“We Don’t Have Any Intellectual Property”: Responding to a Common Startup Misconception
Whenever we meet with a new or potential startup client, one of the questions we always ask is what intellectual property the company has that it might want to protect. Frequently, entrepreneurs will respond with “we don’t have any intellectual property.” However, more often than not, this is not the case. This post aims to help an entrepreneur to begin thinking about the valuable intellectual property that her company may possess. It serves as an overview of all of your company’s assets that may fall under the “intellectual property” umbrella, and which you might be able to protect.
The first type of intellectual property that comes to mind for most entrepreneurs is the patent. Patents generally protect the following types of inventions:
- Composition of matter
- Plants (asexually reproducing)
- Designs (ornamental designs, separate from functional elements)
Patentable inventions must be useful, novel, and nonobvious. There is no patent protection for laws of nature, natural phenomena, or abstract ideas. This means that algorithms, especially purely mathematical ones, may not be patentable.
Copyright protects literary and artistic expression that exhibit a modicum of originality and that are fixed in a tangible medium of expression. These literary and artistic expressions that may be eligible for copyright include:
- Books, poetry, dramatic works
- Computer programs — both the underlying code and the interface
- Images, paintings, drawings, photographs
- Architectural works
Note that ideas that underlie a work are not copyrightable. Instead, they may fall under the umbrella of patent. Additionally, functional elements of anything are not copyrightable.
Trademark is another aspect of intellectual property law that you have likely heard a lot about. What you may not know is what exactly trademark law can protect. Under the federal trademark statute – the Lanham Act – words, symbols, and other attributes that serve to identify the nature and source of goods or services can be protected by trademark. The following marks may be protectable under trademark law:
- Company names
- Product names
- Pictures or designs
- Product configurations
- Product design or trade dress
The limit here is that, to receive trademark protection, the mark needs to identify to consumers the source of the good or service it identifies. In other words, it must call your company or its goods or services to mind. Additional limits include that the mark must not be a generic description of the good or service or the class of goods or services, and that the mark cannot be a functional element of the product.
Trade secrets are information that adhere to the following three rules: the information (1) is not generally known to or reasonably ascertainable by the public, (2) confers to your company an economic advantage (meaning the secrecy confers the value, not just the information itself), and (3) is subjected to reasonable efforts by your company to maintain its secrecy. Trade secrets can include business or technical information of any sort. This means that things eligible for trade secret protection may include:
- Formulas (chemical)
- Methods or techniques
- Business plans (e.g. product plans, sale and marketing plans, business strategies)
Customer lists (current, past, and prospective)
- Supplier lists
- Pricing, price lists, pricing methodologies, profit margins
- Market studies
- Computer software and programs (including object code and source code)
Any information that meets the above three criteria can be protected under trade secret laws. The above list is not inclusive of all things that may qualify as trade secrets. Note that independent discovery or invention, as well as reverse engineering, of the information contained in your trade secrets is not prohibited under this regime.
Why Is This Important?
Intellectual property can be one of the most valuable assets to your company.
Disney’s stories and characters are protected by copyright. Nike’s famous swoosh logo and “just do it” slogan are protected by trademark. Trademark also protects the iconic red of the soles of Louboutin shoes. Coca Cola’s Coke formula is one of the most heavily guarded trade secrets. The curved designs of Apple’s Macbooks and iPhones casings are protected by design patents. Think of where all these companies would be without their intellectual property and the regimes that protect it.
Identifying your intellectual property is your first step to protecting and monetizing it. Whether this means filing a federal application, maintaining a trade secret, or simply asking founders and workers to assign to your company intellectual property they have created, this can be one of the most important parts of your business. So go ahead and start keeping track of assets that may qualify as intellectual property.
For a lot of this, there is a much deeper analysis of whether your particular work, mark, or invention is actually protectable under one intellectual property regimes, to what extent, and how to go about acquiring and maintaining such protection. For more details about those analyses, consult with other posts on this blog, or an attorney.