Patent4U Limited
P.O. Box 2162
87 Jabotinski St.
Petah Tikva 49120
Israel
ph: +972-3-9226767
fax: +972-3-9192287
info
Multi-IP Protection I
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Function: Protect an invention using several types of intellectual property IP
Use: At our office, we identify various features of an invention, for which
different types of IP protection may be suitable; various types of IP are
recorded, according to an overall protection strategy.
Benefits: Stronger IP protection is achieved; there is synergy between the
IP instruments used. IP protection for prolonged time periods - protection
starts earlier, to protect a business in its early stages; and the protection
continues after the patent (utility and/or design) expires.
Patentics: Multi-IP Protection
It is possible to claim several types of IP protection in one invention.
For example, the functional aspects may be protected by an utility patent;
non-functional forms - by a design patent; the expression of the invention in
text, drawings and computer programs - by copyright, etc.
Possible IP instruments may include utility patent, design patent, copyright,
trade mark, service mark, trade secret, moral right.
In each case, a strategy should be devised to protect those inventive aspects
which can protected, and using the suitable IP instruments.
Sometimes, actions to protect one type of IP may forfeit inventor's rights to
other type(s) of IP: for example, if a patents search is made, it may endanger
inventor's right to copyright; if a product is used in commerce to establish
trademark or service mark rights, the inventor may lose his rights to
obtain a patent for a subsequently filed application.
If a proper strategy is used, however, such interference between different
types of IP can be prevented. Moreover, activities to achieve one type of IP
protection may actually contribute to also achieving other type(s) of IP.
For example, in a patent application other IP instruments may be claimed as
well, for example the mention of inventor's trademark or service mark,
copyright and moral right claims.
Trademark position is stronger if the product was used in commerce, however if
no IP protection is available, then others may copy the product and the
intended mark itself; then the entrepreneur may be driven out of business,
or his mark may cease being unique, this preventing the mark's registration.
The money factor should not be ignored, for it is ever present in IP protection
proceedings: Government fees should be paid to file for, and register, IP
rights. Moreover, for such activities at the patent office or in Court, the
services of a professional are usually required.
To generate the required cash, it is preferable to achieve IP protection as
soon as possible, to allow cash-generating business activities in the early
stages of commercializing an invention. If successful, IP protection and
business growth will develop together, feeding each other.
For a sustained success in business, IP protection should be available for
prolonged time periods. Each IP instrument has a different time coverage
property (the earliest time protection is achieved, and for how long), and a
different cost/effort required for its regitration.
Again, IP protection strategy should take these factors into account.
The Figure details the LIM-IP(SM) method - an integrated, coherent approach
to multiple-IP protection of inventions or new technologies, including:
* Define proprietary technologies owned by a person or a firm.
* Identify and protect Trade Secrets, using accepted practices. This is the
first line of defense for protecting IP, also the fastest and not so expensive.
* Delimit and define an invention to protect now, based for example on the
business aspects of the invention and its implication on company's operations.
* Define functional aspects of the invention - the invention may have various
aspects, such as external appearance of the product, a catchy name, etc.
* File utility patent applications for the functional aspects of the
invention and for non-exempt patentable matter. May first file a provisional.
* Utility Patents - granted
* Product/service design - this is a common activity relating to
commercializing a new product. Incidentally, it may result in novel functional
and/or nonfunctional features for which IP protection may be claimed.
* Functional shape/form - may be patentable (utility patent).
* Non-Functional shape/form, which is not related to identification of the
company - may be patentable (design patent).
* File design patent applications
* Design Patents - granted
* Non-Functional shape/form which is related to identification
* Marketing-related activities
* Devise, create Trade names
* File to register Trade Marks and/or Service Marks, also clearly indicate
this claim on company's publications, services and products
* Create/design package for product or service
* Devise, create Trade names
* Trade Marks, Service Marks registered
* Register Copyright, also including Moral Right
* Identify unprotected IP
* Add to proprietary technologies owned
Patent4U Limited
P.O. Box 2162
87 Jabotinski St.
Petah Tikva
49120
Israel
ph: +972-3-9226767
fax: +972-3-9192287
info