston

Registered Patent Attorney, Maywood IP Law

Join us for a Workshop on Aug 21st by Maywood IP Law

Intellectual Property refers to a variety of intangible assets that are derived from “creations of the mind,” where the owner of the intangible asset has taken appropriate steps to obtain exclusive rights in the intangible asset. The most common types of intellectual property include: Patents, Trademarks, Copyrights, Industrial Designs, Trade Dress, and Trade Secrets. Due to time constraints, this Intellectual Property Workshop will focus mainly on Patents and Trademarks.

Proper protection of intellectual property can be critical to the health of an organization, especially where the vast majority of the organization’s value is directly or indirectly tied to intellectual property. Protection defends intellectual property from competitors and enables the organization to capture, access, and convey the value stored in the intellectual property, as though it were tangible property. This workshop will discuss how to determine what intellectual property your business has, and how to decide on an intellectual property protection strategy.

Trademarks help identify the source of goods or services and protect the good will of a business by utilizing a recognizable sign, design, or expression to help the business distinguish its products or services from the products or services of its competitors. Trademarks can be words, names, symbols, labels, pictures, logos, package layout, configuration of goods, slogans, phrases, colors, sounds, etc. Unlike Patents, Trademarks can last forever. This workshop will discuss the process of obtaining a Trademark including: preparing a Trademark application, submitting the application to the USPTO, and working with a USPTO Trademark Examiner toward obtaining a granted Trademark (prosecution). We will discuss different categories of Trademarks including: generic Trademarks, merely descriptive trademarks, inherently distinctive Trademarks, suggestive Trademarks, and arbitrary Trademarks. We will also discuss how to use your Trademark properly to avoid “genericide” and how to police your Trademark to avoid weakening of your Trademark by competitors.

Utility patents protect most inventions that solve technological problems, with a few exceptions. Patents confer a set of exclusive rights to an inventor (or assignee) for a limited period of time, in exchange for a detailed public disclosure of the invention by the inventor.  This workshop will discuss identifying patentable subject matter, patent strategy and decision making, basic IP do’s and don’ts, and the basic patent process (preparing a patent application, filing the patent application, and prosecuting the application). We may also briefly touch on some basic patentability concepts such as: patentable subject matter, usefulness, unity of invention, novelty, non-obviousness, sufficiency of disclosure (the undue experimentation requirement), the best mode requirement, and other patentability concepts and issues. We will also discuss good inventor practices, disclosures, and how to review inventor disclosures and identify valuable IP.